Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy
Claim Number: FA1209001464477
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Diane Duhaime of Jorden Burt LLP, Connecticut, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <websterbannk.com>, <websteronlien.com>, <webstrbank.com>, and <webssteronline.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 26, 2012; the National Arbitration Forum received payment on September 26, 2012.
On September 27, 2012 and October 19, 2012, ABOVE.COM PTY LTD. Con-firmed by e-mail to the National Arbitration Forum that the <websterbannk.com>, <websteronlien.com>, <webstrbank.com>, and <webssteronline.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. has verified that Re-spondent is bound by the ABOVE.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in ac-cordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of November 13, 2012 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, admin-istrative, and billing contacts, and to postmaster@websterbannk.com, post-master@websteronlien.com, postmaster@webstrbank.com, and postmaster-@webssteronline.com. Also on October 22, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the dead-line for a Response, was transmitted to Respondent via post and fax, to all en-tities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Not-ices, 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 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
Webster Financial Corporation is the parent company of Webster Bank, National Association.
Collectively the two companies are identified in the Complaint in this proceeding as Complainant.
Complainant holds rights to trademark registrations containing the WEBSTER mark, and has used the WEBSTER name and mark since at least November 1, 1995, for the marketing of banking and other financial services.
Complainant holds trademark registrations, on file with the United States Patent and Trademark Office (“USPTO”), for the marks WEBSTER BANK (Reg. No. 3,012,979, registered Nov. 8, 2005), WEBSTERONLINE.COM (Reg. No. 3,409,243, registered April 8, 2008) and WEBSTER (Reg. No. 2,801,838, registered January 6, 2004).
Respondent registered the contested domain names <websterbannk.com>, <websteronlien.com>, <webstrbank.com>, and <webssteronline.com> between February 13, 2008 and July 1, 2012.
Respondent’s <websterbannk.com>, <websteronlien.com>, <webstrbank.com>, and <webssteronline.com> domain names are confusingly similar to Complain-ant’s WEBSTER BANK, WEBSTERONLINE.COM and WEBSTER marks.
Complainant has never authorized Respondent to register or use its marks in any manner, and Respondent has not been commonly known by any of the contested domain names.
Each of Respondent’s domain names resolves to a website that carries pay-per-click links to websites offering financial services in competition with those offered by Complainant.
Respondent registered the disputed domain names to attract Internet users to the resolving websites for Respondent’s commercial gain.
Respondent has neither any rights to nor any legitimate interests in any of the contested domain names.
Respondent has been a respondent in multiple UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants.
Such decisions against Respondent establish a pattern of bad faith registration and use of domain names, which also indicates bad faith registration and use of the domain names in the present proceedings.
Respondent’s registration and use of the disputed domain names to divert Inter-net users to the websites of Complainant’s competitors disrupts Complainant’s business and is evidence of bad faith registration and use of the domain names.
Respondent’s creation of the contested domain names as multiple variations on Complainant’s marks demonstrates typo-squatting, which is evidence of bad faith registration and use of the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Preliminary Issue: Multiple Complainants
In the instant proceeding, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submit-ting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) de-fines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multi-ple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
In Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), a panel recited that:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a part-nership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
And in Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), a panel treated two complainants as a single entity where both parties held rights in trademarks contained within dis-puted domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), a panel found a sufficient link between multiple complainants where there was a license between them regarding use of the mark there in issue.
On the record before us, we conclude that there is a sufficient uncontested nexus between the companies making up the joint Complainant to justify permitting them to proceed as a single party in this proceeding.
Complainant has rights in each of the marks WEBSTER, WEBSTER BANK and WEBSTERONLINE.COM under Policy ¶ 4(a)(i) by reason of its registration of the marks with a national trademark authority, the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that a com-plainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the marks pursuant to Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its marks arise from registration of the marks in a jurisdiction other than that of Complainant’s resi-dence or place of business. See, for example, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient under the Policy that a complainant can demonstrate rights in a mark in some jurisdiction).
Turning then to the central question arising under Policy ¶ 4(a)(i), we conclude from the record that Respondent’s <websterbannk.com>, <websteronlien.com>, <webstrbank.com> and <webssteronline.com> domain names are confusingly similar to Complainant’s marks WEBSTER BANK, WEBSTERONLINE.COM and WEBSTER. Each domain name contains a misspelled version of one of Com-plainant’s marks, minus the spaces between the terms of the marks, but with the addition of the gTLD “.com.” These alterations of the marks are insufficient to distinguish the resulting domain names from the marks under the standards of the Policy. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. For-um May 24, 2005) (finding that a respondent’s domain names were con-fusingly similar to a UDRP complainant’s mark because the domain names were common misspellings of the mark).
Similarly, the removal of spaces between the terms of the mark of another and the addition of the gTLD “.com” in forming a domain name are insignificant to a Policy ¶ 4(a)(i) analysis because spaces are not permitted in domain names and every domain name requires a gTLD. See, for example, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (find-ing that the elimination of spaces between the terms of a mark and the addition of a gTLD to the mark in creating a domain name do not establish distinctiveness from that mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in any of the contested do-main names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Complainant has never authorized Respondent to register or use its marks, and that Respondent has not been commonly known by any of the disputed do-main names. Moreover, the WHOIS information for each of the domain names identifies the registrant only as “Above.com Domain Privacy,” which does not resemble any of the domain names. On this record we conclude that Respond-ent has not been commonly known by any of the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in any of them under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the domain name there in issue, where there was no evidence in the record, including the pertinent WHOIS information, showing that that respondent was commonly known by that domain name, and where a complainant had not authorized that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s domain names resolve to websites carrying links to websites offering financial services in competition with those offered by Complainant, and that Respondent profits from the operation of the resolving websites. The use of domain names which are confusingly similar to Complainant’s marks thus to divert Internet users is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyper-links, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The record reflects that Respondent has been a respondent in other UDRP pro-ceedings in which it was ordered to transfer disputed domain names to various complainants. See, for example, Zumiez Inc. v. Above.com DomainPrivacy, FA 1431587 (Nat. Arb. Forum Apr. 12, 2012); see also Webster Fin. Corp. & Web-ster Bank, Nat. Assoc. v. Above.com Legal/ Above.com Domain Privacy, FA 1436473 (Nat. Arb. Forum May 2, 2012). Under Policy ¶ 4(b)(ii), this pattern of registration and use of domain names based on the marks of others establishes a pattern of bad faith registration and use of domain names which stands as evidence of bad faith in the registration and use of the domain names here in issue. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (finding that a pattern of prior UDRP proceedings in which a respondent was found to have registered domain names in bad faith were sufficient evidence of bad faith registration and use of the domain name there in dispute).
For this reason, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii)).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <websterbannk.com>, <websteronlien.com>, <webstrbank.com>, and <webssteronline.com> domain names be forthwith
TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 30, 2012
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