Webster Financial Corporation and Webster Bank, National Association v. Lee Black
Claim Number: FA2002001882999
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Lee Black (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webdteronline.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 February 12, 2020; the Forum received payment on February 12, 2020.
On Feb 13, 2020, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <webdteronline.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@webdteronline.com. Also on February 13, 2020, 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 March 6, 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.
A. Complainant
Complainant, Webster Financial, is a federally chartered national bank. Complainant has rights in the trademarks WEBSTER, WEBSTERONLINE.COM, and the word “Webster” combined with various generic terms based upon its use of some of these marks in commerce since 1995 and its registration of these marks with the United States Patent and Trademark Office (“USPTO”) dating back to 2000. Respondent’s <webdteronline.com> domain name, registered on May 13, 2019, is confusingly similar to Complainant’s WEBSTERONLINE.COM mark, as the disputed domain name incorporates Complainant’s WEBSTER and WEBSTERONLNE.COM marks in their entirety, only substituting the letter “d” for “s” in the word “webster.”
Respondent has no rights or legitimate interests in the <webdteronline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the WEBSTERONLINE.COM mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name directs users to a website that encourages them to download malware.
Respondent registered and is using the <webdteronline.com> domain name in bad faith because Respondent encourages users to download malware. Further, Respondent engages in typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the WEBSTERONLINE.COM mark.
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”).
Preliminary Matter – Multiple Complainants
In the instant proceedings, there are two named Complainants. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two named Complainants in this matter are Webster Financial Corporation and Webster Bank, National Association. Complainant claims that Webster Bank, National Association is a wholly-owned subsidiary of 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.
See also Montres Breguet SA, Tissot SA, Blancpain SA v. Fancy Bandwith, Fancy Bandwith Inc., D2016-1198 (WIPO August 19, 2016) (acknowledging that “the Swatch Group AG is the parent company of the Complainants Montres Breguet SA, Tissot SA, and Blancpain SA.” * * * “The Panel is of the view that the Complainants have a specific common grievance against the Respondent. In addition the Respondent has engaged in a common action that has affected the Complainants’ individual rights in a similar fashion”).
In the present case, the Complaint has submitted an affidavit of its Senior Vice President, Director of Brand Management which states that “Webster Financial Corporation is the holding company for Webster Bank…” Respondent has provided no response or other submission in this case and so it has not contested the relationship of the two named Complainants. Under the circumstances this Panel holds that the there is a link between the two named Complainants and that they have a specific common grievance against the Respondent who has engaged in a common action that has affected the Complainants’ in a similar fashion.
For the sake of simplicity, Webster Financial Corporation and Webster Bank, National Association will hereafter be referred to in this decision as “Complainant”.
Preliminary Matter – Language of Proceedings
Complainant claims rights in the WEBSTER, WEBSTERONLINE.COM, and other related marks based upon registration of these marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the WEBSTERONLINE.COM mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <webdteronline.com> domain name is confusingly similar to Complainant’s marks because the disputed domain name incorporates such marks in their entirety, substituting only the letter “d” for “s” in the word “webster.” Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”) In this case, the Panel determines that the <webdteronline.com> domain name is confusingly similar to Complainant’s marks per 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 argues that Respondent has no rights or legitimate interests in the <webdteronline.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the WEBSTERONLINE.COM mark in any way. In considering this issue WHOIS information can support a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the disputed domain name as “Lee Black” and no information in the record indicates that Respondent is known otherwise or was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds that Respondent has not been commonly known by the <webdteronline.com> domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <webdteronline.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a website which is being used to encourage users to download malware. Use of a domain name to link to direct users to download malware is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”) Complainant contends that the <webdteronline.com> domain name resolves to a website with a link prompting users to download malware. In support, it submits a screenshot of this website that contains a notice stating “Before you continue to webdteronline.com” followed by further text stating “By clicking the button below you’ll go through a standard security check, after which you will be redirected Chrome store and will be given the option to install Secured Search extension. This extension will offer you a safer web search experience by changing your default search provider.” A “continue” button is located below this message. While this notice does not, itself, conclusively evidence the use of malware, and there is no third-party evaluation submitted regarding the malware status of the <webdteronline.com> website, the notice at the site appears rather suspicious such that Complainant has made a prima facie showing concerning its claim of malware. As Respondent has not rebutted this showing, the Panel determines that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent had actual or constructive knowledge of its WEBSTER and WEBSTERONLINE.COM marks and that it is inconceivable that Respondent could have registered the <webdteronline.com> domain name without knowledge of Complainant's rights in such marks. The Panel finds that any arguments of bad faith based on constructive notice are not applicable, however, because UDRP case precedent most often declines to find bad faith as a result of constructive knowledge – especially where, as here, there is no evidence that the Respondent is subject to the laws of a jurisdiction that adopts such principle. See UBS AG v. Randy Allotey, FA1810001812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") However, actual knowledge of a complainant’s mark has been found to support a claim of bad faith. 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.”) The Panel agrees with Complainant that Respondent most likely had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain name and finds that actual knowledge is an adequate foundation upon which to build a case of bad faith under Policy ¶ 4(a)(iii).
Complainant also contends that Respondent’s bad faith is indicated by its use of the <webdteronline.com> domain name to prompt users to download malware. Use of a domain name to prompt users to download malware can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). Complainant provides a screenshot showing that the <webdteronline.com> domain name resolves to a webpage displaying a message inviting users to click a link which, Complainant contends, will download malware when clicked. Respondent has not participated in this case or provided any explanation for its use of the disputed domain name. Based upon the available evidence, the Panel finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Next, Complainant asserts that Respondent engages in typosquatting. Typosquatting can also be evidence of bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”) The Panel notes that the disputed domain name incorporates Complainant’s mark in its entirety, substituting only the letter “d” for “s” in the word “webster.” This provides further evidence to support the conclusion that Respondent has registered and used the disputed domain name in bad faith per 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 <webdteronline.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 9, 2020
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