National Westminster Bank plc v. ben johnson
Claim Number: FA0806001209992
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 <uk-natwestbank.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2008.
On June 16, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <uk-natwestbank.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 June 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 8, 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@uk-natwestbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Founded in 1968, Complainant provides a full range of financial services under the NATWEST mark.
Complainant is based in the
Complainant currently has more than 7.5 million personal customers and 850,000 small business accounts.
Complainant holds numerous registrations of the NATWEST mark in multiple jurisdictions, including the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,021,601 filed December 3, 1973) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454, issued June 7, 1983).
In connection with its main website at <natwest.com>, Complainant, directly or through its parent company, owns the following domain names: <natwestuk-bank.co.uk>, <ukhatwest.com>, <natwestbank.org>, <natwestbank.biz>, and <natwestbank.co.uk>.
Complainant has not licensed or otherwise authorized Respondent to use the NATWEST mark or any variations thereof.
Respondent’s <uk-natwestbank.com> domain name was registered on May 1, 2008, and resolves to a web page purporting to be the official website for Complainant’s business under the NATWEST mark.
Respondent’s website imitates Complainant’s main website, mark and logo, and it contains a “Contact Us” link with false information and an “Online Banking Logon,” where individuals are asked to enter their “Userid” and “Access Code.”
Respondent’s <uk-natwestbank.com> domain name is confusingly similar to Complainant’s NATWEST mark.
Respondent does not have any rights or legitimate interests in the domain name <uk-natwestbank.com>.
Respondent registered and uses the <uk-natwestbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has sufficiently established rights in the
NATWEST mark individually through each of its governmental registrations with the
UKIPO and the USPTO pursuant to Policy ¶ 4(a)(i). See Royal Bank of Scot.
Group plc v. Demand Domains,
FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that
registration of the PRIVILEGE mark with the
The <uk-natwestbank.com> domain name contains
Complainant’s NATWEST mark in its entirety followed by the generic word “bank,”
which directly describes Complainant’s business, plus the generic top-level
domain (“gTLD”) “.com.” The mark is
preceded by a hyphen and the geographic locater “
The additions of generic words with an obvious relationship to
Complainant’s business and a gTLD renders the disputed domain name confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Further see Nat’l
Westminster Bank plc v. natt45, FA 1176668 (Nat. Arb. Forum May 27, 2008) (stating
that “generic words that describe
Complainant’s Internet financial and banking operations, such as ‘bank’ and
‘online’ will generally fail to distinguish a disputed domain name for the
purposes of Policy ¶ 4(a)(i)”).
The Panel therefore concludes that Complainant has met its obligations of proof under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(i), Complainant must establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, at which point the burden is shifted to Respondent to demonstrate that it does have such rights or legitimate interests. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):
Complainant
must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and then the burden
shifts to Respondent to show it does have rights or legitimate interests.
See also F. Hoffmann-La Roche AG v. Di Salvatore,
D2006-1417 (WIPO Feb. 1, 2007): “Proper analysis of
paragraph 4(a)(ii) of the Policy shows that the
burden of proof shifts from the Complainant to the Respondent once the
Complainant has made out a prima facie case that the Respondent has no rights
or interests in the domain names.”
Complainant has made out a prima facie case, and, in the absence of a response from
Respondent, we may presume that Respondent has no rights to or legitimate
interests in the <uk-natwestbank.com> domain name. See Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that a complainant’s allegations are
true unless clearly contradicted by the evidence); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
We will nonetheless examine the record in light of the
factors listed under Policy ¶ 4(c) to determine if there is a basis for
concluding that Respondent has such rights or interests.
We begin by observing that Complainant alleges, and Respondent does not deny, that Complainant has not licensed or otherwise authorized Respondent to use the NATWEST mark or any variations thereof. Additionally, there is no evidence in the record that Complainant is or ever was commonly known by the disputed domain name. Only a “ben johnson” is listed under the disputed domain name’s WHOIS information and this has no apparent connection to the NATWEST mark or the disputed domain name. In the absence of any additional evidence on this point, we conclude that Respondent is not commonly known by the <uk-natwestbank.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by a disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that that respondent is commonly known by the domain name).
We also note that there is no dispute as to Complainant’s allegation to the effect that the disputed domain name fraudulently resolves to a website purporting to be the “official” website for Complainant’s business under the NATWEST mark. Moreover, there is no dispute as to Complainant’s further allegation that the same website contains false “Contact Us” information, which would presumably mislead Internet users into unwittingly sending personal information to Respondent instead of Complainant. Additionally, Respondent does not contest the assertion that the disputed domain name has an “Online Banking Logon” link, which, when engaged, requests Internet users to enter in their “Userid” and “Access Code.” These uses are a bald attempt to extract sensitive personal information from Internet users, including Complainant’s customers as part of a scheme commonly called “phishing.” Phishing is, by definition, 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 Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also Nat’l Westminster Bank plc v. Blues William, FA 731824 (Nat. Arb. Forum Aug. 7, 2006):
Respondent
is using the disputed domain name to divert Internet users attempting to locate
Complainant’s website to a website that is a fraudulent imitation of
Complainant’s website. [S]uch [a]
diversion via an imitation website as an attempt by Respondent to pass itself
off as Complainant is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Allianz of Am. Corp. v. Bond, FA
690796 (Nat. Arb. Forum June 12, 2006) (holding that a respondent’s use of the
<allianzcorp.biz> domain name fraudulently to acquire the personal and
financial information of Internet users seeking a complainant’s financial
services was not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel thus concludes that Complainant has sufficiently established the evidence necessary under Policy ¶ 4(a)(ii).
Numerous panels have held that using a disputed domain name
to resolve to a website that fraudulently imitates a complainant’s legitimate
website constitutes bad faith under Policy ¶ 4(a)(iii). See Vivendi Universal Games v. Ballard,
FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where a complainant’s mark was appropriated at
registration, and a copy of that complainant’s website was used at the domain
name in order to facilitate interception of its customer’s account information,
a respondent’s behavior evidenced bad faith use and registration of the domain
name); see also Am.
Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003)
(finding that a disputed domain name was registered and used in bad faith where
a 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”). In
this instance, Respondent’s <uk-natwestbank.com> domain name
likewise resolves to a website containing duplications of Complainant’s mark
and logos for the evident purpose of misleading Internet users into providing sensitive
personal information about themselves.
Accordingly, we conclude that this establishes Respondent’s bad faith
registration and use of the <uk-natwestbank.com> domain name
pursuant to Policy ¶ 4(a)(iii).
In addition, this phishing scheme is an apparent attempt by Respondent to benefit financially from the illicit use of the personal information that is mistakenly provided by Internet users. This is evidence of Respondent’s bad faith registration and use of the <uk-natwestbank.com> domain name under Policy ¶ 4(b)(iv). See Nat’l Westminster Bank plc v. Trust, FA 861135 (Nat. Arb. Forum Jan. 15, 2007):
Respondent
used the <natwestchartered.com> domain name to divert Internet
users seeking Complainant’s banking services to Respondent’s own website which
appeared to offer the same services.
Respondent was attempting to profit from the goodwill associated with
Complainant’s NATWEST mark, which is confusingly similar to Respondent’s domain
name. Such use of the disputed domain
name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
See also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that a disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through a respondent’s registration and use of an infringing domain name to attempt to attract Internet users to its fraudulent website by using a complainant’s famous marks and likeness).
For these reasons, the Panel concludes that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <uk-natwestbank.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 24, 2008
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