Webster Financial Corporation and Webster Bank, National Association v. 李厚昌
Claim Number: FA2001001881599
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Carlton Fields, P.A, Georgia, USA. Respondent is 李厚昌 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websteeronline.com>, registered with DNSPod, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2020; the Forum received payment on January 31, 2020.
On March 30, 2020, DNSPod, Inc. confirmed by e-mail to the Forum that the <websteeronline.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, 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 April 2, 2020, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 22, 2020 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@websteeronline.com. Also on April 2, 2020, the Chinese language 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 April 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 Matter – Language Of The Proceedings
The Panel notes Complainant’s request that English be the language of this administrative proceeding pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement for the disputed domain name. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Evidence exhibiting Respondent’s understanding of the English language should be considered and the parties must not be unduly prejudiced by the use of a language other than that appearing in the registration agreement of the disputed domain name. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) In support of its request Complainant points to the fact that the entirety of the website that resolves from the disputed domain name appears in English and that Requiring the proceedings to be conducted in Chinese would unduly burden the Complainant which is located in the U.S. and does not speak Chinese. Such burden, it is asserted, includes the cost of translating the complaint into Chinese and an unnecessary delay of the proceedings. Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to indicate the high probability that the Respondent is proficient in the English language. Further, Respondent has not filed a response or made any other submission to contest Complainant’s language request despite being notified of the Complaint in both the English and Chinese languages. After considering the circumstance of the present case, the Panel decides that these proceedings will be conducted in English.
A. Complainant
Complainant has rights in the trademarks WEBSTER and WEBSTERONLINE.COM, among others, based upon its use of these marks in commerce dating back to 1995 and their registration with the United States Patent and Trademark Office (“USPTO”) dating to 2000. Respondent’s <websteeronline.com> domain name, registered on March 27, 2019, is confusingly similar to Complainant’s marks as it incorporates WEBSTER and WEBSTERONLINE.COM (albeit with the intentional addition of an extra “e” to the word “webster”), and adds the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <websteeronline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent hosts a link that requires users to download malicious software. Respondent’s registration also represents typosquatting.
Respondent registered and uses the <websteeronline.com> domain name in bad faith. Respondent disrupts Complainant’s business by hosting a link that requires users to download malicious software, through which Respondent most likely earns a fee. Respondent’s registration also represents typosquatting. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the WEBSTER and WEBSTERONLINE.COM marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 registered the WEBSTER and WEBSTERONLINE.COM marks with the USPTO. 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) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”) As Complainant submits copies of many of its USPTO registration certificates, the Panel finds that Complainant has established rights in the WEBSTER and WEBSTERONLINE.COM marks.
Next, Complainant argues that Respondent’s <websteeronline.com> domain name is confusingly similar to Complainant’s mark as it incorporates WEBSTER and WEBSTERONLINE.COM (albeit with the intentional addition of an extra “e” to the word “webster”), and adds 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 Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’) The Panel therefore finds that the <websteeronline.com> domain name is confusingly similar to the WEBSTER and WEBSTERONLINE.COM marks under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 contends that Respondent has no rights or legitimate interests in the <websteeronline.com> domain name. In considering this issue, relevant information includes the WHOIS record and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent was not commonly known by the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS record, as revealed by the concerned registrar, identifies the registrant as “李厚昌” (“Li Hou Chang”). Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the WEBSTER or WEBSTERONLINE.COM marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA 1505001620789 (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 alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <websteeronline.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant contends that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate, noncommercial or otherwise fair use as, instead, Respondent hosts a link that invites users to unknowingly download malicious software. Use of a disputed domain name to host malicious software can represent a failure to use a domain name in connection with a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate, noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”) Complainant provides a screenshot of the website that resolves from the disputed domain name showing a link that Internet users would be faced with that invites them to download a Google Chrome extension named Secured Search. However, Complainant asserts that, in actuality, this link provides malicious software. The Respondent has not provided a response or made any other submission in this case and so Complainant’s assertion goes uncontested. Based upon a preponderance of the evidence before it, the Panel finds that Respondent has failed to use the <websteeronline.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).
Finally, Complainant argues that Respondent’s registration of the <websteeronline.com> domain name represents typosquatting, a mis-spelling of an asserted trademark. Registration of a disputed domain name that uses typosquatting may further demonstrate a respondent’s lack of rights and legitimate interests in said domain name. See Webster Financial Corporation and Webster Bank, National Association v. Pham Dinh Nhut, FA 1605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”) Complainant asserts that by adding an extra letter “e” to the word “Webster”, Respondent’s domain name is likely to be accessed by Internet users making typographical errors in attempting to reach Complainant’s own website. The Panel agrees and finds further evidence that Respondent has failed to use the disputed domain name in accordance with Policy ¶ 4(a)(ii).
Complainant claims that Respondent had actual or constructive knowledge of Complainant’s rights in the WEBSTER and WEBSTERONLINE.COM marks prior to registration of the disputed domain name. The Panel will disregard arguments of bad faith based on constructive knowledge as UDRP case precedent declines to find bad faith as a result of constructive knowledge except in very rare circumstances where the parties are resident in a jurisdiction that recognizes such legal concept (this does not appear to be the case here where Respondent is resident in China). However, actual knowledge of a complainant’s trademark is sufficient to create a foundation upon which to build a case for bad faith pursuant to 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). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). See 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 contends that Respondent must have had actual knowledge of Complainant’s rights in the WEBSTER and WEBSTERONLINE.COM marks prior to registration of the disputed domain name based upon Respondent’s incorporation of Complainant’s marks in their entirety (albeit by adding an extra “e” to the word “webster”). As Respondent has not participated in this case to contest this contention, the Panel agrees with Complainant and finds it highly likely that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant goes on to argue that Respondent registered and is using the <websteeronline.com> domain name in bad faith by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering the download of malware. Commercially benefiting via intentional confusion can evince bad faith registration and use. See BJ's Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty, D2015-1601 (WIPO Nov. 4, 2015) (bad faith registration and use found “because the disputed domain name intentionally takes advantage of consumer typing errors and redirects Internet traffic to a malware scam…”); see also witter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA 1603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”) Here, Complainant asserts that Respondent’s use of typosquatting to take advantage of the typographical errors made by Internet users otherwise seeking Complainant and lead said users to malicious software downloads represents bad faith per Policy ¶ 4(b)(iv). The Panel finds this uncontested assertion to be quite plausible and concludes that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant contends that Respondent registered and uses the disputed domain name in bad faith by engaging in typosquatting. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors, such as typosquatting, in an analysis of bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Further, a finding of typosquatting has been held to evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”) Here, Complainant notes that Respondent adds an extra “e” to the word “webster” in order to take advantage of the typographical mistakes Internet users may make in attempting to access Complainant’s own website. The Panel thus agrees and accordingly finds that this evidence of typosquatting by Respondent provides further support for a finding of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <websteeronline.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 28, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page