Webster Financial Corporation v. Li Jin Liang
Claim Number: FA1808001801762
Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Li Jin Liang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hsabanl.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2018; the Forum received payment on August 16, 2018.
On August 16, 2018, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <hsabanl.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 August 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2018 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@hsabanl.com. Also on August 21, 2018, 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 September 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Pursuant to UDRP Rule 11(a), the Panel finds that there is evidence, including the use of English on the website resolving from the disputed domain name, to support the likelihood that Respondent is conversant in the English language, and therefore determines that the proceeding will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <hsabanl.com> domain name is confusingly similar to Complainant’s HSA BANK mark.
2. Respondent does not have any rights or legitimate interests in the <hsabanl.com> domain name.
3. Respondent registered and uses the <hsabanl.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Webster Financial Corporation, provides financial services. Webster Bank, National Association, is a federally chartered national bank and a wholly owned subsidiary of Complainant. HSA BANK is a division of Webster Bank, National Association. Complainant holds a registration for the HSA BANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,161,483, registered Oct. 24, 2006).
Respondent registered the <hsabanl.com> domain name on June 11, 2018, and uses it to resolve to a website featuring competing hyperlinks.
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 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.”).
The Panel finds that Complainant established rights in the HSA BANK mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <hsabanl.com> domain name uses Complainant’s HSA BANK mark, and merely replaces the letter “K” with the letter “L” and adds the gTLD “.com.” These changes are not sufficient to distinguish a disputed domain name from a mark. See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel finds that Respondent’s <hsabanl.com> domain name is confusingly similar to Complainant’s HSA BANK mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. 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 alleges that Respondent does not have rights or legitimate interests in the disputed domain name, and is not commonly known by the domain name. Complainant has not licensed or otherwise authorized Respondent to use its HSA BANK mark. The WHOIS information of record for the <hsabanl.com> domain name lists “Li Jin Liang” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <hsabanl.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name); see also State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Complainant claims that Respondent uses the <hsabanl.com> domain name to resolve to a website featuring click-through links that compete with Complainant’s financial services business. Under Policy ¶¶ 4(c)(i) and (iii), use of a domain name to resolve to a website displaying competing links is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the <hsabanl.com> website, which indicate that the site features links, such as “HSA Investment Account,” “Employee Retirement Plans,” and “HSA Private Medical Insurance.” Therefore, the Panel finds that Respondent fails to use the <hsabanl.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the domain name to disrupt Complainant’s business and create confusion with Complainant’s HSA BANK mark for commercial gain by resolving to a website featuring competing hyperlinks. Under Policy ¶¶ 4(b)(iii) and (iv), use of a domain name to disrupt a complainant’s business or create confusion with a complainant’s mark for commercial gain is evidence of bad faith registration and use. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant claims that Respondent had actual knowledge of its rights in the HSA BANK mark because Respondent’s <hsabanl.com> domain name incorporates the full mark, and Respondent competes directly with Complainant in the financial services industry. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights when it registered the <hsabanl.com> domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant also contends that Respondent engages in typosquatting by registering a domain name containing a common misspelling of its HSA BANK mark. The Panel finds that typosquatting is itself evidence of bad faith registration under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has satisfied 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 <hsabanl.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 13, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page