national arbitration forum

 

DECISION

 

National Westminster Bank plc v. giggs23 c/o Rebecca Clower

Claim Number: FA0810001230018

 

PARTIES

Complainant is National Westminster Bank plc (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA.  Respondent is giggs23 c/o Rebecca Clower (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <natwestonlinebanking-uk.net>, registered with Australian Style Pty Ltd.

 

PANEL

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2008.

 

On October 20, 2008, Australian Style Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <natwestonlinebanking-uk.net> domain name is registered with Australian Style Pty Ltd and that Respondent is the current registrant of the name.  Australian Style Pty Ltd has verified that Respondent is bound by the Australian Style Pty Ltd 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 October 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 11, 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@natwestonlinebanking-uk.net by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <natwestonlinebanking-uk.net> domain name is confusingly similar to Complainant’s NATWEST mark.

 

2.      Respondent does not have any rights or legitimate interests in the <natwestonlinebanking-uk.net> domain name.

 

3.      Respondent registered and used the <natwestonlinebanking-uk.net> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, National Westminster Bank plc, was founded in 1968 in the United Kingdom.  Complainant is a financial institution that offers a full range of financial services for personal and business consumers.  Complainant is part of the fifth-largest financial services group in the world under the umbrella of the Royal Bank of Scotland. 

 

Complainant holds numerous registrations for its NATWEST mark.  Complainant’s mark has been registered with the United Kingdom Intellectual Property Office (“UKIPO”) since 1973 (Reg. No. 1,021,601 filed December 3, 1973) and with the United States Patent and Trademark Office (“USPTO”) since 1983 (Reg. No. 1,241,454 issued June 7, 1983).  Additionally, Complainant holds registrations for the NATWEST ON LINE mark as Complainant’s business includes on line banking and financial transactions.

 

Respondent registered the <natwestonlinebanking-uk.net> domain name on July 28, 2008.  The disputed domain name resolves to a website designed to look much like Complainant’s website.  Confused consumers may believe that they are using Complainant’s website and, therefore, release private information, such as bank account numbers as well as passwords.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the NATWEST mark under Policy ¶ 4(a)(i) through registration of the mark in multiple countries, including with the UKIPO and the USPTO.  See 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.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Respondent’s <natwestonlinebanking-uk.net> domain name is confusingly similar to Complainant’s mark.  Respondent incorporates the entire mark into the domain name with the addition of the generic terms “online” and “banking,” a hyphen, the geographic descriptive term “uk,” and the generic top-level domain “.net.”  Complainant conducts a significant amount of business as an online banking service; therefore the additional terms can be fairly said to describe Complainant’s operations.  Additionally, the geographic descriptive term “uk” creates further similarities because Complainant’s headquarters are located in the United Kingdom.  The Panel finds that these alterations as combined create a confusingly similar domain name as to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly similar to the complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Online, Inc. v. Asian On-Line This Domain For Sale, FA 94636 (Nat. Arb. Forum May 17, 2000) (finding that the domain names, which consist of “ao-l” and geographic location, are confusingly similar to the complainant’s mark).

 

The Panel concludes that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <netwestonlinebanking-uk.net> domain name.  Once Complainant has made a prima facie case the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative…it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”); 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).”).  The Panel finds that Complainant has presented a prima facie case.  The Panel will now consider whether all of the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).

 

Respondent’s disputed domain name resolves to a website that is an imitation of Complainant’s website, including logos.  Because of the confusingly similar domain name and the artfully created imitation website, the Panel assumes that Respondent is attempting to pass itself off as Complainant.  The Panel finds that Respondent is attempting to capitalize on Complainant’s well known marks and reputation to attract consumers.  This deception does not constitute a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See National 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…such 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.”); see also 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 . . . .”).

 

Respondent’s disputed domain name contains a “Consumer Login” section that brings consumers to a login page.  The login page asks consumers to provide their personal account information.  Respondent thus attempts to defraud confused consumers into revealing personal information from which Respondent may profit.  This use of a fraudulent website to coerce unsuspecting consumers into divulging critical personal information has been defined as “phishing.”  The Panel finds that Respondent’s website, in practicing phishing, does not constitute either a bona fide offering of goods and 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 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).   

 

Complainant asserts that Respondent is not commonly known by the disputed domain name.  Based on the information in the record, the Panel may find that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

The Panel concludes that Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

With the <netwestonlinebanking-uk.net> domain name, Respondent is attempting to pass itself off as Complainant.  The disputed domain name resolves to a website purporting to be Complainant and prominently featuring Complainant’s logo and other information similar to Complainant’s website.  The Panel determines that this establishes that Respondent registered and used the disputed domain name in bad faith for the purpose of disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).

 

Complainant asserts that Respondent’s registration of a confusingly similar name that bears Complainant’s entire mark creates a substantial likelihood of confusion as to the source and affiliation of the disputed domain name and corresponding website.  Complainant argues that Internet users seeking Complainant’s future or current business will likely happen across Respondent’s disputed domain name and corresponding website, and be led to divulge private information to Respondent through this pretext.  Complainant infers that Respondent has a prime motive of commercial and monetary gain by passing itself off in such a manner.  The Panel may therefore find that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also 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.”).

 

Respondent’s use of the disputed domain name that resolves to a website purporting to be Complainant’s website is evidence of registration and use of the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  The Panel finds the attempt by Respondent to pass itself off as Complainant is in itself sufficient to establish bad faith registration and use of the disputed domain name.  See Wells Fargo & Co. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant…the purpose of which is to deceive Complainant’s customers…The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).

 

The intent of Respondent in using a confusingly similar domain name that resolves to a website that is virtually identical to Complainant’s is to create a “phishing” scheme to attract unwary consumers who are then encouraged to give over personal information.  The Panel finds that Respondent’s website evidences bad faith registration and use of the disputed domain name pursuant to 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 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).

 

The Panel concludes that Complainant has established Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <natwestonlinebanking-uk.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Judge Harold Kalina (Ret.), Panelist

Dated: December 1, 2008

 

 

 

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