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Generic Top Level Domain Name (gTLD) Decisions |
Webster Financial Corporation and Webster
Bank v. Henry Chan
Claim
Number: FA0403000244125
Complainant is Webster Financial Corporation and Webster
Bank (“Complainant”) represented by Diane
Duhaime, of Jorden Burt, LLP, 175 Powder Forest
Drive, Suite 201, Simsbury, CT 06089-9658.
Respondent is Henry Chan (“Respondent”)
P.O. Box SS-6348/A124, Nassau, Bahamas.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <websterbankonline.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 8, 2004; the Forum
received a hard copy of the
Complaint on March 9, 2004.
On
March 9, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain name <websterbankonline.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com,
Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com registration
agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
March 11, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
March 31, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via
e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts,
and to postmaster@websterbankonline.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 12, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus
R. Atkinson, Jr., 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."
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 makes the following assertions:
1. Respondent’s <websterbankonline.com>
domain name is confusingly similar to Complainant’s <WEBSTER BANK> mark.
2. Respondent does not have any rights or
legitimate interests in the <websterbankonline.com> domain name.
3. Respondent registered and used the <websterbankonline.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Webster Bank, is a federally chartered savings bank and wholly-owned subsidiary
of Webster Financial Corporation (collectively,
“Complainant.”). Complainant
and Webster Financial Corporation offer a wide range of banking and financial
services under the mark
WEBSTER BANK and other marks incorporating the term
WEBSTER.
Complainant and its holding company operate over 100 branches, 200 ATMS,
a call center and Internet sites.
Complainant owns
nine trademark registrations with the United States Patent and Trademark Office
that incorporate the terms WEBSTER
BANK or WEBSTER, including a trademark for
WEBSTER BANK (Reg. No. 1,997,751, issued August, 27 1996). Complainant has been
using
the WEBSTER BANK mark since November 1995.
Complainant’s
website can be accessed via both <websteronline.com> and
<websterbank.com>, where customers can conduct
their business online with
Complainant.
Respondent
registered the disputed domain name on November 13, 2002. Respondent is using
the domain name to divert Internet users
to Respondent’s site, a search engine
that offers financial and banking directory 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."
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(e), 14(a) and 15(a) of the Rules and draw such
inferences it considers appropriate
pursuant to paragraph 14(b) of the Rules.
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.
Complainant
has established that it has rights in the WEBSTER BANK mark through registration
with the United States Patent and Trademark
Office and through the use of its
mark in commerce for the last nine years.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently
distinctive and have acquired secondary meaning.”); see
also Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [<keppelbank.com>] in connection
with its banking business,
it has acquired rights under the common law.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the
WEBSTER BANK domain name.
Thus, Respondent has not established rights or legitimate interests in the
disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant;
(2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the
domain
name in question); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known
by the mark).
The Panel finds
that 4(a)(ii) has been satisfied.
Respondent
registered the domain name for its own commercial gain. Respondent’s domain
name diverts Internet users who wish to search
under Complainant’s mark to its
own website, through the use of a confusingly similar domain name. Respondent’s
practice of diversion,
motivated by commercial gain, through the use of a
confusingly similar domain name, evidences bad faith registration and use of a
domain name pursuant to the Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to
Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website);
see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when
the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent
is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore,
while, the four circumstances listed under Policy 4P (b), if proven, evidence
bad faith use and registration of a disputed
domain name, additional factors
can also evidence bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel
must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <websterbankonline.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 23, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/438.html