National Westminster Bank plc v. NatWest c/o NatWest Bank
Claim Number: FA0807001213346
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 <natwests-bank.com>, registered with Register.com, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 1, 2008.
On July 1, 2008, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <natwests-bank.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 July
2, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 22, 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@natwests-bank.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 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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 <natwests-bank.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwests-bank.com> domain name.
3. Respondent registered and used the <natwests-bank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a financial institution that offers a full
range of financial services under the NATWEST mark, which Complainant
registered with the United Kingdom Intellectual Property Office (“UKIPO”) on
December 3, 1973 (Reg. No. 1,021,601), with the United States Patent and
Trademark Office (“USPTO”) on June 7, 1983 (Reg. No. 1,241,454), and with the
European Union Office for Harmonization in the Markets (“OHIM”) on April 18,
2006 (Reg. No. 4,319,067). Complainant
has more than 7.5 million personal customers and services more than 850,000
small business accounts. It has more
than 1,600 branches and is part of the fifth-largest financial services group
in the world. Complainant uses the
NATWEST mark to promote, among other things, banking, credit cards, financial
planning and insurance services throughout the
Respondent registered the <natwests-bank.com> domain name on May 6, 2008. The disputed domain name resolves to a website entitled “NatWest Bank Plc,” which contains inactive links that purport to provide financial services.
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.
The Panel finds that Complainant has established rights in
the NATWEST mark for purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the UKIPO, the USPTO, and the OHIM. See
DatingDirect.com Limited v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16,
2004) (finding that the panel recognizes the distinctive nature of the
complainant’s DATINGDIRECT.COM mark through registration with the United
Kingdom Intellectual Property Office); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(finding that a trademark registration adequately demonstrates a complainant’s
rights in a mark under Policy ¶ 4(a)(i)).
Complainant contends that
Respondent’s <natwests-bank.com> domain name is confusingly similar to its NATWEST mark. The <natwests-bank.com> domain name differs from Complainant’s mark in four ways:
(1) the letter “s” has been added to the end of the mark; (2) a hyphen has been
added to the end of the mark; (3) the generic term “bank” has been added to the
end of the mark; and (4) the generic top-level domain (“gTLD”) “.com” has been
added. Neither the addition of random
letters, nor the addition of a hyphen, nor the addition of a generic term
sufficiently distinguishes a domain name from an incorporated mark for the
purposes of Policy ¶ 4(a)(i). The
addition of a gTLD also does not reduce the likelihood of confusion between the
domain name and the mark, because every domain name must contain a TLD. Therefore, the Panel finds that these changes
do not minimize or eliminate the resulting likelihood of confusion, and so
Respondent’s disputed domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Kelson Physician Partners,
Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is
identical or confusingly similar to the complainant’s federally registered
service mark, KELSON); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541
(Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's
mark does not create a distinct characteristic capable of overcoming a Policy ¶
4(a)(i) confusingly similar analysis.”); see also Marriott Int’l, Inc.
v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that
the respondent’s domain name <marriott-hotel.com> is confusingly similar
to the complainant’s MARRIOTT mark); see also Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003)
(“The addition of a top-level domain is irrelevant when establishing whether or
not a mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <natwests-bank.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). 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 Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent is not commonly known
by the <natwests-bank.com>
domain name nor has it ever been the owner or licensee of the NATWEST
mark. Respondent appears to be known as
“NatWest”, but there is no affirmative evidence that Respondent ever was known by
the NATWEST mark, or any derivation thereof, before the registration of the
disputed domain name. Because of this
lack of evidence, along with the fact that Respondent has failed to show any
evidence contrary to Complainant’s contentions, the Panel finds that Respondent
is not commonly known by the <natwests-bank.com>
domain name
pursuant to Policy ¶ 4(c)(ii).
See Yoga Works, Inc. v.
Arpita, FA 155461 (Nat. Arb. Forum June
17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Gestmusic Endemol, S.A. v. operaciontriunfo.us,
FA 214337 (Nat. Arb. Forum Jan. 14, 2004) (“Though
Respondent’s WHOIS information lists Respondent’s name as ‘o.
operaciontriunfo.us’ and organization as ‘operaciontriunfo.us,’ there is no
evidence before the Panel that Respondent was actually commonly known by the [<operaciontriunfo.us>]
domain name.”).
Respondent maintains a
website at the <natwests-bank.com> domain name that displays Complainant’s NATWEST mark and appears to offer
financial services. Complainant
contends that Respondent is passing off the website at the <natwests-bank.com> domain name as Complainant’s own banking
website, in an apparent attempt to get access to Internet visitors’ confidential
personal information, a practice known as “phishing.” The Panel finds that these uses of the
<natwests-bank.com> domain
name are 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 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 Am. Int’l
Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding
that the respondent attempts to pass itself off as the complainant online,
which is blatant unauthorized use of the complainant’s mark and is evidence
that the respondent has no rights or legitimate interests in the disputed
domain name); 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Complainant’s business is being
disrupted because Respondent is passing off the website at the <natwests-bank.com> domain name as
Complainant’s legitimate website.
Respondent is achieving this disruption through the confusion caused by
the similarity between the NATWEST mark and the <natwests-bank.com> domain name, the use of Complainant’s
NATWEST mark on Respondent’s website at the <natwests-bank.com>
domain name, and the use of language that seems to offer financial services. The Panel finds that Respondent’s use of the
disputed domain name disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining
commercially through this diversion, both through the likelihood of confusion
with Complainant’s mark and through Respondent’s “phishing” activity. The Panel finds that this is an intentional
use of the disputed domain name for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this
use is also evidence of registration and use in bad faith. See
State Fair of
Complainant also contends that Respondent is intentionally using Complainant’s NATWEST mark to engage in a “phishing” scheme to get access to the confidential personal information of Internet visitors who mistake Respondent’s website at the <natwests-bank.com> domain name for Complainant’s legitimate website. The Panel finds that this use of the disputed domain name is also evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); 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).
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 <natwests-bank.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 12, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum