Webster Financial Corporation and Webster Bank, National Association v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1902001830598
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 Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wenbsteronline.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.
Hon. Karl V. Fink (Ret.) as Panelist
Complainant submitted a Complaint to the Forum electronically on February 20, 2019; the Forum received payment on February 20, 2019.
On February 20, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wenbsteronline.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 February 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2019 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@wenbsteronline.com. Also on February 21, 2019, 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.
On March 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 offers a wide range of banking and financial services, including online banking, checking account, and mortgage loan services. Complainant has rights to the WEBSTER mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,334,639 registered Nov. 13, 2007). Respondent’s domain name <wenbsteronline.com> is confusingly similar to Complainant’s mark as it incorporates a misspelled version of Complainant’s mark, along with a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <wenbsteronline.com> domain name. Respondent is not authorized to use Complainant’s WEBSTER mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the domain name <wenbsteronline.com> for a bona fide offering of goods or services. Rather, Respondent uses the disputed domain name to generate click-through revenue from third party hyperlinks.
Respondent registered and uses the <wenbsteronline.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where it generates click-through revenue from third party hyperlinks. Additionally, Respondent registered the disputed domain name with a privacy service. Respondent also engaged in typosquatting when it registered the disputed domain name. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the WEBSTER mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <wenbsteronline.com> domain name.
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.”).
Preliminary Issue: Multiple Complainants
Complainant claims to have rights in the WEBSTER mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per Policy ¶4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant provided the Panel with a copy of its USPTO registration for the WEBSTER mark (e.g. Reg. No. 3,334,639 registered Nov. 13, 2007). The Panel finds Complainant has rights in the WEBSTER mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <wenbsteronline.com> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark even though it is intentionally misspelled and adds a “.com” gTLD. Generally, adding letters to a mark to create a misspelling, and/or a gTLD to the mark is not sufficient to distinguish a disputed domain name from a complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant.); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (“Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Here, Complainant argues Respondent adds the letter “n” between the letters “e” and “b” in “Webster” to create a misspelling of the mark. The disputed domain name incorporates the term “online,” which Complainant argues is confusingly similar to its <websteronline.com> domain name. Additions of a generic/descriptive terms to a complainant’s mark may also not sufficiently mitigate any confusing similarity. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding 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 finds Respondent’s <wenbsteronline.com> domain name is confusingly similar to Complainant’s WEBSTER mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in <wenbsteronline.com> domain name because Respondent is not commonly known by the disputed domain name, nor was Respondent authorized to use Complainant’s WEBSTER mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. 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). The WHOIS information of record identifies Respondent as “Carolina Rodrigues / Fundacion Comercio Electronico,” and there is nothing in the record to suggest that Respondent is authorized to use the WEBSTER mark. The Panel finds that Respondent is not commonly known by the <wenbsteronline.com> domain name per Policy ¶ 4(c)(ii) and has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends Respondent does not use the domain name <wenbsteronline.com> for a bona fide offering of goods or services, redirecting internet users to various websites that have no affiliation to the Complainant. Generally, using a confusingly similar domain name to divert Internet users to third party websites, presumably for pecuniary gain, is not indicative of a bona fide offering of goods or services. See Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Complainant provides a screenshot of what appears to be Verizon’s website, purporting to offer Apple iPhone products. Complainant contends Respondent commercially benefits from users who are redirected to this website. The Panel finds that Respondent has not made a bona fide offering of goods or services per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant contends that Respondent’s bad faith is demonstrated by its use of the disputed domain name to commercially benefit from competing, pay-per-click hyperlinks/sponsored advertisements. Use of a disputed domain name to commercially benefit from click through links may support a finding of bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant has provided a screenshot of the disputed domain name’s resolving website in support of its contentions. The Panel finds that Respondent has registered and uses the <wenbsteronline.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends that Respondent’s registration of the <wenbsteronline.com> domain name constitutes typosquatting. Typosquatting may support a finding of bad faith under Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Respondent adds the letter “n” between the letters “e” and “b” in “Webster” to create a misspelling of the mark. The Panel finds that Respondent’s typosquatting of the WEBSTER mark constitutes bad faith per Policy ¶ 4(a)(iii).
Complainant contends that, due to the fame and use of the WEBSTER mark, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering and subsequent use of the <wenbsteronline.com> domain name. Actual knowledge can support a finding of bad faith registration and can be demonstrated by the fame and Respondent’s use of the mark. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant also argues that Respondent’s use of the disputed domain name to feature competing hyperlinks/advertisements and its intentional misspelling of the WEBSTER mark demonstrates actual knowledge. The Panel finds that Respondent registered the disputed domain name with actual knowledge, thus indicating bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <wenbsteronline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 26, 2019
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