Webster Financial Corporation and Webster Bank, National Association v. Drake Lesna
Claim Number: FA1809001809377
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Drake Lesna (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websterbank-online.com>, registered with NameCheap, Inc.
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 September 27, 2018; the Forum received payment on September 27, 2018.
On September 27, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <websterbank-online.com> 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 September 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@websterbank-online.com. Also on September 28, 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 October 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.
There are two Complainants in this matter: Webster Financial Corporation and Webster Bank, National Association. Complainant Webster Bank, National Association is a federally-chartered national bank and a wholly-owned subsidiary of Complainant Webster Financial Corporation. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006). The Panel holds there is adequate information in the record to show that there is a sufficient nexus or link between the Complainants, such that they may be treated as one entity in this proceeding and collectively referred to as “Complainant.”
A. Complainant
1. Complainant offers a wide range of banking and financial services, including online banking, checking account, and mortgage loan services using the WEBSTER BANK mark. Complainant has rights in the WEBSTER BANK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,012,979, registered Nov. 8, 2005). Respondent’s <websterbank-online.com>[i] domain name is confusingly similar to Complainant’s mark as it simply adds the term “online” and the “.com” generic top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <websterbank-online.com> domain name. Respondent is not commonly known by the domain name; nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the WEBSTER BANK mark.
3. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the resolving website located is a virtually identical replica of Complainant’s website and was created to steal Complainant’s customers’ highly confidential personal banking information.
4. Respondent registered and uses the <websterbank-online.com> domain name in bad faith. Respondent attempts to cause confusion, mistake or deception among consumers in order to steal their personal financial information.
5. Further, Respondent is presumed to have knowledge of Complainant’s registered mark and reputation because Respondent’s domain name incorporates Complainant’s mark in its entirety.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WEBSTER BANK mark. Respondent’s domain name is confusingly similar to Complainant’s WEBSTER BANK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <websterbank-online.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 the WEBSTER BANK mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,012,979, registered Nov. 8, 2005). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Accordingly, Complainant has established rights in the WEBSTER BANK mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <websterbank-online.com> domain name is identical or confusingly similar to Complainant’s mark as it simply adds the term “online” and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that the <websterbank-online.com> domain name is confusingly similar to the WEBSTER BANK mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <websterbank-online.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 contends that Respondent has no rights or legitimate interests in the <websterbank-online.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Drake Lesna” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the WEBSTER BANK mark. In the absence of a response, uncontradicted assertions may be relied upon by a panel to find that a complainant has established that a respondent lacks rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant further alleges, without contradiction, that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <websterbank-online.com> domain name under Policy ¶ 4(c)(ii).
Complainant has proven that the resolving website from the <websterbank-online.com> domain name is a virtually identical replica of Complainant’s website and was created to steal Complainant’s customers’ highly confidential personal banking information. Passing off in furtherance of a phishing scheme shows a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant provides screenshots of its own website and Respondent’s, which shows that Respondent appears to use a similar color scheme and Complainant’s mark and design while purporting to offer financial services. Accordingly, the Panel holds that Respondent fails to use the <websterbank-online.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <websterbank-online.com> domain name in bad faith as Respondent attempts to cause confusion, mistake or deception among consumers in order to steal their personal financial information. The Panel agrees. Passing off to further a phishing scheme shows bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Therefore the Panel holds that Respondent registered and uses the <websterbank-online.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the WEBSTER BANK mark at the time of registering the <websterbank-online.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name shows 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 Panel agrees that Respondent undoubtedly had actual knowledge of Complainant’s registered mark and reputation because Respondent’s domain name incorporates Complainant’s mark in its entirety. Thus, Respondent has shown bad faith under Policy ¶ 4(a)(iii).
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 <websterbank-online.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 30, 2018
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