DECISION

 

Webster Financial Corporation and Webster Bank, National Association v. xiao chuan meng / SJadvertising company

Claim Number: FA2606002227447

 

PARTIES

Complainant is Webster Financial Corporation and Webster Bank, National Association ("Complainant"), represented by Gail Podolsky of Podolsky Law LLC, Georgia, USA. Respondent is xiao chuan meng / SJadvertising company ("Respondent"), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <webster401k.com>, registered with GMO Internet Group, Inc. d/b/a Onamae.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 15, 2026; Forum received payment on June 15, 2026.

 

On June 16, 2026, GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <webster401k.com> domain name is registered with GMO Internet Group, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet Group, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet Group, Inc. d/b/a Onamae.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On June 18, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2026 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@webster401k.com. Also on June 18, 2026, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On July 10, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to the named complainants.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

Paragraph 3(a) of the Rules states that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint." … and Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."

 

The Complaint as originally filed and later amended, named two complainants, Webster Financial Corporation, and Webster Bank, National Association.  The Complaint states that Webster Bank, National Association is a wholly-owned subsidiary of Webster Financial Corporation.  The disputed domain name is most obviously linked to the asserted misuse of the trademark, WEBSTER. Annexed to the Complaint are copies of certificates of registration for that mark with the United States Patent and Trademark Office ("USPTO").  All are shown to be in the name of Webster Financial Corporation. The few certificates in the name of Webster Bank, National Association are derivative marks less obviously similar to the domain name.

 

Arguably, Webster Bank, National Association need not have been included as a party, but the Panel observes that it is the Complaint expressly requests that, if successful, the disputed domain name should be transferred to both, together. Since Webster Bank, National Association is the subsidiary company and it might readily be inferred that it is permitted to use the WEBSTER trademark by reason of the trademarks it holds which include the word WEBSTER, the Panel finds that both named complainants have a claim to rights in the domain name.

 

The Panel finds that the Rules are satisfied and so treats the named complainants as a single entity, referring to them together as "Complainant" unless otherwise stated (see, for example, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. kim seong su, FA 1840242 (Forum June 3, 2019); Guess? IP Holder L.P. and Guess?, Inc. v. New Ventures Services, Corp., FA 1825019 (Forum Feb. 10, 2019)).

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in WEBSTER which it uses in connection with banking and financial services.  Complainant submits that the disputed domain name is confusingly similar to its trademark.

 

Complainant submits that Respondent has no rights or legitimate interests in the domain name because it is not known by the domain name, has not been authorized to use the trademark, and has used the disputed domain name to point to a website advertising and carrying links to sports gambling services.

 

Complainant asserts that Respondent registered the domain name in bad faith with actual knowledge of Complainant's rights and used it in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant provides banking and financial services by reference to the trademark, WEBSTER;

2.       Webster Financial Corporation is the owner of, inter alia, USPTO Reg. No. 3,334,639, registered on November 13, 2007, for WEBSTER;

3.       Respondent registered the domain name on March 3, 2026, using a privacy service to mask its identity; and

4.       the domain name resolves to a website advertising and carrying links to sports gambling services.

                

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. 

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). The Panel finds that Complainant has established rights in WEBSTER since it provides proof of registration of that mark with the USPTO, a national trademark authority.

 

The Panel finds that the disputed domain name is confusingly similar to the trademark. The domain name adds the gTLD, ".com", and the term, "401k", to the trademark. Although the Complaint fails to make any express submission regarding the nature of thee term, "401k", it states that Complainant uses the trademark in connection with financial services including "401(k) retirement services". That expression is meaningless to a non-US citizen, but a simple search reveals that it is a popular employer-sponsored personal retirement plan in the United States. The Panel treats it as purely descriptive and finds the trademark well recognizable in the whole (see, for example, Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) finding that addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis; Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) holding that "[w]here a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.")).

 

The Panel accordingly finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i)                      before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)                      you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii)                      you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights. The Panel accepts Complainant's submission that Respondent has no authority or permission to use the trademark. The resolving website promotes gambling services having no connection with the services provided by Complainant. The Panel finds that a prima facie case has been made that Respondent has no right or interest in the domain name (see, for example, Radio Flyer Inc. v. yang zhi chao, FA 2043233 (Forum June 5, 2023) ("Using the confusingly similar domain name to capitalize on pay-per-click links is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non- commercial or fair use pursuant to Policy ¶ 4(c)(iii)."); Huron Consulting Group Inc. v. Michael Katka, FA 2079444 (Forum Feb. 8, 2024) ("Use of a domain name to redirect users to unrelated third-party sites (whether or not they compete with Complainant) is not a bona fide offering of goods or services or a legitimate noncommercial or fair use")).

 

The onus shifts to Respondent and in the absence of a Response, the Panel finds that Respondent has not discharged that onus and so finds the Respondent has no rights or interests. Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)                      by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.'

 

The Panel finds that Respondent's conduct falls under paragraph 4(b)(iv) above. The Panel has found that the domain name is confusingly similar to the trademark. The resolving webpage most likely exists for commercial gain in one form or another, the exact mode being unimportant. In terms of the Policy, the Panel finds that Respondent has used the disputed domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, Charter Communications Holding Company, LLC v. Webdesk Two, FA 1800636 (Forum Sept. 5, 2018) finding bad faith in registration of <spectrumpack.com> because "[u]se of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant's business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).").

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <webster401k.com> domain name be TRANSFERRED from Respondent to Webster Financial Corporation, and Webster Bank, National Association as joint tenants.

 

 

 

Debrett G Lyons, Panelist

Dated: July 12, 2026