Webster Financial Corporation and Webster Bank, National Association v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1905001842744
Complainants are 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 <ewebsteronline.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 May 13, 2019; the Forum received payment on May 13, 2019.
On May 13, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ewebsteronline.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@ewebsteronline.com. Also on May 14, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two Complainants in this matter: Webster Financial Corporation and Webster Bank, National Association. Complainant Webster Financial Corporation is a Delaware corporation headquartered in Waterbury, Connecticut while Complainant Webster Bank, National Association is a federal-chartered national bank and a wholly-owned subsidiary of Complainant Webster Financial Corporation
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119, (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
The Panel accepts that the uncontested allegations in the Complaint establish a sufficient nexus or link between the Complainants and will treat them as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “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 in its WEBSTER mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,334,639, registered Nov. 13, 2007). Respondent’s <ewebsteronline.com> domain name is confusingly similar to Complainant’s mark, as Respondent merely adds the letter “e,” the descriptive term “online,” and the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <ewebsteronline.com> domain name as the Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use as the disputed domain name resolves to webpage displaying links to third-party websites.
Respondent’s <ewebsteronline.com> domain name was registered and used in bad faith. Respondent uses the confusingly similar domain name to attract Internet users for commercial gain by displaying links to Complainant’s competitors, also disrupting Complainant’s business. Respondent is typosquatting and is attempting to cause user confusion as to source, sponsorship, affiliation or endorsement of Complainant, or alternatively to exploit possible mistyping by Internet users when trying to reach Complainant’s Internet web page. Furthermore, Respondent had actual or constructive knowledge of Complainant’s mark.
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 <ewebsteronline.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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in its WEBSTER mark through registration with the USPTO (e.g. Reg. No. 3,334,639, registered Nov. 13, 2007). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that the Complainant has rights in its WEBSTER mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ewebsteronline.com> domain name is identical or confusingly similar to Complainant’s WEBSTER mark as it merely adds the letter “e,” the descriptive term “online,” and the “.com” gTLD. Adding a letter “e” is insufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Khodor Dimassi, FA 1672287 (Forum June 6, 2016) (finding that the added letter ‘e’ in <emorganstanleybank.com> insufficient to distinguish the domain name from complainant’s MORGAN STANLEY mark). Additionally, adding the word “online” and a gTLD is not sufficient in distinguishing a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Broadcom Corp. v. Domain Depot, FA 96854 (Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). The Panel finds that Respondent’s <ewebsteronline.com> domain name is identical or 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 has established a prima facie case.
Complainant alleges that Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by Complainant to use Complainant’s mark. Relevant information, such as WHOIS information, can be used as evidence to show respondent is or is not commonly known by the disputed domain name, under Policy ¶ 4(a)(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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, the WHOIS information for the <ewebsteronline.com> domain name lists the registrant as “Carolina Rodrigues/Fundacion Comercio Electronico,” and there is no evidence in the record to suggest Respondent was authorized to use the mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has no rights or legitimate interests in the <ewebsteronline.com> domain name as Respondent’s use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to display links to third-party websites that both compete with Complainant and are unrelated to Complainant. Using a disputed domain name to display hyperlinks that either compete with or are unrelated to complainant’s business is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant provides screenshots of the resolving webpage of the <ewebsteronline.com> domain name, showing a site that offers links to goods such as “Dental Plans” and “Best Mortgage Rates.” The Panel finds that Respondent’s use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the <ewebsteronline.com> domain name.
Complainant has proved this element.
Complainant argues that Respondent’s <ewebsteronline.com> domain name was registered and is being used in bad faith, as Respondent is using the disputed domain name to confuse internet users for commercial gain. The use of a disputed domain name to offer hyperlinks that are both competing and unrelated to the complainant’s business can be evidence of bad faith under Policy ¶ 4(b)(iii) and/or (iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Complainant provided a screenshot of the resolving webpage of the <ewebsteronline.com> domain name which displays hyperlinks for which Respondent presumably receives click through fees and some of which directly reference Complainant’s mark or are competitive with Complainant. The Panel finds that Respondent’s <ewebsteronline.com> domain name was registered and used in bad faith as Respondent used the disputed domain name to attract internet users for commercial gain under Policy ¶ 4(b)(iii) and/or (iv).
Complainant argues that Respondent’s <ewebsteronline.com> domain name was registered and is being used in bad faith, as Respondent is typosquatting. Deliberate misspelling of complainant’s mark to take advantage of common spelling errors made by internet users can be evidence of bad faith under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Here, Complainant points to the misspelling of “webster” by adding the letter “e” and the similarities between the disputed domain name and Complainants domain name, <websteronline.com>. The Panel finds that Respondent is typosquatting and Respondent’s <ewebsteronline.com> domain name was registered and is being used in bad faith under 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 <ewebsteronline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 8, 2019
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