Webster Financial Corporation v. Rune Straus
Claim Number: FA2305002046207
Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Rune Straus (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <habank.com>, registered with NameCheap, Inc.
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.
Francine Tan as Panelist.
Complainant submitted a Complaint to Forum electronically on May 26, 2023; Forum received payment on May 26, 2023.
On May 26, 2023, a deficiency notice was issued by Forum regarding Complainant’s failure to properly identify Respondent and its contact information. An amended Complaint was submitted to Forum on the same day.
On May 26, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <habank.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 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@habank.com. Also on May 30, 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.
A timely Response was received and determined to be complete on June 19, 2023.
On June 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Francine Tan as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of 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.
A. Complainant
Complainant, headquartered in Waterbury, Connecticut, holds approximately $22 billion in assets and provides business and consumer banking, mortgage, investment, trust, insurance and other financial services. Webster Bank, National Association, is a wholly-owned subsidiary of Complainant. HSA Bank is a division of Webster Bank, National Association.
Complainant has rights in the HSA BANK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Its registrations include Registration Nos. 3,161,483 (registered October 24, 2006), 3,274,343 (registered August 7, 2007), and 5,145,798 (registered February 21, 2017). It also has other registrations for HSA-formative marks with the USPTO.
Complainant has since at least as early as December 10, 2003, through its licensee Webster Bank, National Association, exclusively, continuously and on a widespread basis used and promoted the HSA BANK mark in commerce. Complainant provides the HSA BANK services in all 50 States, the District of Columbia, Puerto Rico, Guam, and the U.S. Virgin Islands. It is one of the largest administrators of health savings accounts in the U.S.
Complainant has numerous domain names including several which incorporate the HSA BANK mark. Complainant regularly advertises its HSA BANK services via the Internet and print advertisements. From February 2023 to April 2023, the www.hsabank.com website received 4.6 million web page visits.
The disputed domain name <habank.com> was registered on October 9, 2005. As of May 26, 2023, Respondent’s website brings Internet users to a website containing links to Complainant’s competitors which offer services in direct competition with those offered by Complainant.
The disputed domain name is confusingly similar to Complainant’s registered HSA BANK mark as it incorporates Complainant’s mark in its entirety with an intentional omission of the letter “s”.
Respondent has no rights or legitimate interests in, and registered and uses in the disputed domain name in bad faith. Complainant has not authorized Respondent to use its HSA BANK trade mark. Respondent is not commonly known by the name “habank.com”. Respondent’s website brings Internet users to a website containing links to Complainant’s competitors which offer services in direct competition with those offered by Complainant. Respondent engages in typosquatting. Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name. Respondent’s use of a privacy service is also additional evidence of bad faith. Respondent should have been aware of Complainant’s trade marks in view of Complainant’s reputation.
B. Respondent
The disputed domain name is neither identical nor similar to the Complainant’s HSA BANK trade mark and would hardly cause any confusion among internet users. “Bank” is a generic term and “HA” and “HSA” are different.
Respondent has legitimate rights and interests in the disputed domain name. Complainant has never used HABANK as a trade mark. Respondent acquired the disputed domain name 18 years ago. If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith. Respondent registered and used the disputed domain name in good faith. Respondent uses the disputed domain name to generate advertisement links for all banks, and not just HSA banks. Respondent has been living in China and had no knowledge of Complainant’s business. There are many reasons for using a privacy service when registering a domain name and doing so does not necessarily indicate bad faith. Acquiring domain names to trade them for profit or to exploit them for pay-per-click revenue is not, in itself, objectionable in the absence of any targeting of Complainant. Respondent has legitimate interest in the disputed domain name and the use is in good faith because of its inherent value and not because of Complainant or its trade mark.
(a) The disputed domain name is confusingly similar to the trade mark HSA BANK in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and is being used in bad faith.
Preliminary Issue: Supplementary Filings
On June 26, 2023, an unsolicited supplemental filing was made to Forum by Complainant. Respondent also made a supplemental filing on the same date.
In the exercise of the Panel’s discretion under Paragraph 10 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Panel declines to consider the supplemental filings in the absence of any explanation or clear showing of its relevance to the case and why the parties were unable to provide the information contained therein in the (Amended) Complaint and Response, respectively (e.g. owing to some “exceptional” circumstance). (See section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Substantive Issues
The Rules ¶15(a) 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."
The Policy ¶4(a) 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.
Complainant has established it has common law as well as registered trademark rights in HSA BANK. The disputed domain name incorporates Complainant’s mark in its entirety but with the letter “s” missing. The omission of the letter “s” in the disputed domain name is insufficient in differentiating it from Complainant’s mark (See Morgan Stanley v. Domain Admin/ Whois Privacy Corp., FA 1783121 (Forum June 1, 2018).
It is well-established that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. For the purposes of paragraph 4(a) of the Policy, the “test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name” (see WIPO Overview 3.0, sections 1.7 and 1.9). The Panel finds “habank” to be confusing similar to “hsabank”.
The generic Top-Level Domain “.com” is a technical requirement in domain names and to be disregarded for the purposes of assessing the identity or confusing similarity under ¶4(a) of the Policy.
Policy ¶ 4(a)(i) has therefore been established.
Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in relation to the disputed domain name (see WIPO Overview 3.0, section 2.1; Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011); Neal & Massey Holdings Limited v. Gregory Ricks FA 1549327 (Forum Apr. 12, 2014).
The Panel finds that a prima facie case has been established that Respondent lacks rights or legitimate interests in the disputed domain name.
The Policy ¶ 4(c) sets out examples of how a respondent may demonstrate its rights to and legitimate interests in a domain name. In this regard, Respondent has not shown use of or demonstrable preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Neither has he produced evidence that he/his business has been commonly known by the domain name or “habank”.
As to whether Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, the Panel is of the view that he is not. Respondent is using the disputed domain name to host a parked page comprising pay-per-click (“PPC”) links to Complainant’s competitors. As stated in section 2.9 of the WIPO Overview 3.0, “panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. In this case, the PPC links are related to Complainant’s trade mark, albeit there is an omission of the letter “s”, and generate search results with competing goods/services to those offered by Complainant. In the Panel’s view, such use does not confer rights or legitimate interests to Respondent.
Policy ¶ 4(a)(ii) has therefore been established.
Complainant must show that Respondent registered and is using the disputed domain name in bad faith (Policy ¶ 4(a)(iii)).
Having
considered all the circumstances of this case, the Panel concludes that the
disputed domain name was registered and has been used in bad faith. The
specific combination of the disputed domain name which contains the term “bank”
(which corresponds to Complainant’s business) and which features letters which
are confusingly similar to the letters “HSA” in Complainant’s trade mark, are
strongly indicative of bad faith. (See section 3.2.1 of the WIPO Overview 3
which identifies additional bad faith consideration factors such as “a domain
name incorporating the complainant’s mark plus an additional term such as a
descriptive … term … that corresponds to the complainant’s area of activity” …
“a clear absence of rights or legitimate interests” or “other indicia generally
suggesting that the respondent had somehow targeted the complainant”). Complainant
had common law rights in the HSA BANK trade mark since December 10, 2003, which
is a date which precedes Respondent’s registration of the disputed domain name.
The Panel also notes that the evidence in the case file shows that the disputed
domain name was being offered for sale.
The fact that the disputed domain name resolves to a webpage that contains links to Complainant’s competitors shows, in the Panel’s view, that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the site, and to trade off the reputation of Complainant’s trade mark, in this case through typosquatting (Policy ¶ 4(b)(iv); see Google Inc. v. James Lucas/ FireStudio/ Jameschee/ FIRESTUDIO/ SEONG YONG, FA 1502001605757 (Forum Apr. 7, 2015); LifeLock, Inc. v. Adam Viener/ ThunkTunk LLC, FA 1409001579875 (Forum Oct. 28, 2014). The offering of links to competitor websites is a disruption to the business of Complainant’s business and evidence of bad faith registration and use (see Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum Jul. 14, 2008).
While it may be unclear why the disputed domain name was initially registered, and even if Respondent were a domainer (which has not been established by Respondent), the Panel considers these points irrelevant where the domain name is subsequently used to attract Internet users by creating a likelihood of confusion with Complainant’s mark, and bad faith can be inferred. (See WIPO Overview 3.0, Section 3.2.1.).
The Panel is of the view that Respondent’s use of a privacy service is non-conclusive of bad faith under the Policy.
Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <habank.com> domain name be TRANSFERRED from Respondent to Complainant.
Francine Tan, Panelist
Dated: July 9, 2023
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