Webster Financial Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1811001816249
Complainant is Webster Financial Corporation (“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<hsaabank.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 13, 2018; the Forum received payment on November 13, 2018.
On November 14, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hsaabank.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 November 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@hsaabank.com. Also on November 15, 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 December 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Webster Financial Corporation, provides business and consumer banking, mortgage, insurance, trust, investment and other financial services.
Complainant has rights in the HSA BANK mark based upon the registration with the United States Patent Office (“USPTO”).
Respondent’s <hsaabank.com> is confusingly similar to Complainant’s mark as Respondent incorporates the entire HSA BANK mark, merely adds the letter “a” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <hsaabank.com> domain name. Respondent is not licensed or authorized to use Complainant’s HSA BANK mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <hsaabank.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to divert Internet users to Respondent’s website where Respondent displays competing pay-per-click links.
Respondent registered and uses the <hsaabank.com> domain name in bad faith. Respondent is attempting to attract internet users to its competing click-through website for commercial gain. Additionally, Respondent used a privacy service to conceal its identity. Moreover, Respondent engages in typosquatting by adding the letter “a” in the HSA BANK mark. Finally, Respondent had actual knowledge or constructive notice of Complainant’s HSA BANK mark prior to registering the <hsaabank.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the HSA BANK mark through the registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the HSA BANK trademark.
Respondent uses the at-issue domain name to divert internet traffic to pay-per-click links.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its HSA BANK mark with the USPTO constitutes conclusive evidence of Complainant’s rights in such mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <hsaabank.com> domain name contains Complainant’s HSA BANK trademark, less its impermissible space and with an “a” inserted, all followed by the top-level domain name “.com.” The slight differences between Complainant’s trademark and the <hsaabank.com> domain name fail to distinguish the domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <hsaabank.com> domain name is confusingly similar to Complainant’s HSA BANK 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’ . . . ”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The uncloaked WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Carolina Rodrigues / Fundacion Comercio Electronico” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <hsaabank.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <hsaabank.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent uses the <hsaabank.com> to address a website displaying click-through links to third parties that compete with Complainant. The links include “BANK ACCOUNT” and “CREDIT UNION.” Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(ii) [UDRP Policy ¶ 4(c)(i)], nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iv) [UDRP Policy ¶ 4(c)(iii)]. See Boston Green Goods Inc. v. Dealwave, FA 1115186 (Forum Jan. 15, 2008) (“Respondent previously used the . . . domain name to host a website featuring third-party links, some in direct competition with Complainant. The Panel finds that such use is not a bona fide offering of goods or services under [UDRP] Policy ¶4(c)(i) or a legitimate noncommercial or fair use under [UDRP] Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above regarding rights and legitimate interests, Respondent uses at-issue domain name to address a website displaying competing click-through links. Such use demonstrates bad faith under Policy ¶¶ 4(b)(iv). See State Farm Mutual Automobile Insurance Company v. xi wang, FA 1579058, (Forum Oct. 13, 2014) (“Respondent previously used the <statefarmsusa.com> domain name for a parked webpage that consisted of a variety of different links, some of which were in direct competition with Complainant. . . . the Panel finds that Respondent’s previous use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, Respondent’s intentional misspelling of Complainant’s trademark in the at-issue domain name shows that Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either: 1) inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark; and/or 2) in viewing the domain name will confuse the domain name with its target trademark. Here, in creating the at-issue domain name Respondent misspells Complainant’s HSA BANK trademark by inserting an “a” into the mark. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent had actual knowledge of Complainant’s rights in the HSA BANK mark when it registered <hsaabank.com>. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s overt misspelling of Complainant’s mark in the <hsaabank.com> domain name. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hsaabank.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 9, 2018
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