Coutts & Co. v. Itzahau
Claim Number: FA0706001015357
Complainant is Coutts & Co. (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coutts-u-k.com>, registered with Domain Contender, LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 25, 2007.
On June 25, 2007, Domain Contender, LLC confirmed by e-mail to the National Arbitration Forum that the <coutts-u-k.com> domain name is registered with Domain Contender, LLC and that Respondent is the current registrant of the name. Domain Contender, LLC has verified that Respondent is bound by the Domain Contender, LLC 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 June 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 2007 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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:
Complainant, a division of the Royal Bank of Scotland Group
Plc, is one of the oldest banking businesses in the
With close to 100,000 clients worldwide, Complainant provides private banking services, with a specialty in financial planning for clients with an international asset base.
Complainant promotes these services and conducts business under the COUTTS service mark, and, as a result, has extensively registered the COUTTS mark worldwide, including with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,096,845, issued September 16, 1997).
Complaint also maintains numerous websites at the <coutts.com>, <couttsuk.com>, and <couttsuk.net> domain names, with which it services its banking customers online.
Respondent registered the <coutts-u-k.com> domain name on December 12, 2006.
As late as May 2007, Respondent’s domain name resolved to a website mimicking Complainant’s <coutts.com> site, including word-for-word portions of text and inviting visitors to enter existing account information or submit personal information in order to receive an account.
Presently, the <coutts-u-k.com> domain name resolves to a page titled “Domain Contender” and contains a table of commercial links to various products and services, including those of Complainant’s competitors.
Respondent’s <coutts-u-k.com> domain name is confusingly similar to Complainant’s COUTTS mark.
Respondent does not have any rights to or legitimate interests in the <coutts-u-k.com> domain name.
Respondent registered and uses the <coutts-u-k.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same 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."
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
It is well established that registration of a mark with a trademark authority is sufficient to establish Complainant’s rights in that mark pursuant to Policy ¶ 4(a)(i). Accordingly, Complainant’s registration of the COUTTS mark with the USPTO adequately demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006): “The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”
Comparing Respondent’s <coutts-u-k.com>
domain name with Complainant’s COUTTS mark, it appears that the domain name
does not contain sufficient distinguishing characteristics to move it out of
the realm of confusing similarity vis-à-vis Complainant’s mark. The domain name at issue incorporates
Complainant’s mark in its entirety. The
addition of divisional hyphens and the generic top-level domain name “.com” are
not determinative under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are
irrelevant for purposes of the Policy).
Further, the letters “
Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD “.com” are insufficient to distinguish Respondent’s domain name from Complainant’s mark.
It follows that Respondent’s <coutts-u-k.com> domain name is confusingly similar to Complainant’s mark, and that Complainant has met its burden under Policy ¶ 4(a)(i).
It is incumbent upon Complainant to first make out a prima facie case asserting Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before Respondent is required to present evidence demonstrating its possession thereof. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in a domain name); see also F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007):
Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.
We conclude that Complainant has satisfied the requisite initial showing.
Where, as here, a respondent fails to contest a complaint, we may properly infer that it holds no rights or legitimate interests in a disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate its rights or legitimate interests in a domain name). However, we will nonetheless examine the record to determine if there is any basis for concluding that there is evidence showing that Respondent has rights or legitimate interests in the <coutts-u-k.com> domain name under Policy ¶ 4(c).
In this connection, we first observe that Respondent has failed to supply any evidence indicating that it is commonly known by the <coutts-u-k.com> domain name, and we find nothing in the record to support such a proposition. We therefore conclude that Respondent is not commonly known by the <coutts-u-k.com> domain name under Policy ¶ 4(c)(ii). Further, there is nothing to suggest Complainant has ever authorized Respondent to register domain names incorporating its COUTTS mark. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when it is not known by the mark in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by a competing mark and never applied for a license or permission from a complainant to use the trademarked name).
Moreover, it is undisputed that Respondent’s <coutts-u-k.com> currently resolves to a table of links, included among which are links to businesses competing with the financial services of Complainant. Use of the disputed domain name to divert Internet users away from legitimate services offered by Complainant under its mark, does not comport with Policy ¶ 4(c)(i) as a bona fide offering of goods or services or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to that of complainant’s competitors, was not a bona fide offering of goods or services); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Still more persuasive is Complainant’s undenied assertion that Respondent has used the <coutts-u-k.com> domain name as a “phishing” scheme, fraudulently to seek out and collect sensitive personal information for presumably illicit purposes by impersonating Complainant. Such behavior cannot even remotely be considered evidence of appropriate use under either Policy ¶¶ 4(c)(i) or (iii). See Bank for Int’l Settlements v. BFIS, D2003-0984 (WIPO Mar. 1, 2004) (finding no rights or legitimate interests where a respondent used a disputed domain name to perpetrate a fraud by masquerading as a complainant); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where a respondent copied a complainant’s website in order to steal account information from that of complainant’s customers, that respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
The Panel thus concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Resolution of Respondent’s <coutts-u-k.com> domain name to a commercial links page evidences bad faith registration and use of the domain under Policy ¶ 4(b)(iv) by virtue of the assumption that Respondent capitalizes on the confusing similarity between the disputed domain name and Complainant’s mark to generate referral fees as Internet users click on third-party links, including those of Complainant’s competitors, contained within the site. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
We also note that the examples of bad faith registration and use outlined in Policy ¶ 4(b) are not intended to be all inclusive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000): “[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.” For example, although not specifically included in Policy ¶ 4(b), Respondent’s use of the <coutts-u-k.com> domain name to collect sensitive personal information while mimicking Complainant’s legitimate site is in and of itself evidence of bad faith. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a respondent registered and used a domain name in bad faith because it redirected Internet users to a website that imitated a complainant’s website and was used to fraudulently acquire personal information from that complainant’s potential associates).
For these reasons, we conclude that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <coutts-u-k.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 1, 2007
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