Webster Financial Corporation v. The Bancorp Bank
a/k/a Avidity Health Care Solutions, Inc.
Claim Number: FA0808001220053
Complainant is Webster Financial Corporation (“Complainant”), represented by Diane
Duhaime, of Jorden Burt LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <neoshsabank.com> and <neoshsabank.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide; and <myhsabankaccount.com> and <neoshsabanking.com>, registered with Easydns Technologies, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 13, 2008.
On August 13, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <neoshsabank.com> and <neoshsabank.net> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 August 13, 2008, Easydns Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the <myhsabankaccount.com> and <neoshsabanking.com> domain names are registered with Easydns Technologies, Inc. and that Respondent is the current registrant of the names. Easydns Technologies, Inc. has verified that Respondent is bound by the Easydns Technologies, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On August
20, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 9, 2008
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@myhsabankaccount.com, postmaster@neoshsabanking.com, postmaster@neoshsabank.net, and postmaster@neoshsabank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <myhsabankaccount.com>, <neoshsabanking.com>, <neoshsabank.net>, and <neoshsabank.com> domain names are confusingly similar to Complainant’s HSA BANK mark.
2. Respondent does not have any rights or legitimate interests in the <myhsabankaccount.com>, <neoshsabanking.com>, <neoshsabank.net>, and <neoshsabank.com> domain names.
3. Respondent registered and used the <myhsabankaccount.com>, <neoshsabanking.com>, <neoshsabank.net>, and <neoshsabank.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
HSA Bank is a division of Webster Bank, National Association, which is a federally-chartered national bank and wholly-owned subsidiary of Complainant, Webster Financial Corporation. Complainant manages its banking operations within this division, which specifically offers health savings accounts and related services using the HSA BANK mark, which it registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,161,483 filed December 8, 2003 and issued October 24, 2006). Complainant also operates the <hsabank.com> domain name and resolving website.
Respondent registered the <myhsabankaccount.com> domain name on October 5, 2005, the <neoshsabank.com> and <neoshsabank.net> domain names on December 15, 2006, and the <neoshsabanking.com> domain name on January 16, 2007. The <neoshsabank.com> and <neoshsabank.net> domain names resolve to the website resolving from the <neoshsabanking.com> domain name, which is virtually identical to the website resolving from the <myhsabankaccount.com> domain name. These websites offer competing health savings account administration services under the “NEOS HSA Bank” and “The Bancorp Bank” names.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts rights in the HSA BANK mark in accordance with its USPTO trademark registration. The Panel finds this evidence adequate to confer rights in the mark to Complainant pursuant to Policy ¶ 4(a)(i). See Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring rights in the DINERS mark to the complainant based upon its USPTO trademark registration); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”).
The Panel further finds, pursuant to Policy ¶ 4(a)(i), that Complainant’s rights in its HSA BANK mark date back
to the filing date of Complainant’s trademark application, which is December 8,
2003. See Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27,
2003) (“As Complainant’s trademark application was subsequently approved by the
U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the
mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing
date.”).
Respondent’s disputed domain names each contain
Complainant’s HSA BANK mark in its entirety.
The domain names then add “neos,” “my” and “account,” or change “bank”
to “banking.” Each of the domain names also
adds the generic top-level domain (“gTLD”) “.com” or “.net.” The Panel finds that Complainant’s HSA BANK
mark remains the dominant portion of the disputed domain names, and
Respondent’s various additions are not distinguishing in any way. Therefore, the Panel concludes that
Respondent’s disputed domain names are confusingly similar to Complainant’s HSA
BANK mark pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant asserts that Respondent is not commonly known by the disputed domain names, or the HSA BANK name and mark. Complainant states it has never authorized Respondent to register or use the HSA BANK mark in any manner, and Respondent failed to submit any evidence to the contrary. The WHOIS information identifies Respondent as “The Bancorp Bank a/k/a Avidity Health Care Solutions, Inc.” Thus, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain names resolve to websites that offer health savings accounts and administrative services in direct competition with Complainant’s business. Respondent’s attempt to profit from the goodwill associated with Complainant’s HSA BANK mark constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names to advertise services that compete with Complainant’s business. In Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panel held that the respondent’s registration of a domain name confusingly similar to the complainant’s mark in order to operate a competing online dating website supported a finding that the respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii). Similarly, in Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000), the panel found that the respondent acted in bad faith under Policy ¶ 4(b)(iii) by attracting Internet users to a website that competed with the complainant’s business. In this case, Respondent’s disputed domain names compete with Complainant’s services, and are likely to disrupt Complainant’s business by diverting customers to Respondent’s competing sites. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent’s disputed domain names, which are confusingly similar to Complainant’s HSA BANK mark, are likely to cause confusion among customers searching for Complainant’s health savings accounts and services. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the services advertised on Respondent’s websites. Since Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s HSA BANK mark, the Panel finds that Respondent’s registration and use of the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website that resolved from the disputed domain name); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myhsabankaccount.com>, <neoshsabanking.com>, <neoshsabank.net>, and <neoshsabank.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 2, 2008
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