National Westminster Bank plc v. Media Breakaway Premium
Claim Number: FA0801001126316
Complainant is National Westminster Bank plc (“Complainant”), represented by James
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwnatwest.com>, registered with Dynamic Dolphin, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 2008 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.
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 <wwwnatwest.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <wwwnatwest.com> domain name.
3. Respondent registered and used the <wwwnatwest.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a financial
institution based in the
Respondent registered the <wwwnatwest.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 registered the NATWEST mark with the UKIPO, the USPTO, and the OHIM, and has therefore established rights to the mark under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The disputed domain name incorporates the entire NATWEST mark
and adds the letters “www” to the front of Complainant’s mark. The panel in Bank of America Corp. v. InterMos, FA
95092 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of establishing a prima facie case, showing that
Respondent lacks all rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii). Complainant has asserted that Respondent
lacks all rights and legitimate interests, and therefore, the Panel finds that
Respondent has made a prima facie
case pursuant to Policy ¶ 4(a)(ii), shifting the
burden to Respondent. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that, where the complainant has asserted that the respondent has no
rights or legitimate interests with respect to the domain name, it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
Respondent has failed to respond to the Complaint. As a result, the Panel presumes that Respondent lacks all rights and legitimate interests in the <wwwnatwest.com> domain name. However, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests under Policy ¶ 4(c). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Complainant contends that Respondent has not been authorized
to use the NATWEST mark. Moreover, the
WHOIS information does not indicate that Respondent is commonly known by the <wwwnatwest.com> domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Respondent is using the disputed domain name to display links that redirect Internet users to websites that provide financial services. The financial services provided at the linked websites are similar to those offered by Complainant. The Panel finds that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a noncommercial or fair use under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Moreover, because Respondent is engaging in typosquatting, benefiting from a common typing error, the Panel finds further evidence that Respondent lacks all rights and legitimate interests in the dispute domain name under Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of the complainant's mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <wwwnatwest.com>
domain name to advertise competing financial websites, receiving profit by
redirecting Internet users to these competing websites. Respondent’s use of the disputed domain name
is capable of creating confusion with Complainant as to the source,
sponsorship, affiliation, or endorsement of the website that resolves from the
disputed domain name. The
panel in G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
In addition, previous panels have found evidence of
registration and use in bad faith under Policy ¶ 4(b)(iii)
when competing products or services are advertised on the website that resolves
from the disputed domain name.
Therefore, the Panel finds Respondent’s use of the disputed domain name
to display links to competing financial services further demonstrates
registration and use in bad faith under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Furthermore, because Respondent is engaging in typosquatting, there is additional evidence that Respondent registered and is using the disputed domain name in bad faith. In Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003), the panel found that the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith. Here, the Panel finds that Respondent has registered and is using the <wwwnatwest.com> domain name in bad faith under Policy ¶ 4(a)(iii). See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that the respondent’s registration of the <wwwremax.com> domain name, incorporating the complainant’s entire mark, was done with actual notice of the complainant’s rights in the mark prior to registering the infringing domain name, evidencing 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 <wwwnatwest.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 8, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum