Webster Financial Corporation and Webster Bank, National Association v. jun yin
Claim Number: FA1604001669107
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Diane Duhaime of Carlton Fields Jorden Burt, P.A., Connecticut, USA. Respondent is jun yin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websteronline.co>, registered with NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or 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 April 5, 2016; the Forum received payment on April 5, 2016.
On April 6, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <websteronline.co> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@websteronline.co. Also on April 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 April 29, 2016, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <websteronline.co> domain name is confusingly similar to Complainant’s WEBSTERONLINE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <websteronline.co> domain name.
3. Respondent registered and uses the <websteronline.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers financial services, including online banking, through its WEBSTER and WEBSTERONLINE.COM marks. Complainant owns the marks through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,409,243, registered Apr. 8, 2008; Reg. No. 3,334,640, registered Nov. 13, 2007).
Respondent registered the <websteronline.co> domain name on March 26, 2015, and uses it to resolve to the Sedo parking service.
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 (Nat. Arb. 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 has rights in the WEBSTERONLINE.COM mark through its registration with the USPTO under Policy ¶ 4(a)(i). Registration with the USPTO has been found to establish a complainant’s rights in a mark, even when respondent does not operate in the United States. See State Farm Mutual Automobile Insurance Company v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1579014 (Forum Oct. 8, 2014) (finding that although Respondent resides in Australia, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country where Respondent resides).
Respondent’s <websteronline.co> domain name is confusingly similar to Complainant’s WEBSTERONLINE.COM mark because the domain name incorporates the mark in its entirety, merely changing the gTLD “.com” to the ccTLD “.co.” Panels have repeatedly held that the addition of a gTLD or a ccTLD does not alleviate the similarity between a mark and a disputed domain name. See ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”). Thus, the Panel finds that Respondent’s <websteronline.co> domain name is confusingly similar to Complainant’s WEBSTERONLINE.COM 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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 argues that Respondent lacks rights in the <websteronline.co> domain name and is not commonly known by the disputed domain. The WHOIS information for the disputed domain name identifies “jun yin” as the registrant of record. Thus, the Panel finds that Respondent is not commonly known by the <websteronline.co> domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum August 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant has submitted a screenshot of the webpage resolving from <websteronline.co>, which hosts hyperlinks to financial services that directly compete with those offered by Complainant. These links include, “Webster Online Banking,” “Bank online Banking,” and “Bank Account Loans.” The Panel finds that Respondent’s use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <websteronline.co> domain name to host a generic landing page featuring various competing hyperlinks. Prior panels have found bad faith where a respondent directed users to a website hosting competing commercial links. 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).”). Thus, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Respondent is using the <websteronline.co> domain name to confuse and attract Internet users to Respondent’s webpage for click-through fees. This constitutes bad faith under Policy ¶ 4(a)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in its WEBSTERONLINE.COM marks, because Respondent incorporated Complainant’s registered mark in its entirety. The Panel agrees, noting that Respondent competes directly with Complainant, and finds that Respondent had actual knowledge of Complainant's mark and rights when it registered the disputed domain name, further bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <websteronline.co> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 3, 2016
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