Webster Financial Corporation v. mo ban lin shi / Cheng Du Xi Wei Shu Ma Ke Ji You Xian Gong Si
Claim Number: FA1606001680509
Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is mo ban lin shi / Cheng Du Xi Wei Shu Ma Ke Ji You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hsabamk.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 21, 2016; the Forum received payment on June 21, 2016.
On Jun 22, 2016, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <hsabamk.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 June 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@hsabamk.com. Also on June 24, 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 July 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 holds United States Patent and Trademark Office (“USPTO”) registrations for the HSA BANK mark (e.g., Reg. No. 3,161,483, registered Oct. 24, 2006). Respondent’s <hsabamk.com> is a typosquatted version of the HSA BANK mark because the “N” is replaced with an “M”—two keys that are adjacent on a “qwerty” keyboard and likely to be mistyped by Internauts. Further, the elimination of the space between words of the mark and the addition of the “.com” generic top-level domain (“gTLD”) are irrelevant to this analysis.
Respondent has no rights or legitimate interests in respect of the <hsabamk.com> domain name. Respondent is not commonly known by <hsabamk.com>. Further, the disputed domain resolves to a site that offers hyperlinks to health savings account services in direct competition with Complainant’s offerings. Respondent’s use does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used the disputed domain in bad faith. Because the <hsabamk.com> domain competes with Complainant—and presumably profits via pay-per-click hyperlinks—Policy ¶¶ 4(b)(iii) and (iv), bad faith is present. Additionally, Respondent’s typosquatting is further evidence of bad faith. Taken together, Respondent had actual and/or constructive knowledge when registering and using the disputed domain, also bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Webster Financial Corporation of Waterbury, CT, USA. Complainant is the owner of numerous domestic and international registrations for the mark HSA BANK and related marks which it has used continuously since at least as early as 2003 in connection with its provision of banking, insurance, trust and investment services. Complainant is also the owner of many domain name registrations related to its registered marks including <hsabank.com>.
Respondent is mo ban lin shi / Cheng Du Xi Wei Shu Ma Ke Ji You Xian Gong Si of Chengdu, China. Respondents’ registrar’s address is also identified as Chengdu, China. The Panel notes that <hsabamk.com> was registered on or about April 8, 2016.
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
Complainant argues that Respondent has caused the content on the website that resolves from the <hsabamk.com> domain to be in English and that the privacy policy is in English. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been provided by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
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.”).
Complainant asserts it holds USPTO registrations for the HSA BANK mark (e.g., Reg. No. 3,161,483, registered Oct. 24, 2006), which represent rights in the mark. Past panels have agreed that such registrations satisfy the rights requirement of Policy ¶ 4(a)(i). 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).). The Panel here finds that Complainant has rights in the HSA BANK mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <hsabamk.com> is a typosquatted version of the HSA BANK mark. The Panel notes that the “N” in the mark is replaced with an “M”—two keys which are adjacent on a “qwerty” keyboard and likely to be mistyped by Internauts. See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶ 4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). The Panel also notes that the elimination of the space between words of the mark and the addition of the “.com” gTLD are irrelevant to this analysis. See 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)). The Panel here finds that Respondent’s misspelling of the HSA BANK mark amounts to a typosqatting effort that cannot overcome Policy ¶ 4(a)(i), and therefore Complainant has succeeded under this prong of the Policy.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), then 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 (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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in respect of the <hsabamk.com> domain name. Complainant contends that Respondent is not commonly known by <hsabamk.com>. The publicly available WHOIS lists Respondent as “mo ban lin shi / Cheng Du Xi Wei Shu Ma Ke Ji You Xian Gong Si.” The WHOIS data and Respondent’s failure to submit any supporting evidence in this proceeding, support the Panel’s finding here that no basis exists upon which a finding of Policy ¶ 4(c)(ii) for Respondent would be proper. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant contends that the disputed domain resolves to a site which offers hyperlinks to health savings account services in direct competition with Complainant’s offerings. Hyperlinks include, “HSA Bank Account,” “Pension Annuity Calculator,” and “Ira Retirement Account,” to name a few. Such competing behavior has not been considered a representation of rights or legitimate interests. 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 here finds that Respondent’s use of the disputed domain does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent registered and used the disputed domain in bad faith. Complainant argues that the <hsabamk.com> domain competes with Complainant—and that Respondent presumably profits via pay-per-click hyperlinks—therefore Policy ¶¶ 4(b)(iii) and (iv) bad faith is present. Prior panels have found bad faith under both elements in such circumstances. 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 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)). The Panel here finds that Policy ¶¶ 4(b)(iii) and (iv) bad faith have been shown under the facts of the present case.
Complainant additionally argues that Respondent’s typosquatting is further evidence of bad faith. See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel here finds that typosquatting is present and illustrates bad faith registration and use by the Respondents.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hsabamk.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 11, 2016
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