National Westminster Bank plc v. UnusedDomains
Claim Number: FA0707001040053
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwestb.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 18, 2007.
On July 23, 2007, Domain Contender, LLC confirmed by e-mail to the National Arbitration Forum that the <natwestb.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 July 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 13, 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 postmaster@natwestb.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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:
1. Respondent’s <natwestb.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestb.com> domain name.
3. Respondent registered and used the <natwestb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National
Westminster Bank plc, founded in 1968, is a leading financial service provider
based in the
Respondent registered the <natwestb.com> domain name on December 13, 2006. As of January 8, 2007, the domain name at issue resolved to a website mimicking Complainant’s banking site at the <natwest.com> domain name, prompting Internet users to enter highly sensitive personal information. Presently, Respondent’s <natwestb.com> domain name directs users to a page of categorical links, advertising goods and services such as “Finance,” “Gifts,” and “Travel,” all which subsequently resolve to inactive screens, and, as such, Respondent is not currently making an active use of the disputed 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."
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 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 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.
The Panel finds Complainant’s registration of the NATWEST
mark with the USPTO, a trademark authority, is sufficient to establish rights
in the mark to satisfy Policy ¶ 4(a)(i).
See Expedia, Inc. v. Emmerson,
FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark
registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA]
mark pursuant to Policy ¶ 4(a)(i).”); see
also Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Respondent’s <natwestb.com> domain name bears a confusingly similarity to Complainant’s registered NATWEST mark. While the domain name at issue contains the additional letter “b” and the “.com” generic top-level domain, Complainant’s NATWEST mark remains the dominant and distinctive element of the domain name. The minor variations introduced by Respondent are insufficient to remove the <natwestb.com> domain name from the realm of confusing similarity with Complainant’s NATWEST mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); 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).
Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
While the Panel may ultimately accept all reasonable
inferences set forth in the Complaint as true when Respondent fails to respond,
the Panel must first be satisfied Complainant has established a prima facie case evidencing Respondent’s
lack of rights and legitimate interests in a domain name. See
AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”); see
also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Satisfied Complainant has proffered the requisite initial showing, the
Panel turns to consider whether Respondent has put forth any evidence
demonstrating rights or legitimate interests in the <natwestb.com> domain name.
As
held by the Panel in Am. Express Co. v.
Fang Suhendro, FA 129120 (Nat. Arb. Forum
Dec. 30, 2002), Respondent’s failure
to respond to the Complaint permits the Panel to infer Respondent holds no
rights or legitimate interests in the domain name at issue.
Upon examination of the record, the Panel finds Respondent has put forth no evidence and there is nothing in the record to suggest Respondent is commonly known by the <natwestb.com> domain name. Based on Respondent’s WHOIS information, it appears Respondent is known by “UnusedDomains.” Furthermore, Complainant has not authorized or given permission to Respondent to register domain names incorporating Complainant’s NATWEST mark. Without Complainant’s consent, Respondent is trading on the fame of Complainant’s NATWEST mark and creating a false inference of association with or endorsement by Complainant. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Thus, the Panel finds Respondent is not commonly known by the <natwestb.com> domain name pursuant to Policy ¶ 4(c)(ii).
Moreover, Respondent’s use of the <natwestb.com> domain name first to resolve to a site mimicking Complainant’s own legitimate banking site at the <natwest.com> domain name in order to solicit personal information from unwary Internet users and then as a parking site for non-active links to various goods and services does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and (iii), respectively. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the 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); see also Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, D2007-0267 (WIPO Apr. 26, 2007) (failing to find a bona fide offerring of goods or services under Policy ¶ 4(c)(i) when Respondent allowed a domain parking service provider to post advertisments at the disputed domain name).
Accordingly, the Panel concludes Respondent holds no rights or legitimate interests in the <natwestb.com> domain name and Complainant has met the requirements of Policy ¶ 4(a)(ii).
Considering the confusion likely generated by Respondent’s overt inclusion of Complainant’s NATWEST mark in the disputed domain name and Respondent’s near copycat version of Complainant’s site at the <natwest.com> domain name, the Panel infers Respondent is attempting to commercially benefit from the inclusion of Complainant’s likeness in the <natwestb.com> domain name. Respondent’s conduct amounts to bad faith use and registration under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); 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 the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Furthermore, Policy ¶ 4(a)(iii) is not intended to be an exhaustive list of the ways bad faith can be demonstrated. 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.”). Respondent’s registration of a typosquatted version of Complainant’s NATWEST mark; prior use of the <natwestb.com> domain name as a phishing scheme to fraudulently collect sensitive information for presumably onerous purposes; and the present failure to make an active use of the domain name at issue are individually sufficient to demonstrate bad faith registration and use by Respondent. See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); 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); see also 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).
Based on the foregoing, the Panel finds Complainant has amply satisfied the requirements of 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 <natwestb.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 28, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum