DECISION

 

Webster Financial Corporation v. SATOSHI SHIMOSHITA

Claim Number: FA1611001704955

PARTIES

Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky, of Carlton Fields Jorden Burt, P.A., Georgia, USA.  Respondent is Satoshi Shimoshita (“Respondent”), represented by Steven L. Rinehart, Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hsbank.com>, registered with eNom, Inc.

 

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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 29, 2016; the Forum received payment on November 29, 2016.

 

On November 30, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <hsbank.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 November 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2016 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@hsbank.com.  Also on November 30, 2016, 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.

 

A timely Response was received and determined to be complete on December 16, 2016.

 

A timely “Submission of Additional Written Statements and Documents” was filed by Complainant on December 21, 2016.

 

A timely “Response to Additional Submission” was filed by Respondent on December 27, 2016.

 

On December 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Webster Financial Corporation provides business and consumer banking, mortgage, insurance, trust, investment and other financial services. Since at least as early as December 10, 2003, Complainant, through its licensee and predecessor in interest, has used the mark HSA BANK in connection with its financial services.  HSA Bank is one of the largest administrators of health savings accounts in the U.S., with over 265,000 active accounts, over $730 million in HSA funds in custody, and over $75 million in brokerage investments. HSA Bank provides its services through the U.S. and its territories.

 

The HSA BANK mark, and derivatives thereof, is the subject of a number of U.S. trademark registrations and pending applications owned by Complainant. Complainant also owns a number of domain name registrations that incorporate the term “hsabank” or variations thereof.

 

According to Complainant, Respondent registered the disputed domain name hsbank.com on December 10, 2001 and updated the domain name as of November 29, 2016.  As of such latter date, Respondent’s website prominently displays the term “hsbank.com” at the top of the home page.  The website contains a listing of links which brings the Internet user to a website containing links to Complainant’s competitors.

 

Complainant’s counsel, on October 31, 2016, sent a “cease and desist” letter to Respondent regarding its hsbank.com domain name registration. Respondent did not reply to the letter. 

 

Complainant asserts that the domain name hsbank.com is confusingly similar to Complainant’s HSA BANK mark. Complainant notes that the domain name is virtually identical to the HSA BANK mark, except that Respondent has intentionally misspelled Complainant’s mark by removing the letter “a” in “hsa.”  Complainant maintains that “[t]his alteration is a classic case of `typosquatting,’ designed to take advantage of Internet users’ typographical errors and create a situation of deception and confusion among consumers attempting to locate Complainant’s website at www.hsabank.com.”

 

Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name and registered and is using the domain name in bad faith. Complainant indicates that it never authorized Respondent to register or use the HSA BANK mark in any manner and is not aware of any evidence that Respondent has ever commonly been known by the name “HS Bank,” or variations thereof, prior to its registration of the disputed domain name.  Noting that the disputed site contains links to services that compete with those it provides and that Respondent, presumably, commercially benefits from the misleading domain name by receiving click-through fees, Complainant contends that “[u]se of a confusingly similar domain name to divert Internet users to a website containing such links is not a bona fide offering of goods or services pursuant to UDRP Policy ¶4(c)(i). Instead, this demonstrates that Respondent registered and is using the hsbank.com domain name in bad faith, for the purpose of intentionally attempting to divert, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s HSA BANK mark as to the source, sponsorship, affiliation, and endorsement of the services offered through links on Respondent’s website.”

 

Complainant further argues that any form of typosquatting is, in itself, evidence of bad faith registration and use and that Respondent’s registration of the hsbank.com domain name in spite of actual or constructive knowledge of Complainant’s rights in the HSA BANK mark amounts to bad faith registration and use pursuant to UDRP Policy ¶4(a)(iii).

 

B. Respondent

 

Respondent asserts that Complainant’s “claims are baseless and the Complainant has abused this administrative process in an attempt to rob the Respondent of not just a domain name which is entirely descriptive, but a domain name which was registered sixteen years before the Complainant accrued trademark rights or even began using the Mark.  In addition, the domain hsbank.com is not confusingly similar to the mark HSA BANK and the Complainant’s claims are barred by laches.” 

 

Respondent notes that he registered the domain name in 2001, and intended to eventually offer retail banking services at the hsbank.com site.  Thus, he emphasizes, it is undisputed that the domain name in issue was registered before the Complainant ever used its HSA BANK mark, let alone accrued trademark rights. “This fact alone,” Respondent asserts, “is dispositive in this case….”

 

Moreover, Respondent adds, the disputed domain name does not incorporate the HSA BANK-formative marks, nor is it confusingly similar thereto.  Respondent argues that the dominant textual element in the Complainant’s mark is the expression HSA, not HS.

 

Respondent also alleges that the expression “HS” and the disputed domain are clearly generic or descriptive insofar as the letters represent the transliterated letters common to Respondent’s own personal names and is descriptive of countless expressions in English and Japanese.  According to Respondent, “[w]hen a trademark is composed of generic terms, or common word phrases, and the disputed domain is being used `because of its attraction as [a] dictionary word, and not because of [its] value as [a] trademark,’ the Respondent has legitimate rights in the domain” under UDRP Policy ¶4(c)(i).

 

In support of its laches defense, Respondent indicates that Complainant has waited sixteen years to file its complaint under the UDRP.

 

Finally, Respondent contends that “[t]his dispute presents a clear case of Reverse Domain Name Hijacking.”  Respondent asserts that Complainant has no bona fide basis for commencing this proceeding.

 

C. Additional Submissions

 

In its Additional Submission, Complainant complains that the Response should be stricken from the record and Respondent considered in default because, while Complainant received a copy of the Response via email from the Forum, it did not receive a copy of the Response from Respondent directly, in violation of ¶2(b) of the Policy.[1]

 

Complainant reiterates its position that the disputed domain name is confusingly similar to the HSA BANK mark because this is a classic case of typosquatting.  Complainant further argues that the term “HS” is not descriptive of countless expressions, as argued by Respondent, and is certainly not descriptive of banking services.

 

According to Complainant, Respondent, after receiving the Complaint, changed the hsbank.com domain name insofar as the domain name now reverts to a website that directs Internet users to various other sites, including a Yahoo! search for HSBC Bank, one of Complainant’s competitors, and www. Realtor.com. Complainant further alleges that Respondent did not specifically link to health savings account information until around 2011, which is after Complainant obtained rights in its HSA BANK mark. Complainant maintains that Respondent’s argument that he registered the disputed domain name prior to Complainant’s use of the HSA BANK mark “should not factor” with respect to the issue of bad faith. “Respondent intentionally changed his use of the disputed domain name after Complainant obtained rights to its HSA BANK mark, the new use is unrelated to Respondent’s earlier uses, and the new use is textbook cybersquatting.”

 

Complainant refers the Panel to paragraph 2 of the Policy which provides, in relevant part, that “[b]y applying to register a domain name, or asking us to renew a domain name registration, you hereby represent and warrant to us that …(d) you will not knowingly use the domain name in violation of any applicable laws or regulations.  It is your responsibility to determine whether your domain name infringes or violates someone else’s rights.”  Thus, Complainant asserts, “[r]egardless of what was in Respondent’s mind at the time of registration, Respondent made express representations and warranties as to future use of which Respondent is now breaching by using the hsbank.com domain name in spite of actual or constructive knowledge of Complainant’s rights in the HSA BANK mark.”

 

Based on the above, Complainant asserts that there is “absolutely no basis” for Respondent’s reverse domain name hijacking claim.

 

Complainant also asserts that the defense of laches has no application to a UDRP proceeding and, moreover, that Complainant did not delay in enforcing its rights. Complainant notes that its counsel sent a “cease and desist” letter to Respondent on October 31, 2016 and, when the letter was ignored, filed the Complaint in this matter on November 29, 2016.

 

In his “Response to Additional Submission,” Respondent contends that he complied with all applicable rules in responding to the Complaint and alleges that Complainant erred in seeking an extension of time for the filing of its additional submission.  Respondent then notes that “both parties have admitted that the Disputed Domain was registered in 2001, well before even the Complainant’s more-than-questionable first use date.  For this reason alone without any other analysis, the Panel should deny the Complaint and find the Complainant has engaged in Reverse Domain Name Hijacking.”

 

Respondent also argues that the cases relied upon by Complainant with respect to the issue of laches have been superseded and that, contrary to Complainant’s assertion, the disputed domain name does not incorporate Complainant’s mark in its entirety and that HS is a generic expression not confusingly similar to HSA.

 

 

FINDINGS

 

The Panel finds that: (1) the disputed domain name, hsbank.com, is confusingly similar to the mark HSA BANK and that Complainant has rights in such mark; (2) Respondent has no rights or legitimate interests in the disputed domain name; (3) the disputed domain name was not registered in bad faith; and (4) the facts of this case do not support a finding of reverse domain name hijacking.

 

DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that the disputed domain name, hsbank.com, is confusingly similar to the HSA BANK mark. The domain name incorporates the first two letters of the HSA BANK mark, as well as the term “bank” in its entirety.  The use of the term “bank” in the domain name, coupled with the first two letters of the term “HSA” renders the HSA BANK mark recognizable within the domain name. 

 

The Panel further determines that Complainant, through its use of, and registrations covering, the HSA BANK mark and derivatives thereof, has rights in such mark.

 

Rights or Legitimate Interests

 

The Panel determines that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.  The evidence indicates that Respondent uses the hsbank.com domain name in connection with a site that includes links to banking services that, according to Complainant, are offered by its competitors and that Respondent, presumably, earns “click-through” fees every time an Internet user clicks on a link. Such use of a confusingly similar domain name does not constitute use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, within the meaning of paragraph 4(c) of the Policy. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (FORUM Jan. 1, 2015) (“The Panel finds that Respondent’s use of the cheepcaribbean.com name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”)

 

While Respondent argues that the term “hs” is generic or descriptive, there is no evidence that such term, as used by Respondent in the domain name, identifies or describes anything related to a banking service or that the term is descriptive of countless expressions in English and Japanese.  Indeed, the evidence is to the contrary. See Composite Exhibits 5 and 6 to Complainant’s additional submission.

 

Registration and Use in Bad Faith

 

The Panel concludes that Complainant has not sustained its burden of establishing that the disputed domain name was registered in bad faith and, thus, determines that this element of the Policy has not been established.  It is not disputed that the domain name in issue was first registered by Respondent on December 10, 2001.  This is two years prior to the earliest date of first use of the HSA BANK mark.[2] 

 

As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“Overview”), ¶ 3.1, the consensus view is that “[g]enerally speaking, … when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established …, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.” See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (FORUM May 16, 2007).  The Overview notes, however, that “in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”  In this case, there is no evidence or argument that, prior to registration of the domain name in dispute, Respondent was clearly aware of Complainant or of any potential trademark rights. 

 

Complainant, however, refers the Panel to paragraph 2 of the applicable Policy and to an earlier three-member panel decision involving the instant Respondent, Jappy GmBH v. Satoshi Shimoshita, WIPO Case No. D2010-1001.  The Jappy panel noted that in Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, it was held that paragraph 2 of the Policy not only imposes a duty on the registrant to conduct an investigation of third party trademark rights at the time of registration … “but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws of regulations.” Consequently, the panelist in the Octogen case found that even though a party may register or acquire a domain name in good faith, if it uses the domain name in the future so as to call into question the party’s compliance with his representations and warranties (under paragraph 2 of the Policy), this may provide basis for a finding of registration and use in bad faith. The Jappy panel indicated that the Octogen case was applied and followed by the panelist in Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278, concerning the disputed domain name <parvi.org>.

 

In this regard, Complainant asserts that, after receiving the Complaint in this matter, Respondent changed the content of the hsbank.com site to direct users to various other sites, including a Yahoo! search for HSBC Bank, one of Complainant’s competitors.  Complainant further indicates that, beginning sometime in 2011, Respondent’s site included a link to health savings account information.  As noted above, Complainant is one of the largest administrators of health savings accounts in the U.S. 

 

The current Panel agrees, however, with the three-member panel in Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, that there does not exist a compelling policy or legal basis for retroactively characterizing later abuses as bad faith in the "registration" of a domain name.   As noted in Mile, Inc., the plain language of paragraph 4(a)(iii) of the Policy requires a conclusion that the domain name has been "registered" and  "used" in bad faith.[3] See, e.g., Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413; Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688.  The Mile, Inc. panel found that reading "registered" as a continuous act that can be abused at any time would appear to make it essentially synonymous with "use" and deprive the conjunctive phrase of its full meaning.

 

The Mile, Inc. panel was also concerned, as is the instant Panel, that the reasoning in Octogen and similarly decided cases runs counter to a decade of decisions addressing the UDRP's conjunctive requirements for a demonstration of bad faith. See, e.g., Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455; Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716; Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois, WIPO Case No. D2010-0217 (majority opinion); Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470; A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800 (majority opinion).   It also runs counter to the consensus view that registration in bad faith must normally occur at the time the current registrant took possession of the domain name.  See Overview, ¶3.7. 

 

Moreover, while the Panel finds that the equitable defense of laches does not compel denial of the Complaint, the fact that Complainant delayed over 13 years in bringing this UDRP proceeding may be considered by the Panel in its determination of bad faith.  See Meat & Livestock Comm’n v. Pearce, WIPO Case No. D2003-0645 (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”)

 

Reverse Domain Name Hijacking

 

The Panel concludes that the facts of this case do not warrant a finding of reverse domain name hijacking.  As indicated above, Complainant prevailed on two of the three elements of the Policy and that, with respect to the “bad faith” element, there is some UDRP panel support for a finding in favor of Complainant.  Under such circumstances, the Panel cannot find that Complainant is “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name,” as required by paragraph 1 of the Rules. 

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <hsbank.com> domain REMAIN WITH Respondent.

 

 

Jeffrey M. Samuels, Panelist

Dated:  January 3, 2017