Webster Financial Corporation and Webster Bank, National Association v. Tanya Moulton
Claim Number: FA2303002034214
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Tanya Moulton (“Respondent”), Mississippi, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fwebsteronline.com>, registered with Cosmotown, Inc..
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on March 2, 2023; Forum received payment on March 2, 2023.
On March 2, 2023, Cosmotown, Inc. confirmed by e-mail to Forum that the <fwebsteronline.com> domain name is registered with Cosmotown, Inc. and that Respondent is the current registrant of the name. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, 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 March 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2023 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@fwebsteronline.com. Also on March 3, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
In the instant proceedings, there are two Complainants: Webster Financial Corporation and Webster Bank, National Association. Complainants claim they have standing to file a joint Complaint since 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.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to 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 provides a variety of banking and financial services. Complainant has rights in the WEBSTER and WEBSTER-related marks through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., WEBSTER Reg. No. 3,334,639, which was registered on November 13, 2007). Respondent’s <fwebsteronline.com> domain name is confusingly similar to the WEBSTER marks as it includes the entirety of the WEBSTER and WEBSTERONLINE.COM marks and merely adds a letter and generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <fwebsteronline.com> domain name since Respondent is not licensed or authorized to use Complainant’s WEBSTER marks and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any legitimate noncommercial or fair use.
Respondent registered and uses the <fwebsteronline.com> domain name in bad faith. Respondent diverts Internet traffic for commercial gain by causing confusion as to the source or affiliation of the resolving site. Further, Respondent’s <fwebsteronline.com> domain name is an example of typosquatting. Finally, Respondent registered the disputed domain name with a privacy service and constructive and/or actual knowledge of Complainant’s rights in the WEBSTER marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <fwebsteronline.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 claims rights in the WEBSTER and derivative marks through multiple trademark registrations with the USPTO (e.g., WEBSTER INVESTMENTS Reg. No. 2,550,412, which was registered on March 19, 2002; WEBSTER Reg. No. 3,334,639, which was registered on November 13, 2007; WEBSTERONLINE.COM Reg. No. 3,409,243, which was registered on April 8, 2008). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence of registration of the WEBSTER marks with the USPTO. The Panel finds that Complainant has demonstrated rights in the WEBSTER marks per Policy ¶ 4(a)(i).
Complainant argues that the <fwebsteronline.com> domain name is confusingly similar to its WEBSTER marks since it uses the entirety of the WEBSTER and WEBSTERONLINE.COM marks, simply adding the letter “f” and “.com” gTLD. When a disputed domain name wholly incorporates another’s mark, adding a single letter is insufficient to defeat a finding of confusing similarity. See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Respondent only adds a letter and gTLD to Complainant’s WEBSTER marks. The Panel finds that <fwebsteronline.com> is confusingly similar to the WEBSTER and WEBSTERONLINE.COM marks under 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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <fwebsteronline.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the WEBSTER marks. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the 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)”); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for <fwebsteronline.com> lists the registrant as “Tanya Moulton.” Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the WEBSTER marks. The Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to make a legitimate noncommercial or fair use of the <fwebsteronline.com> domain name under Policy ¶¶ 4(c)(i) and (iii). Complainant explains and provides evidence that the disputed domain name resolves to a website titled “Fulton Webster Bank” which purports to offer banking and other financial services. Complainant argues this demonstrates that Respondent seeks to confuse Internet traffic as to the source or affiliation of the domain name, as well as the resolving site, and divert traffic for commercial gain. Respondent’s use of the domain name to mislead and divert Internet traffic away from Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Panels have also found that diverting Internet traffic to a site that mimics and passes itself off as a complainant does not satisfy Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). The Panel finds that Respondent has no rights or legitimate interest in respect of the domain name.
Complainant has proved this element.
Complainant also argues that Respondent is typosquatting, which is further evidence of bad faith. Panels have agreed, finding that typosquatting indicates registration and use in bad faith. 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 finds that Respondent is typosquatting by adding the letter “f” to the beginning of the WEBSTER mark. This is evidence that Respondent registered and uses the <fwebsteronline.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant suggests that Respondent’s registration of the <fwebsteronline.com> domain name with a privacy service shows bad faith. A respondent’s use of a privacy service in an attempt to conceal their identity may support a finding of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). This is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Complainant claims that Respondent had constructive and/or actual knowledge of Complainant’s rights in the WEBSTER marks when registering <fwebsteronline.com>. Actual knowledge is sufficient to establish a respondent’s 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.”). To support this assertion, Complainant notes that <fwebsteronline.com> includes the entirety of two WEBSTER marks. The Panel finds from the fame of the mark and the use made of the domain name that Respondent had actual knowledge of Complaint’s rights in the WEBSTER marks and that Respondent registered and uses the domain name in find bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
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 <fwebsteronline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
April 11, 2023
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