National Westminster Bank plc v. williams bar
Claim Number: FA0805001195946
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 <natwestminster-uk.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
On June 4, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of June 24, 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 postmaster@natwestminster-uk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <natwestminster-uk.com> domain name is confusingly similar to Complainant’s NATIONAL WESTMINSTER mark.
2. Respondent does not have any rights or legitimate interests in the <natwestminster-uk.com> domain name.
3. Respondent registered and used the <natwestminster-uk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, was founded in
1968 and is a financial institution based in the
Respondent registered the <natwestminster-uk.com>
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.
Complainant has evidenced the registrations of its NATIONAL WESTMINSTER mark with the UKIPO and the OHIM. The Panel finds these registrations adequately fulfill Policy ¶ 4(a)(i) and thus establish Complainant’s rights in its NATIONAL WESTMINSTER mark. 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <natwestminster-uk.com> domain
name incorporates Complainant’s NATIONAL WESTMINSTER mark with several minor
alterations. Respondent, in its disputed
domain name abbreviates “national” to “nat,” adds a hyphen, adds the geographical
abbreviation “
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed
domain name. Once Complainant presents a prima facie case in support of its
allegations, the burden shifts to Respondent to prove it does have rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has adequately established
a prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume Respondent does not have rights or legitimate interests
in the disputed domain name. The
Panel, however, will examine the record to determine whether Respondent has
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Respondent is using the <natwestminster-uk.com>
domain name to resolve to a website which imitates the website resolving from
Complainant’s <natwest.com> domain name.
The Panel finds Respondent’s use is an attempt to “pass itself off” as
Complainant. Thus, the Panel finds
Respondent’s use is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Kmart of
Additionally, Respondent is using the website resolving from the disputed domain name to “phish” for Internet users’ confidential financial information by asking Internet users to “logon.” The Panel finds Respondent’s use of the disputed domain name to obtain confidential financial information is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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)); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Furthermore, Respondent does not appear to be commonly known
by the <natwestminster-uk.com> domain name. The WHOIS information lists Respondent as
“williams bar.” Additionally, the record
does not indicate Complainant has authorized Respondent to use its NATIONAL
WESTMINSTER mark. Therefore, the Panel
finds Respondent is not commonly known by the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website
which imitates Complainant’s official website resolving from its
<natwest.com> domain name.
Respondent is using the website resolving from the <natwestminster-uk.com>
domain name to pass itself off as Complainant and phish for Internet users’
confidential financial information. The
Panel finds Respondent’s use of the disputed domain name to pass itself off as
Complainant and defraud Complainant’s clients constitutes bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum
May 30, 2003) (finding that the disputed domain name was registered and used in
bad faith where the respondent hosted a website that “duplicated Complainant’s
mark and logo, giving every appearance of being associated or affiliated with
Complainant’s business . . . to perpetrate a fraud upon
individual shareholders who respected the goodwill surrounding the AIG mark”); see also Capital One Fin. Corp. v.
Howel, FA 289304 (Nat. Arb. Forum
In addition, the Panel finds Respondent is using the
confusingly similar <natwestminster-uk.com> domain name to profit
from the goodwill Complainant has established in its NATIONAL WESTMINSTER mark. Respondent presumably profits by phishing for
Internet users’ confidential financial information using the website resolving
from the disputed domain name which imitates Complainant’s official website. The
Panel finds Respondent’s actions are evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See 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);
see also 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).
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 <natwestminster-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 8, 2008
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