National Westminster Bank plc v. Leclaire Thomas
Claim Number: FA0708001052605
Complainant is National Westminster Bank plc (“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 <natwestsbk-international.com>, registered with Tucows Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <natwestsbk-international.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestsbk-international.com> domain name.
3. Respondent registered and used the <natwestsbk-international.com> 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 <natwestsbk-international.com>
domain name on
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.
Complainant asserts 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 mark
sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See 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”).”); see
also ESPN, Inc.
v. MySportCenter.com, FA 95326 (Nat. Arb. Forum
domain name contains Complainant’s NATWEST mark in its entirety and adds the
letter “s,” the letters “bk,” which is an abbreviation of the term “bank,” a
hyphen, the generic term “international,” and the generic top-level domain
(“gTLD”) “.com.” The Panel finds that
the addition of a letter, an abbreviation of a term relating to Complainant’s
business, a hyphen, a generic term and a gTLD to an otherwise identical mark
fails to sufficiently distinguish the disputed domain name from the mark for
purposes of Policy ¶ 4(a)(i). See 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); see also Sports Auth. Mich.
Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances 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’s disputed domain name previously resolved to a website that appeared to be identical to Complainant’s own website. Respondent was apparently attempting to pass itself off as Complainant in an attempt to acquire financial benefit. The Panel finds that Respondent’s previous use was neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor 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 Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the 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”).
Respondent currently directs the <natwestsbk-international.com> domain name to a non-active website. The Panel finds that Respondent’s failure to associate content with its disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that in certain instances excusable delays will inevitably arise, but noting that those delays must be quantifiable and limited; they cannot extend indefinitely); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
Complainant avouches that Respondent has never been commonly
known by the disputed domain name. A
review of Respondent’s WHOIS registration information reveals that the
registrant of the <natwestsbk-international.com>
domain name is “Leclaire Thomas.” In
light of the lack of countervailing evidence, the Panel finds that Respondent
is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum
Sept. 21, 2006) (finding that the respondent is not commonly known by the
<shoredurometer.com> or <shoredurometers.com> domain names where
the WHOIS information indicates the registrant of the domain names as “Andrew
Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests
that the respondent is commonly known by the domain names); see also Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant accuses Respondent of engaging in “phishing,” a
scheme designed to garner private financial information from unsuspecting
Internet users with the intent of earning financial benefit. Respondent directed its <natwestsbk-international.com> domain
name to its own website, which was an imitation of Complainant’s own website,
in order to gain private financial information from Internet users. The Panel finds that Respondent’s use of the
disputed domain name amounts to phishing, and is therefore indicative of
Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See HOPE
worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004)
(finding that the respondent registered and used the domain name in bad faith
because it redirected Internet users to a website that imitated the
complainant’s website and was used to fraudulently acquire personal information
from the complainant’s potential associates); see also Capital One Fin.
Corp. v. Howel, FA 289304 (Nat. Arb. Forum
Presumably, Respondent likely enjoyed financial benefit from its previous, fraudulent use of the disputed domain name. Unsuspecting Internet users were likely to become confused as to the source and affiliation of the resulting website. The Panel finds that Respondent‘s use amounts to an attraction for commercial gain, which evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); 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).
As indicated above, the disputed domain name currently resolves to a non-active website. The Panel finds that Respondent’s failure to associate content with its disputed domain name registration 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 Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natwestsbk-international.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme court, NY (Ret.)
Dated: September 12, 2007
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