National Westminster Bank plc v. natwestoisplc c/o James Lenton
Claim Number: FA0810001231469
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 <natwestoisplc.com>, registered with Australian Style Pty Ltd.
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 October 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 30, 2008.
On November 1, 2008, Australian Style Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <natwestoisplc.com> 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 November 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 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:
Complainant holds several trademark registrations in the NATWEST mark, including registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,021,601 issued December 3, 1973), the European Union Office for Harmonization in the International Market (“OHIM”) (Reg. No. 4,319,067 issued April 18, 2006), and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983) in relation to its banking services.
Respondent registered the <natwestoisplc.com>
domain name on
The subject domain name resolves to a website that imitates Complainant’s official website, containing the NATWEST mark, and placing information about Complainant on an “About us” page.
Respondent’s <natwestoisplc.com> domain name is confusingly similar to Complainant’s NATWEST mark.
Respondent does not have any rights to or legitimate interests in the domain name <natwestoisplc.com>.
Respondent registered and uses the <natwestoisplc.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 to 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’s trademark registrations with the UKIPO, OHIM, and USPTO establish its rights to the NATWEST mark pursuant to Policy ¶ 4(a)(i). 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 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, so that it is sufficient that a complainant can demonstrate a mark in some jurisdiction).
domain name incorporates Complainant’s NATWEST
mark in its entirety, and merely adds the random letters “o,” “i,” and “s” and
the abbreviation “plc” and the generic top-level domain (gTLD) “.com.” The gTLD is immaterial to Policy ¶4(a)(i) analysis. See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
So too the addition of random letters and the abbreviation
“plc” (Standard abbreviation for “Public Limited Company”) fails to remove the disputed
domain name from the realm of confusingly similarity vis-a-vis Complainant’s
NATWEST mark pursuant to Policy ¶ 4(a)(i).
See Arthur Guinness Son & Co. (
The Panel therefore finds that Complainant has satisfied the evidentiary requirements of Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights to or legitimate interests in the disputed domain name. Once Complainant has made out such a prima facie case, the burden shifts to Respondent to show that it does have rights to or legitimate interests in its domain pursuant to the directions provided in 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. For the purposes of this sub paragraph, however, 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. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a contested domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant has presented a prima facie case, while Respondent, for its part, has failed to respond to the allegations of the Complaint. In these circumstances we are entitled to conclude that Respondent has no rights or interests cognizable under the Policy. Nonetheless, we will examine the record before us to determine whether there is any basis in the record for concluding that Respondent has such rights or interests under the tests set out in Policy ¶ 4(c).
We begin by
observing that, according to the pertinent WHOIS information, Respondent is operating
a website as “natwestoisplc c/o James
Lenton.” This is insufficient,
without more, to demonstrate that Respondent is commonly known by the <natwestoisplc.com> domain name under Policy ¶ 4(c)(ii). See Ultimate Elecs.,
Inc. v. Nichols, FA 195683 (Nat. Arb. Forum
We also note that there is no dispute as to Complainant’s assertion to the effect that the <natwestoisplc.com> domain name resolves to a website that fraudulently purports to be Complainant’s official website. It is evident from this that Respondent is attempting to pass itself off as Complainant, and that Respondent is using the website to capture personal information about Complainant’s customers via a process known as “phishing.” A phishing scheme is a practice “intended to defraud consumers into revealing personal and proprietary information.” Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004). This use of the disputed domain name 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 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 fraudulently to 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 thus finds that Complainant has satisfied its obligations under Policy ¶ 4(a)(ii).
The undenied conduct of Respondent in engaging in a “phishing” scheme, a scheme from which it is safe to presume that Respondent acquires illicit income, constitutes bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iv). 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 a 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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a disputed domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Similarly, for Respondent to engage in a phishing scheme in an attempt to pass itself off as Complainant by imitating Complainant’s official website demonstrates bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith); see also 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 that complainant’s customer’s account information, a respondent’s behavior evidenced bad faith use and registration of the domain name).
For these reasons, the Panel finds that Complainant has satisfied the provisions of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <natwestoisplc.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 8, 2008
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