Webster Financial Corporation v. JH Kang
Claim Number: FA1909001860484
Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is JH Kang (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwhsabank.co>, 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.
James Bridgeman SC as Panelist.
On September 4, 2019 Complainant submitted a Complaint to the Forum electronically; the Forum received payment on September 4, 2019.
On September 4, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wwwhsabank.co> 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 September 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@wwwhsabank.co. Also on September 5, 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 September 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims rights in the trademarks and service marks HSA BANK and HSA BANK OWN YOUR HEALTH and relies on its rights in the trademark registrations details of which are set out below and at common law. Complainant submits that since at least as early as December 10, 2003, Complainant, through its licensee, Webster Bank, National Association, and its predecessor entity, State Bank of Howards Grove, has exclusively, continuously and on a widespread basis used and promoted the HSA BANK mark in commerce.
Complainant asserts that HSA Bank is one of the largest administrators of health savings accounts in the United States with, as of January 29, 2010, over 265,000 active accounts, over $730 million in HSA funds in custody, and over $75 million in brokerage investments. Complainant provides the HSA BANK services in all fifty states, the District of Columbia, Puerto Rico, Guam, and the U.S. Virgin Islands.
Complainant claims a reputation and goodwill in the HSA BANK mark and asserts that it regularly advertises its HSA BANK services via the Internet, educational seminars, sponsorships and print advertisements in its nationwide advertising across the United States.
In January 2009 alone, Complainant’s website at <www.hsabank.com> received 23,724,560 hits, 2,945,306 web page views, and 1,482,785 visitor sessions.
Complainant submits that the disputed domain name <wwwhsabank.co> is confusingly similar to Complainant’s service mark because it incorporates the HSA BANK mark in its entirety and only “www” is added to the domain. See Choice Hotels International, Inc. v. Michele Dinoia a/k/a SZK.com, FA0406000282792, p. 5 (Forum Jul. 28, 2004) (“Generally, the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the [UDRP] Policy.”).
The fact that there is no space between the “hsa” and “bank” elementsin the second level of this domain name does not alter this conclusion, as spaces are not permitted in domain names. See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA0112000102724, p. 3 (Forum Jan. 7, 2001) (<hannoverre.com> found to be identical to HANNOVER RE “as spaces are impermissible in domain names . . . .”). Furthermore, the addition of the “.co” suffix does not overcome the confusing similarity of this domain name with Complainant’s HSA BANK mark. See Wal-Mart Stores, Inc. v. Michael Folan, FA0709001076262, p. 3 (Forum Oct. 26, 2007) (“the addition of . . . a top-level domain is required for all domain names.”).
Furthermore Complainant submits that moreover, the <wwwhsabank.co> domain name is identical to the second level domain of the Internet address for Complainant’s website.
Complainant submits that based on the above, Respondent’s registration of the <wwwhsabank.co> domain name serves only to cause confusion, mistake, or deception among consumers attempting to locate Complainant’s website.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <wwwhsabank.co>. Complainant asserts that it never authorized Respondent to register or use the HSA BANK mark in any manner.
Complainant is unaware of any evidence that Respondent has ever commonly been known by the name “HSA Bank” (or variations thereof) prior to Respondent’s registration of the disputed domain name <wwwhsabank.co>. See UDRP Policy ¶ 4(c)(ii); Yoga Works, Inc. v. Jenna Arpita d/b/a Shanti Yoga Works, FA0304000155461, p. 4 (Forum June 17, 2003) (finding that UDRP Policy ¶ 4(c)(ii) was not satisfied where there was no evidence that respondent was commonly known by the <shantiyogaworks.com> domain name prior to its registration of the disputed domain name).
Respondent is not making a legitimate non-commercial or fair use of the domain name <wwwhsabank.co> as it is using the disputed domain name in bad faith as argued below, therefore, UDRP Policy ¶ 4(c)(iii) does not apply. See CanadaDrugs.com Partnership v. MyCanadaDrugs LLC, FA0502000429088, p. 4 (Forum Apr. 7, 2005) (“. . . [UDRP] Policy ¶ 4(c)(iii) does not apply since Respondent is not making non-commercial or fair use of the domain name.”).
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith.
Complainant argues that Respondent’s use of the <wwwhsabank.co> domain name is “evidence of bad faith pursuant to [UDRP] Policy ¶ 4(b)(iv) because the domain name provides links to Complainant’s competitors and Respondent presumably commercially benefits from the misleading domain name by receiving ‘click-through-fees.’” Associated Newspapers Limited v. Domain Manager, FA0310000201976, p. 4 (Forum Nov. 19, 2003).
Furthermore, Respondent’s registration of the disputed domain name in spite of actual or constructive knowledge of Complainant’s rights in the HSA BANK mark, amounts to bad faith registration and use.
Complainant alleges that Respondent’s use of privacy services is additional evidence of bad faith under the Policy, citing Burt’s Bees, Inc. v. Private Registration, D2011-1808, p. 3 (WIPO Dec. 18, 2011) (“the use of a privacy or identity shield in this case further supports a finding that the Respondent has acted in bad faith. Although privacy shields may be legitimate in some cases, where, as in this case the Disputed Domain Name at issue fully encompasses the Complainant’s reputed mark and has obviously been used to divert Internet users in terms of paragraph 4(b)(iv) of the Policy, then it seems more likely than not that the Respondent is using a privacy shield to mask its true identity in an attempt to facilitate cybersquatting . . . .”). Furthermore, Complainant alleges that concealment of Respondent’s true identity through the use of a privacy service is indicative of bad faith registration and use of the <wwwhsabank.co> domain name. See Spin Master Ltd. v. DCSTEAM INC., FA0806001210515, p. 6 (Forum Aug. 5, 2008) (“The Panel therefore finds that this concealment of the Respondent’s true identity was indicative of bad faith registration and use of the disputed domain name pursuant to [UDRP] Policy ¶ 4(a)(ii).”).
Complainant also argues that the website to which the disputed domain name resolves contains links to other sites requiring users to download software that is arguably malware or direct users to links for services in direct competition with those offered by Complainant. Complainant submits that Respondent’s use of a confusingly similar domain name to divert Internet users to a website containing such links or malware is not a bona fide offering of goods or services, but instead, demonstrates that Respondent registered and is using the <wwwhsabank.co> domain name in bad faith, for the purpose of intentionally attempting to divert, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s HSA BANK mark as to the source, sponsorship, affiliation, and endorsement of the services offered through links on Respondent’s respective websites.
On April 6, 2019, Respondent registered the domain name <wwwhsabank.co>. The DomainTools WHOIS record as of September 3, 2019, for <wwwhsabank.co> as registered to Respondent which is a provider of private registration services.
On April 16, 2019, Complainant, sent cease and desist correspondence to Respondent regarding the <wwwhsabank.co> registration, among other things demanding that Respondent immediately cease from violating Complainant’s trademark rights. As of the date of the filing of the Complaint, Respondent has not responded to the correspondence.
As of September 3, 2019, the disputed domain name <wwwhsabank.co> resolved to a website on which was posted a listing of links which brings the Internet user to websites containing links to Complainant’s competitors which offer services in direct competition with those offered by Complainant.
Complainant submits that Respondent’s use of the disputed domain name <wwwhsabank.co> thus creates a likelihood of confusion among users by creating the perception and impression that Complainant owns, sponsors, or endorses these websites. Based on the above, Respondent’s domain name registration serves only to cause confusion, mistake or deception among consumers, especially those consumers who are seeking to locate Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a Delaware corporation. 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 is the owner of the following United States registered service marks:
HSA BANK, registration numbers 3,161,483, registered on October 24, 2006 for services in international class 36;
HSA BANK registration number 3,274,343, registered on August 7, 2007 for services in international class 36;
HSA BANK, registration number 5,145,798 registered on February 21, 2017 for services in international class 36;
HAS BANK OWN YOUR HEALTH registration number 4,899,221, registered on February 9, 2016 for services in international class 36;
HSA BANK OWN YOUR HEALTH registration number 4,905,859 registered on February 23 2016 for services in international class 42;
HSA BANK OWN YOUR HEALTH registration number 4,923,629 registered on March 22, 2016 for goods in international class 9;
HSA BANK OWN YOUR HEALTH registration number 4,934,240 registered on April 5, 2016 for services in international class 42;
HSA BANK OWN YOUR HEALTH registration number 5,051,037, registered on September 27, 2016 for goods in international class 9;
HSA BANK OWN YOUR HEALTH registration number 5,051,038, registered on September 27, 2016 for services in international class 36.
The disputed domain name was registered on April, 6, 2019 using a privacy service and resolves to a website which Complainant submits has links to competitors of Complainant and may contain malware.
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 established to the satisfaction of this Panel that it has rights in the HSA BANK trademark and service mark through its ownership of the above-listed USA trademark registrations and at common law through its use of the mark in commerce by its subsidiary corporation which has used and promoted the mark in advertising across the USA and its Internet website at www.hsabank.com.
Having compared both, this Panel finds that the disputed domain name is confusingly similar to Complainant’s HSA BANK mark. The disputed domain name consists of the letters “www”, Complainant’s trademark HSA BANK and the ccTLD extension <.co>. Complainant’s trademark is the distinctive and dominant element of the disputed domain name, the letters “www” would merely indicate a website to Internet users and the ccTLD extension can be ignored for the purpose of determining whether the similarity is confusing.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Complainant’s HSA BANK trademark is the only distinctive element of the disputed domain name; Complainant has not given any right or license to Respondent to use the trademark in a domain name or otherwise; there is no evidence that Respondent is commonly known by the disputed domain name; and Respondent’s website is providing links to competitors of Complainant which is a commercial use which cannot be a bona fide use in the circumstances.
It is well established under the Policy that when a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name the balance of production shifts to the respondent to prove such rights or interests.
Respondent has not filed any Response and therefore has not discharged the burden of production.
This Panel finds therefore that Respondent has no rights or legitimate interests in the disputed domain name and that Complainant is therefore entitled to succeed in the second element of the test in Policy ¶ 4(a)(ii).
On the evidence adduced, Complainant has acquired a substantial reputation and goodwill in the HSA BANK trademark and service mark. Given that Complainant’s mark is the unusual combination of the words “HSA” and “BANK” and that Complainant’s mark is the only distinctive element of the disputed domain name, and the similarity of the disputed domain name and the address of Complainant’s official website at <www.hsabank.com>, it is improbable that the registrant of the disputed domain name was unaware of Complainant, its business and mark, when the disputed domain name was registered. This is confirmed by the fact that Respondent is using the disputed domain name to resolve to a website purporting to offer banking services.
Complainant has alleged that Respondent has posted links to its competitors’ services and downloads that may contain malware. Complainant has not provided evidence of these assertions.
However, it is clear from the printout of the homepage of the website to which the disputed domain name resolves which has been adduced in evidence as an annex to the Complaint, that Respondent is purporting to offer banking services on its website. The page contains three statements viz. “ Best Health Savings Account for Investors”, “Health Savings Account Banks no Fees” and “Has Investment Account”. This Panel finds therefore that on the balance of probabilities the disputed domain name was registered and is being used in bad faith as an intentional attempt to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on your web site or location.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwhsabank.co> domain name be TRANSFERRED from Respondent to Complainant.
_____________________
James Bridgeman SC
Panelist
Dated: October 1, 2019
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