Webster Financial Corporation and Webster Bank, National Association v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1906001846865
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websterbankc.com>, registered with GoDaddy.com, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2019; the Forum received payment on June 7, 2019.
On June 10, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <websterbankc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2019 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@websterbankc.com. Also on June 12, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has approximately $26.8 billion in assets and provides business and consumer banking, mortgage lending, financial planning, trust, and investment services through 167 banking offices, 333 ATMS, telephone banking, mobile banking, and its internet website. Complainant has rights in the WEBSTER BANK and WEBSTER trademarks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,012,979, registered November 8, 2005, and Reg. No. 3,334,639, registered November 13, 2007). Respondent’s <websterbankc.com> domain name is confusingly similar to Complainant’s WEBSTER BANK trademark as it fully incorporates the trademark and adds a “c” after “bank.”
Respondent has no rights or legitimate interests in the <websterbankc.com> domain name as Complainant has never authorized Respondent to use the WEBSTER or WEBSTER BANK trademarks in any way, nor is Respondent commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name requires the user to download spam advertising.
Respondent registered and used the <websterbankc.com> domain name in bad faith as the disputed domain name presumably commercially benefits by receiving click-through fees. Respondent has also engaged in typosquatting by intentionally misspelling the phrase “Webster Bank”. Lastly, Respondent had actual or constructive knowledge of Complainant’s rights in the WEBSTER and WEBSTER BANK trademarks as the disputed domain name incorporates Complainant’s trademark in its entirety.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 3,012,979 WEBSTER BANK (word), registered November 8, 2005 for services in class 36;
No. 3,334,639 WEBSTER (word), registered November 13, 2007 for services in class 36; and
No. 3,334,640 WEBSTER (word), registered November 13, 2007 for services in class 35.
The Complainant is also the owner of 39 other U.S. trademark registrations with WEBSTER as a part of the trademark.
Respondent registered the <websterbankc.com> domain name on March 27, 2019.
Paragraph 15(a) of 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; 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. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the WEBSTER BANK and WEBSTER trademarks based on their registration with the USPTO (e.g. Reg. No. 3,012,979, registered November 8, 2005, and Reg. No. 3,334,639, registered November 13, 2007). Registration of a trademark with the USPTO is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds that Complainant has established rights in the WEBSTER BANK and WEBSTER trademarks.
Complainant argues that Respondent’s <websterbankc.com> domain name is confusingly similar to Complainant’s WEBSTER BANK trademark as the domain name fully incorporates the trademark and adds a “c” after “bank.” The addition of a single letter to a fully formed trademark does not distinguish a domain name from the trademark. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). The Panel notes that the disputed domain name also adds the “.com” gTLD. The addition of a gTLD has been found to be insufficient to distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Therefore, the Panel finds that Respondent’s <websterbankc.com> domain name is confusingly similar to Complainant’s WEBSTER BANK trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <websterbankc.com> domain name as Complainant has never authorized Respondent to use the WEBSTER or WEBSTER BANK trademarks in any way, nor is Respondent commonly known by the disputed domain name. A respondent lacks rights or legitimate interests in a domain name if complainant does not license or authorize respondent to use the trademark or respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). In the present case, there is nothing in the record to suggest that Complainant has authorized or licensed Respondent to use any of Complainant’s trademarks. Additionally, the provided WHOIS information identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as Respondent. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the <websterbankc.com> per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the <websterbankc.com> domain name requires the user to download spam advertising. Use of a domain name to offer and download software is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s resolving domain name that ask for an “I’m Human” security check that could without a user’s knowledge download malicious software to their computer. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and is using the disputed domain name in bad faith for the purpose of intentionally attempting to create a likelihood of confusion with Complainant’s WEBSTER or WEBSTER BANK trademarks. Use of a domain name to create a likelihood of confusion by using a well-known mark maybe evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). In this case, Complainant argues that Respondent’s attempt to use its well-known trademark in its domain name is evidence of bad faith. Therefore, the Panel finds that Respondent registered and used the <websterbankc.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further argues that Respondent’s use of the <websterbankc.com> domain name is being used in bad faith as the domain name presumably commercially benefits by receiving “click-through fees.” Use of a domain name to divert internet users, and commercially benefiting, may be evidence of bad faith registration and use. See Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail, FA 1729095 (Forum June 5, 2017) (holding that the respondent registered and used the <zoetismail.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). The Panel notes that Complainant does not provide any supporting evidence to this claim other than the screenshot of Respondent’s resolving domain name that has a verification link. On the other hand, the Respondent has not responded, and the Panel sees no reason to question the Complainant’s conclusion. Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends that Respondent has engaged in typosquatting which is evidence of bad faith. Registration of a domain name by typosquatting maybe evidence of bad faith per Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Here, Complainant claims that by misspelling the phrase “Webster Bank”, Respondent acted in bad faith when registering the domain name. The Panel agrees and finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the WEBSTER and WEBSTER BANK trademarks, showing further bad faith. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the trademark prior to registering the disputed domain name is adequate to find bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). In addition, registration of a disputed domain name that contains a trademark may be evidence of actual knowledge in a trademark. See The PNC Financial Services Group Inc. v. Unasi Inc., FA0508000535925, (Forum Sept. 20, 2005) (“Respondent’s registration of the disputed domain names, which contain confusingly similar versions of Complainant’s PNC, PNCBANK and PNCBANK.COM marks, and Complainant’s registration of its marks with the USPTO suggest[sic] that Respondent knew of Complainant’s rights in the mark when Respondent registered the domain names.”). Therefore, the Panel finds that Respondent’s registration of a domain name that included Complainant’s trademark is bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <websterbankc.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 15, 2019
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