National Westminster Bank plc v. National Western Finders
Claim Number: FA0807001213420
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 <nat-westfin.com>, registered with Netfirms, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
3, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 23, 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 <nat-westfin.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <nat-westfin.com> domain name.
3. Respondent registered and used the <nat-westfin.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Westminster Bank plc, founded in 1968, is a leading, full-service financial
institution based in the
Respondent registered the <nat-westfin.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 asserts rights in the NATWEST mark through
registration of the mark with the UKIPO and USPTO. The Panel finds that Complainant’s longstanding
trademark registration is sufficient to establish rights in the NATWEST mark for
purposes of Policy ¶ 4(a)(i). See Royal
Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb.
domain name is confusingly similar to Complainant’s NATWEST
mark. Respondent’s disputed domain name
contains Complainant’s entire mark, adds a hyphen between the terms “nat” and
west,” the term “fin,” and the generic top-level domain (“gTLD”) “.com.” Moreover, Complainant submits evidence that
the term “fin” is a common abbreviation for the term “finance,” the industry in
which Complainant operates. The Panel
finds that neither the addition of a generic term, or common abbreviation
thereof, is a sufficient means of distinguishing Respondent’s domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See PG&E Corp. v. Anderson,
D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding
the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’
following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by
Complainant”); see also Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business). Similarly, the addition of a hyphen and the
gTLD “.com” are not distinguishing characteristics when evaluating a domain
names relationship to a known and established mark. See InfoSpace.com, Inc. v. Ofer,
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights or legitimate interests in the <nat-westfin.com> domain name. In instances such as this, where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent’s <nat-westfin.com> domain name merely
resolves to Complainant’s own website found at the <natwest.com> domain
name. The Panel finds that this use is
neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See eBay
Inc. v. Hong, D2000-1633 (WIPO
Moreover, Complainant contends that Respondent is not
commonly known by the <nat-westfin.com>
domain name or licensed to register domain names featuring Complainant’s
NATWEST mark. Without evidence to the
contrary, the Panel finds that Respondent has not shown rights or legitimate
interests in the <nat-westfin.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s <nat-westfin.com> domain name simply
resolves to Complainant’s own website.
As a result, the Panel finds that Respondent clearly knew of
Complainant’s rights in the well-known NATWEST mark and that registration of an
infringing domain name with actual knowledge of another’s rights in a mark is
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse."); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum
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 <nat-westfin.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 8, 2008
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