Webster Financial Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1807001798297
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 <wwwmyhsabank.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 24, 2018; the Forum received payment on July 24, 2018.
On July 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wwwmyhsabank.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 July 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@wwwmyhsabank.com. Also on July 30, 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 August 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant, Webster Financial Corporation, provides business and consumer banking, mortgage, insurance, trust, investment and other 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 uses its HSA BANK mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,161,483, Oct. 24, 2006). Respondent’s <wwwmyhsabank.com>[i] domain name is confusingly similar to Complainant’s HSA BANK mark as it merely adds the letters “wwwmy,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent does not have rights or legitimate interests in the <wwwmyhsabank.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its HSA BANK mark in any fashion. Respondent is also not commonly known by the domain name as the WHOIS information of record lists “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant. Respondent is not using the <wwwmyhsabank.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website featuring links that compete with Complainant’s business.
3. Respondent registered and is using the <wwwmyhsabank.com> domain name in bad faith. Respondent registered the domain name for the purpose of disrupting Complainant’s business.
4. Further, Respondent attempts to create confusion with Complainant’s mark for commercial gain.
5. Respondent also registered the domain name with full knowledge of Complainant’s rights in the <wwwmyhsabank.com> domain name. Moreover, Respondent used a privacy service to conceal its true identity and engaged in typosquatting when it registered the confusingly similar domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HSA BANK mark. Respondent’s domain name is confusingly similar to Complainant’s HSA BANK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <wwwmyhsabank.com> domain name and that Respondent registered and uses the domain name 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 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 has rights in its HSA BANK mark to promote its products and services and established rights in the mark through registration with the USPTO (e.g., Reg. No. 3,161,483, Oct. 24, 2006). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015). Thus, the Panel holds that Complainant has established rights in the HSA BANK mark under Policy ¶ 4(a)(i).
Next, Complainant alleges that Respondent’s <wwwmyhsabank.com> domain name is confusingly similar to Complainant’s HSA BANK mark as it merely adds the letters “wwwmy,” and the generic top-level domain (“gTLD”) “.com.” The addition of the letters “www” the and term “my” to a mark does not sufficiently distinguish the domain name from the mark. See Citizens Financial Group, Inc. v. Paul Taylor, FA 1714579 (Forum Mar. 14, 2017) (“Similarly, addition of the letters “www” to the beginning of a mark in order to from a domain name does not distinguish the domain name for the purposes of a Policy ¶ 4(a)(i) analysis for confusing similarity.”); see also BBY Solutions, Inc. v Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015) (“The addition of the generic word ‘my’… does not prevent a finding that the disputed domain name and mark are identical or confusingly similar.”). Moreover, the addition of a gTLD does not negate confusing similarity between a mark and a domain name. See 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). Therefore, Respondent’s <wwwmyhsabank.com> domain name is confusingly similar to Complainant’s HSA BANK mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <wwwmyhsabank.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent does not have rights or legitimate interests in the <wwwmyhsabank.com> domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its HSA BANK mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. 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). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a domain name. See 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)). The WHOIS information of record for the <wwwmyhsabank.com> domain name lists “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <wwwmyhsabank.com> domain name.
Complainant has provided evidence that Respondent uses the domain name to resolve to a website featuring links that compete with Complainant’s business. Under Policy ¶ 4(c)(i) and (iii), use of a domain name to promote competing links may not be considered 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 has provided screenshots of the <wwwmyhsabank.com> resolving website, which indicates that the site displays links for “HEALTH SAVING PLAN,” HSA PLAN,” AND “HSA MEDICAL PLAN.” Accordingly, the Panel holds that Respondent failed to use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under the Policy.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent engaged in Policy ¶ 4(b)(iii) and (iv) bad faith registration and use by disrupting Complainant’s business and attempting to create confusion with Complainant’s HSA BANK mark for commercial gain. Specifically, Complainant has provided evidence that Respondent uses the <wwwmyhsabank.com> domain name to resolve to a website featuring competing hyperlinks. Under Policy ¶ 4(b)(iii) and (iv), such use may be considered 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).”). Therefore, the Panel holds that Respondent registered and used the <wwwmyhsabank.com> domain name in bad faith under both Policy ¶ 4(b)(iii) and (iv).
Further, Complainant alleges that Respondent registered the domain name with full knowledge of Complainant’s rights in the <wwwmyhsabank.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a domain name incorporating that mark is adequate evidence of bad faith under Policy ¶ 4(a)(iii). 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). The record supports Complainant’s contention that the HSA BANK mark has created significant good will and consumer recognition around the world and has been in use since 2003. On this record, the Panel concludes that Respondent had actual knowledge of Complainant’s rights when the <wwwmyhsabank.com> domain name was registered and subsequently used.
The Panel finds 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 <wwwmyhsabank.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 29, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page