National Westminster Bank plc v. WhoisGuard c/o WhoisGuard Protected
Claim Number: FA0804001181056
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <natwestof.com>, registered with Enom, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On May 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 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 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 <natwestof.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestof.com> domain name.
3. Respondent registered and used the <natwestof.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 <natwestof.com> domain name on February 19, 2008. As of March 17, 2008, Respondent was using the disputed domain name to divert Internet users to a fraudulent website purporting to be Complainant’s official website and collecting personal information.
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.
By registering the NATWEST mark with several governmental trademark authorities, the Panel finds that Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See 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."); 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.”).
Complainant contends that the <natwestof.com> domain name is
confusingly similar to its NATWEST mark because it incorporates the entire mark,
and differs by the addition of the letters “o” and “f” and the generic
top-level domain (“gTLD”) “.com.”
Complainant asserts that the letters “o” and “f” are an abbreviation for
the term “offshore,” a term that corresponds to Complainant’s business. The panel in Marriott
International, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first show that Respondent has no rights or
legitimate interests in the disputed domain name, and then the burden shifts to
Respondent to demonstrate that it does have rights or legitimate
interests. Complainant asserts that
Respondent has no rights or legitimate interests in the <natwestof.com> domain name; the
Panel finds that Complainant has made a prima
facie case under Policy ¶ 4(a)(ii). The burden thus shifts to Respondent to show
that it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide “concrete evidence that
it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent has not submitted a response to the Complaint. In Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel found
that failing to respond allows a presumption that the complainant’s allegations
are true unless clearly contradicted by the evidence. The Panel may presume that Respondent has no
rights or legitimate interests, but the Panel will consider all evidence in the
record under Policy ¶ 4(c) before making its finding. See Broadcom Corp. v. Ibecom
PLC, FA 361190 (Nat. Arb. Forum
Respondent was using the disputed domain name to pass itself
off as Complainant’s legitimate website.
The panel in American International Group, Inc. v.
Busby, FA 156251 (Nat. Arb. Forum
Respondent was also using the disputed domain name to collect personal information from Internet users. In Juno Online Services, Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), the panel found that the respondent’s use of the disputed domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Thus, the Panel concludes that Respondent’s use of the disputed domain name does not demonstrate rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The WHOIS information does not indicate that Respondent is commonly known by the <natwestof.com> domain name. Complainant contends that it has not licensed or otherwise authorized Respondent to use its NATWEST mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is commercially benefiting from the goodwill associated with the NATWEST mark by operating a website purporting to be Complainant’s online banking website. Respondent’s use may create confusion as to Complainant’s source, sponsorship, affiliation or endorsement of the website that resolves from the <natwestof.com> domain name. The panel in H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) found 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. The Panel finds that Respondent’s fraudulent use to pass itself off as Complainant evidences registration and use in bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel finds that Respondent’s
use is also capable of disrupting Complainant’s business under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum
Respondent was also using the <natwestof.com> domain name to collect personal information from Internet
users. The Panel finds that this use is
additional evidence of registration and use in bad faith under 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
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <natwestof.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E Condon, Panelist
Dated: June 13, 2008
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