National Westminster Bank plc v. nwestob.net
Claim Number: FA0706001025031
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas of Parker Poe Adams & Bernstein LLP,
150 Fayetteville Street, Suite 1400, Raleigh, NC, 27602. Respondent is nwestob.net (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nwestob.net>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 29, 2007; the National Arbitration Forum received a hard copy of the Complaint August 10, 2007. The Complaint was submitted in both Chinese and English.
On August 22, 2007, Beijing Innovative Linkage Technology Ltd. d/b/a Dns confirmed by e-mail to the National Arbitration Forum that the <nwestob.net> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. d/b/a Dns verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a Dns registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 23, 2007, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 12, 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 September 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <nwestob.net>, is confusingly similar to Complainant’s NATWEST mark.
2. Respondent has no rights to or legitimate interests in the <nwestob.net> domain name.
3. Respondent registered and used the <nwestob.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a leading
financial institution based in the
Respondent registered the disputed domain name June 6, 2006. The disputed domain name previously resolved to a website featuring a link to an imitation of Complainant’s own website and now is devoid of content.
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."
Given 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 will draw such inferences as the Panel 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 the 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 Complainant to 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 attempts to establish rights in the NATWEST mark through registration of the mark with the USPTO. The Panel finds that Complainant’s timely registration and subsequent use of the NATWEST mark for more than twenty-four years sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office established the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <nwestob.net> domain name abbreviates Complainant’s NATWEST mark, and adds the abbreviations “o” for “online” and “b” for bank or banking. The disputed domain name also adds the generic top-level domain (“gTLD”) “.net.” The Panel finds that adding a gTLD and abbreviations of both a protected mark and terms that obviously relate to Complainant’s business fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Where Complainant has made a prima facie case in support of its
allegations, the burden shifts to Respondent to set forth concrete evidence
indicating that it has rights or legitimate interests in accordance with Policy
¶ 4(a)(ii). See
SEMCO Prods., LLC v. dmg world media (
Respondent previously resolved its disputed domain name to a website featuring a link to a fraudulent imitation of Complainant’s website. The Panel finds that Respondent’s attempt to disguise itself as Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Respondent’s disputed domain name is not a currently active website. The Panel finds that Respondent’s failure to associate content with its disputed domain name indicates a lack of rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
Complainant asserts that Respondent is not, and has never been, commonly known by the disputed domain name. Respondent failed to submit a response in this proceeding and no proof in the record contradicts Complainant’s allegations. As a result, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Gambro AB v. Family Health & Wellness Ctr., D2001-0447 (WIPO May 25, 2001) (finding that the respondent did not submit any evidence to support its suggestion that its employee was known by the nickname “Gambro”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent formerly used the disputed domain name in an attempt to disguise itself as Complainant, presumably with the intent of garnering personal information from unsuspecting Internet users. The Panel finds that Respondent’s former use of the disputed domain name, namely, attempting to pass itself off as Complainant in an inferred attempt to “phish” for personal information of unsuspecting Internet users, illustrates registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). 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 Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
Respondent is currently failing to associate any content with its disputed domain name. The Panel finds that the current lack of content associated with its disputed domain name evinces registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
The Panel finds that Complainant 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 <nwestob.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 3, 2007.
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