Webster Financial Corporation and Webster Bank, National Association v. Zhichao Yang
Claim Number: FA2107001956587
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 Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <websterronline.com>, <webster0nline.com>, <mywebsteronline.com>, <comwebsteronline.com>, <websterobline.com>, <websterolnine.com>, <websteroniine.com>, <websteronlibe.com>, <websteronlinee.com>, <websteronlinne.com>, <websteronlinw.com> and <websteroonline.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2021; the Forum received payment on July 26, 2021. The Complaint was received in English.
On July 27, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <websterronline.com>, <webster0nline.com>, <mywebsteronline.com>, <comwebsteronline.com>, <websterobline.com>, <websterolnine.com>, <websteroniine.com>, <websteronlibe.com>, <websteronlinee.com>, <websteronlinne.com>, <websteronlinw.com> and <websteroonline.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 July 30, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of August 19, 2021 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@websterronline.com, postmaster@webster0nline.com, postmaster@mywebsteronline.com, postmaster@comwebsteronline.com, postmaster@websterobline.com, postmaster@websterolnine.com, postmaster@websteroniine.com, postmaster@websteronlibe.com, postmaster@websteronlinee.com, postmaster@websteronlinne.com, postmaster@websteronlinw.com, postmaster@websteroonline.com. Also on July 30, 2021, the Chinese and English 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 August 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
Complainant alleges that, because Respondent is conversant in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that since Respondent’s <websterronline.com>, <webster0nline.com>, <mywebsteronline.com>, <comwebsteronline.com>, <websterobline.com>, <websterolnine.com>, <websteroniine.com>, <websteronlibe.com>, <websteronlinee.com>, <websteronlinne.com>, <websteronlinw.com>, and <websteroonline.com> websites are in English and the privacy policies for Respondent’s websites are in English, Respondent is conversant in the English language. The Panel agrees and determines that this proceeding will be conducted in English.
A. Complainant
1. Respondent’s <websterronline.com>, <webster0nline.com>, <mywebsteronline.com>, <comwebsteronline.com>, <websterobline.com>, <websterolnine.com>, <websteroniine.com>, <websteronlibe.com>, <websteronlinee.com>, <websteronlinne.com>, <websteronlinw.com>, and <websteroonline.com> domain names (the “disputed domain names”) are confusingly similar to Complainant’s WEBSTERONLINE.COM mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and uses the disputed domain names in bad faith.
B. Respondent did not file a Response.
Complainant is an American commercial bank. Complainant holds a registration for the WEBSTERONLINE.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,409,243, registered Apr. 8, 2008).
Respondent registered the disputed domain names on June 17, 2021, and uses them for pay-per-click links to competing banking services.
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”).
The Panel finds that Complainant has rights in the WEBSTERONLINE.COM mark through its registration with the USPTO. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Respondent’s disputed domain names all incorporate Complainant’s mark with intentional misspellings and the addition of “com” or “.com.” Such changes do not distinguish a disputed domain name from the mark it incorporates. See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732459 (Forum June 30, 2017) (“Further, the addition of “com” is particularly unhelpful in creating a distinction between a domain name and a mark.”); see also Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s WEBSTERONLINE.COM mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use the WEBSTERONLINE.COM mark. The WHOIS information identifies “Zhichao Yang” as the registrant of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the domain names, and thus has no rights under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also 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).
Complainant also argues that Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent’s websites are parked pages with links related to banking to Complainant’s competitors. Using a confusingly similar domain name to divert Internet users to a complainant’s competitors via hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Meyerson v. Speedy Web, FA 960409 (Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a 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 pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots showing that Respondent’s disputed domain names bring users to banking hyperlinks, diverting users to Complainant’s competitors. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent intentionally diverts users for its own commercial gain. Creating a likelihood of confusion by using a complainant’s mark in a domain name to display links to third-party competitors on the resolving website constitutes bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See 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).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Thus, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complaint contends that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the WEBSTERONLINE.COM mark because Respondent incorporates the mark in its entirety in the disputed domain names, with intentional misspellings of the words “Webster” and “online.” The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the WEBSTERONLINE.COM mark when it registered the disputed domain names, in bad faith under Policy ¶ 4(a)(iii). 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”).
The Panel finds that Complainant has satisfied 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 <websterronline.com>, <webster0nline.com>, <mywebsteronline.com>, <comwebsteronline.com>, <websterobline.com>, <websterolnine.com>, <websteroniine.com>, <websteronlibe.com>, <websteronlinee.com>, <websteronlinne.com>, <websteronlinw.com> and <websteroonline.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 25, 2021
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