National Westminster Bank plc and The Royal Bank of Scotland Group plc v. Tripsteps Founder
Claim Number: FA0812001239621
Complainants are the National
Westminster Bank plc and The Royal
Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP,
REGISTRAR
The domain names at issue are <natwestlocations.com> and <royalbanklocations.com>, registered with Godaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainants submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2009 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@natwestlocations.com and postmaster@royalbanklocations.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
Complainants request that the domain names be transferred from Respondent to Complainants.
A. Complainants make the following assertions:
1. Respondent’s <natwestlocations.com> domain name is confusingly similar to the NATWEST mark owned by Complainant National Westminster Bank plc and Respondent’s <royalbanklocations.com> domain name is confusingly similar to THE ROYAL BANK OF SCOTLAND mark owned by Complainant The Royal Bank of Scotland Group plc.
2. Respondent does not have any rights or legitimate interests in the <natwestlocations.com> and <royalbanklocations.com> domain names.
3. Respondent registered and used the <natwestlocations.com> and <royalbanklocations.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant The Royal Bank of Scotland Group plc is the
owner of Complainant National Westminster Bank plc. Complainants have submitted sufficient
evidence to demonstrate this relationship between the two entities. Therefore, the Panel finds that the filing of the instant
Complaint was proper, and Complainants throughout this decision will
collectively be referred to as “Complainant.”
Complainant is one of the world’s leading financial
institutions and service groups, and offers a wide range of personal and commercial
financial services. Complainant first
applied for a trademark registration for the NATWEST mark on December 3, 1973
with the United Kingdom Intellectual Property Office (“UKIPO”), and the
application was subsequently approved (Reg. No. 1,021,601). Complainant first applied for a trademark
registration for the THE ROYAL BANK OF SCOTLAND mark on
Respondent registered both of the disputed <natwestlocations.com> and <royalbanklocations.com>
domain names 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’s respective trademark registrations with the
UKIPO for the NATWEST and THE ROYAL BANK OF SCOTLAND marks sufficiently convey
rights in the marks to Complainant for the purposes of Policy ¶ 4(a)(i). Indeed,
previous panels have made the same finding with respect to these same
marks. See National
Westminster Bank plc v. Westbrom, FA
1008190 (Nat. Arb. Forum July 25,
2007) (“The Panel finds Complainant’s registration of its NATWEST mark with the
UKIPO sufficiently establishes its rights in the mark pursuant to Policy ¶
4(a)(i).”); see also Royal Bank of Scot. Group
plc v.
Respondent’s <natwestlocations.com> domain name contains Complainant’s NATWEST
mark in its entirety and adds the generic word “locations” and the generic
top-level domain “.com.” It is
conceivable to believe that Internet users may be looking for the locations of
Complainant’s places of business when entering the disputed domain name, so the
addition of this word only heightens the confusing similarity with Complainant’s
NATWEST mark. Because the addition of
“.com” is irrelevant to this analysis, the Panel concludes that Respondent’s <natwestlocations.com>
domain name is confusingly similar to Complainant’s NATWEST mark pursuant
to Policy ¶ 4(a)(i).
See American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb.
Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain
name confusingly similar to the complainant’s AMEX mark because the “mere
addition of a generic or descriptive word to a registered mark does not negate”
a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
Respondent’s <royalbanklocations.com> domain
name contains a portion of Complainant’s THE ROYAL BANK OF SCOTLAND mark, and
makes the same additions of “locations” and “.com” as the other disputed domain
name. The Panel will refrain from
repeating its previous discussion concerning these two additions, and finds
that they add to the confusing similarity of the <royalbanklocations.com>
domain name. Therefore, the lone
difference remains the removal of the words “the” and “of
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
As a preliminary matter, the Panel finds that Complainant,
as required by Policy ¶ 4(a)(ii), has established a prima facie case that Respondent lacks rights and legitimate
interests in the <natwestlocations.com> and <royalbanklocations.com> domain names. Thus, the burden of proof shifts to
Respondent, though Respondent has not responded to the Complaint. The Panel therefore presumes that Respondent
lacks all rights and legitimate interests, but nevertheless chooses to examine
the record against the applicable Policy ¶ 4(c) elements before making a final
determination. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also
Respondent is using the <natwestlocations.com> and <royalbanklocations.com>
domain names to display various hyperlinks, some of which offer services in
direct competition with Complainant.
Respondent presumably receives click-through fees for each redirected
Internet user that clicks on one of these links. Respondent’s attempt to profit by using
confusingly similar variations of Complainant’s marks in the disputed domain
names is not indicative of either a bona
fide offering of goods or services or a legitimate noncommercial or fair
use. The Panel accordingly finds that
Respondent lacks rights and legitimate interests in the <natwestlocations.com> and <royalbanklocations.com>
domain names pursuant to Policy ¶¶ 4(c)(i) and (iii). See Jerry Damson, Inc. v.
Complainant contends that Respondent is not commonly known
by the <natwestlocations.com> and <royalbanklocations.com> domain names, and the
Panel agrees. The WHOIS information
identifies Respondent as “Tripsteps Founder,” and the Panel has no other
information to rely upon in the record with respect to this element of the
Policy. Therefore, the Panel concludes
that Respondent is not commonly known by the <natwestlocations.com> and <royalbanklocations.com>
domain names, and thus lacks rights and legitimate interests pursuant to Policy
¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Some of the links appearing on the website resolving from
the <natwestlocations.com>
and <royalbanklocations.com> domain names promote services
that compete with Complainant’s business.
If Internet users click through to the websites of competing companies,
Complainant’s business will be negatively affected. This diversion and potential for disruption
presents evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007)
(finding that the respondent registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved
to a website that displayed commercial links to the websites of the
complainant’s competitors in the financial services industry); see also David Hall Rare Coins v.
Respondent’s resolving websites also have the potential to create a likelihood of confusion as to their affiliation or sponsorship. This confusion has been created for Respondent’s own commercial gain, which stems from profiting off of the goodwill associated with Complainant’s businesses and marks. The Panel therefore concludes that Respondent registered and is using the <natwestlocations.com> and <royalbanklocations.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
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 <natwestlocations.com> and <royalbanklocations.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 10, 2009
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