Webster Financial Corporation v. Domain Admin / Hush Whois Protection Ltd.
Claim Number: FA1612001705381
Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Domain Admin / Hush Whois Protection Ltd. (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hasbank.com>, registered with Key-Systems GmbH.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically December 1, 2016; the Forum received payment December 1, 2016.
On December 6, 2016, Key-Systems GmbH confirmed by e-mail to the Forum that the <hasbank.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@hasbank.com. Also on December 6, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Policy ¶ 4(a)(i)
Complainant has rights in the HSA BANK. Respondent’s <hasbank.com> domain name is confusingly similar to the HSA BANK mark because it incorporates a misspelling of the mark, minus the space, along with the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <hasbank.com> domain name because it is not authorized to use the HSA BANK mark and because no evidence even suggests that Respondent is so known. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains links to competitors of Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <hasbank.com> domain name in bad faith because the resolving website contains links to competitors of Complainant. Respondent registered the <hasbank.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the HSA BANK mark, through the use of typosquatting, and a privacy service.
Respondent:
Respondent did not submit a formal Response. The Panel notes that Respondent created the <hasbank.com> domain name February 4, 2005.
Complainant has common law rights and legitimate interests to the mark contained in its entirety in typosquatted format within the disputed domain name.
Respondent registered a disputed domain name that contained Complainant’s protected mark and is confusingly similar to it.
Respondent has no rights or legitimate interests in either the mark or the domain name containing it.
Respondent registered and uses the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant claims rights in the HSA BANK mark through registration with the United States Patent and Trademark Office (“USPTO”) for use with banking services. Complainant claims Registration Numbers 3,161,483 and 3,274,343 for the mark, but has not provided copies of such registrations here. The Panel reviewed the attachments to Complainant’s claim and finds the evidence submitted sufficient to established common law rights to the mark and the Panel finds that it is not necessary to delay a resolution of the matter in order to require Complainant to produce the information in support of the claimed registrations. Complainant has shown rights in the HSA BANK mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
The Panel notes as well that while Complainant does not claim to have common law rights in the HSA BANK mark, Complainant provided the following proof that substantiates any claim for common law rights: USPTO registrations for marks related to the HSA BANK mark, in Exhibit 1; USPTO filings for marks related to the HSA BANK, in Exhibit 2; a declaration swearing to the length and degree of use of the HSA BANK since December 10, 2003, in Exhibit 3; information related to registration of domain names incorporating the HSA BANK mark, in Exhibit 4; screenshots of Complainant’s own website, in Exhibit 6; copies of advertising material related to the HSA BANK mark, in Exhibit 7; and a declaration swearing to the manner in which Complainant uses its website, in Exhibit 8. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”). The Panel finds Complainant’s claims to own USPTO registrations for the HSA BANK mark wanting but finds evidence demonstrative of secondary meaning, and thus finds that Complainant has common law rights in the HSA BANK mark.
Complainant urges that Respondent’s <hasbank.com> domain name is confusingly similar to the HSA BANK mark because it incorporates a misspelling of the mark, minus the space, along with the gTLD “.com.” The Panel accordingly finds that the domain name and mark are confusingly similar. See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name.); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant maintains that Respondent is not commonly known by the <hasbank.com> domain name because it is not authorized to use the HSA BANK mark and because no evidence even suggests that Respondent is so known. The Panel also notes no contrary evidence suggests that Respondent is known by Complainant’s mark. 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).
Complainant contends that Respondent fails to use the <hasbank.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains links to competitors of Complainant. Complainant provided a screenshot in Exhibit 11 to demonstrate this use. The Panel finds this evidence sufficient and finds that Respondent does not use the <hasbank.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 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).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant maintains that Respondent uses the <hasbank.com> domain name in bad faith because the resolving website contains links to competitors of Complainant. Complainant provided a screenshot in Exhibit 11 to demonstrate this use. The Panel finds this evidence sufficient, and finds that Respondent uses the <hasbank.com> domain name in bad faith according to Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum January 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)); see also Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Complainant claims that Respondent registered the <hasbank.com> domain name in bad faith because it did so with knowledge of Complainant’s rights in the HSA BANK mark. Complainant urges that Respondent had such knowledge due to Complainant’s registrations of the mark and Respondent’s use of the mark. The Panel finds the evidence sufficient to show that Respondent had actual knowledge of Complainant’s rights at the time of domain name registration, and Respondent registered and uses the domain in bad faith. 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.”).
Complainant urges that Respondent registered the <hasbank.com> domain name in bad faith because it did so through the use of typosquatting. The Panel agrees that the domain name was created through typosquatting, and views this conduct as further evidence of bad faith. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum November 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)).
Complainant alleges that Respondent registered the <hasbank.com> domain name in bad faith because it did so through the use of a privacy service. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances, which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, The Panel views Respondent’s use of a privacy shield to be in a manner that materially adversely affects or obscures the facts of this proceeding, and finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <hasbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 16, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page