Webster Financial Corporation v. nianxin lin c/o NIAN
XIN LIN
Claim Number: FA0703000937022
PARTIES
Complainant is Webster Financial Corporation (“Complainant”), represented by Diane
Duhaime, of Jorden Burt LLP, 175 Powder Forest
Drive, Suite 201, Simsbury, CT 06089-9658. Respondent is nianxin lin c/o NIAN XIN
LIN (“Respondent”), 7 Building. Longcheng New
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hsabank.mobi>, registered with HiChina Web
Solutions (Hong Kong) Limited.
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.
Mark McCormick as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 13, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 14, 2007.
On March 14, 2007, HiChina Web Solutions (Hong Kong) Limited
confirmed by e-mail to the National Arbitration Forum that the <hsabank.mobi>
domain name is registered with HiChina Web
Solutions (Hong Kong) Limited and that Respondent is the current registrant
of the name. HiChina Web Solutions (Hong Kong) Limited has verified that
Respondent is bound by the HiChina Web Solutions
(Hong Kong) Limited registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 22, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 11, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@hsabank.mobi by e-mail.
A timely Response was received and determined to be complete on April 9, 2007.
An additional document labeled “Response” was received from Respondent on April 11, 2007. This filing is considered “Other Correspondence.” On April 17, 2007, the Panel entered an order pursuant to Rule 11(b) of the Rules for Uniform Domain Name Dispute Resolution Policy directing Respondent to provide an English translation of his Response by April 30, 2007. An English translation of the Response was provided by Respondent on that date. Upon Complainant’s request to file an Additional Statement regarding the Response filed by Respondent on April 30, 2007, Complainant was given until May 7, 2007 to file its Additional Statement. Complainant filed its Additional Statement on May 7, 2007.
The Panelist received an additional communication from Respondent on May 25, 2007. This communication is untimely but, even if it were not untimely, it does not affect the Panel’s decision.
On April 13, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mark McCormick as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
HSA Bank is a wholly-owned subsidiary of Webster Financial
Corporation. It is the largest
administrator of health savings accounts in the United States and provides
services throughout the United States and its territories. Webster Financial Corporation owns a federal
trademark registration for HSA BANK.
Complainant regularly and widely advertises its HSA BANK services. Respondent’s <hsabank.mobi> domain
name is confusingly similar to Complainant’s HSA BANK name and registered service
mark because it incorporates the HSA BANK mark as the sole component of the
second-level domain. Respondent’s domain
name is also confusingly similar to Complainant’s website at the <hsabank.com> domain name. No web
page is associated with Respondent’s <hsabank.mobi> domain name. It is not associated with any bona fide offering of goods or
services. Respondent is not making any
legitimate noncommercial or other use of the domain name and its attempt to
negotiate a transfer of the domain name to Complainant for “gifts” shows
Respondent’s bad faith.
B. Respondent
Respondent contends Complainant failed to register a cell phone domain name using its trademark during the priority registration period of June 12, 2006 to September 20, 2006, alleging that this failure meant that anyone was free then to register the domain name after that period. Respondent registered his domain name of November 23, 2006. Respondent also contends the disputed domain name is not identical or confusingly similar to Complainant’s mark because the mark has a gap between “HSA” and “BANK,” and the disputed domain name does not. Respondent further contends that his domain name in Chinese refers to a blessing on his middle school classmates and that his purpose is to enable the classmates to exchange information with each other.
C. Additional Submissions
Complainant contends in its Additional Statement that Respondent’s assertion that his domain name was registered to permit communications with former classmates is not credible, based in part on Respondent’s inconsistent assertion in his earlier demand facsimile that his domain name can be interpreted in Chinese as “hsa databank,” “hsa corpus bank,” or “hsa bloodbank” in Chinese.
FINDINGS
Complainant registered its HSA BANK mark with
the United States Patent and Trademark office on October 24, 2006 and has used
the mark in advertising and providing its banking services. (Complainant did not register its mark until
after September 20, 2006.) Respondent’s
domain name contains Complainant’s mark in its entirety, and the only
difference is the space between “HSA” and “BANK” and the addition of the
generic top-level domain “.mobi.”
Respondent has not used the disputed domain name <hsabank.mobi> and has
no associated web page. When notified of
Complainant’s Complaint, Respondent on April 7, 2007 offered to negotiate for a
transfer of the disputed domain name to Complainant in exchange for “gifts.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted 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;
(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.
Complainant’s registration of the HSA BANK
mark established its rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004). Respondent’s domain name <hsabank.mobi> is confusingly similar to Complainant’s mark. The elimination of the space between the
words and the addition of the top-level domain “.mobi” do not adequately
distinguish Complainant’s mark to avoid confusion. See Isleworth
Land Co. v. Lost in Space, SA, FA
117330 (Nat. Arb. Forum Sept. 27, 2002); see
also
Respondent’s failure to associate content
with his domain name is evidence that he lacks rights and legitimate interests
in the domain name. See Bloomberg L.P. v.
Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001). No evidence exists that Respondent is
commonly known by the domain name, and his willingness to sell it for “gifts”
betrays a lack of legitimacy. See Elenie Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007).
Complainant has carried its burden to prove Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s offer to transfer the domain name in exchange for gifts demonstrates bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(i). See Vanderbilt Univ. v. U Incorporated, FA 893000 (Nat. Arb. Forum Feb. 19, 2007); see also Ballesteros v. Waldron, D2001-0351 (WIPO June 18, 2001). Moreover, the Panelist agrees with Complainant’s Additional Statement that Respondent’s inconsistent explanations concerning his purpose for registering the domain name demonstrate a lack of credibility. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001). Moreover, Complainant’s failure to register its trademark during the priority registration period did not cause forfeiture of its rights under paragraph 4(a) of the Policy. The failure did not give Respondent license to violate the Policy. See Mansueto Ventures, LLC v. Witte, D2006-1479 (WIPO, January 19, 2007). Complainant has proven Respondent’s bad faith registration and use.
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 <hsabank.mobi> domain name be TRANSFERRED
from Respondent to Complainant.
Mark McCormick, Panelist
Dated: May
25, 2007
Click Here to return to the main Domain
Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum