National Westminster Banks
plc v. Vivek Bhondve
Claim Number: FA0901001241982
PARTIES
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 <natwest-netbank.com>, registered
with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
PANEL
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 9, 2009; the
National Arbitration Forum received a hard copy of the Complaint on January 12, 2009.
On January 9, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <natwest-netbank.com>
domain name is registered with Melbourne It,
Ltd. d/b/a Internet Names Worldwide and that Respondent is the current
registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide
has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide 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 January 14, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 3, 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@natwest-netbank.com by e-mail.
A timely Response was received and determined to be complete on February 2, 2009.
On February 16, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant National Westminster Bank plc (“Natwest”), founded in 1968, is a leading financial institution based in the United Kingdom that offers a full range of financial services, including personal and business banking services and credit cards, to more than 7.5 million personal customers and 850,000 small business accounts. Owned by The Royal Bank of Scotland Group plc (“RBS”), Natwest has more than 1,600 branches and is part of the fifth-largest financial services group in the world.
Complainant holds numerous trademark registrations for its “NATWEST” mark. The “NATWEST” mark has been registered with the United Kingdom Intellectual Property Office (“UKIPO”) since 1973, the United States Patent and Trademark Office (“USPTO”) since 1983, and the European Union Office for Harmonization in the Internal Market (“OHIM”) since 2006. Complainant uses the mark “NATWEST” in promoting and providing a wide range of financial services, including banking, credit cards, financial planning and insurance services throughout United Kingdom and abroad.
Complainant’s rights to the “NATWEST” mark have recently been recognized in prior UDRP panel decisions. See, e.g., National Westminster Bank plc v Louise Short, FA 1152426 (Nat. Arb. Forum April 4, 2008) (Complainant established rights in the NATWEST mark pursuant to Policy ¶ 4(a)(i) by virtue of its numerous trademark registrations for the mark in the UKIPO, OHIM and USPTO.); National Westminster Bank plc v nat west, FA 993119 (Nat. Arb. Forum July 9, 2007) (“Complainant has established rights in the NATWEST mark pursuant to Policy ¶ 4(a)(i) by virtue of its numerous trademark registrations for the mark around the world.”); National Westminster Bank plc v Gregory Buening c/o Gregory Buening, FA 871066 (Nat. Arb. Forum Jan 29, 2007) (“The Panel f[ound] that Complainant’s timely registration and extensive use of the NATWEST mark for over twenty years is sufficient to establish rights in the mark in accordance with Policy ¶ 4(a)(i).”).
An important part of Complainant’s
business today is its online banking business and services. Through Natwest’s secure online banking
gateway, accessed through its website at <natwest.com> or
<natwestonline.com>, customers can, among other things, view balances and
statements, pay bills, make payments, and move money between accounts. Complainant, or through its parent company,
RBS, also owns and uses the following domain names, among others:
<natwestbank.org>, <natwestbanking.com>,
<natwestonlinebanking.org>, <natwestnetwork.us> and <natwest-network.us>, all of which resolve to
Complainant’s main website at <natwest.com>.
As the foregoing indicates, and by
virtue of Complainant’s established and well-known presence in the financial
marketplace, its deep commitment to the provision of quality financial products
and services, and its significant commitment to the marketing and advertising
of its “NATWEST” mark, Complainant has built up substantial goodwill in, and
rights to the “NATWEST” mark and in marks derived therefrom.
Complainant contends that the domain name at dispute is confusingly similar to Complainant’s Mark, “NATWEST”, because it fully incorporates the mark and adds to it generic terms “net” and “bank” which correspond to services provided by the Complainant under the mark, a hyphen and a generic top-level domain name extension “.com”. According to Complainant a general rule under [ICANN] Policy ¶ 4(a)(i) is that a domain name is confusingly similar to a third-party mark where the domain name fully incorporates the mark and simply adds additional words that correspond to the goods or services offered by the third party under the mark. Further, the addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i). In this case, the Domain Name fully incorporates Complainant’s famous registered mark “NATWEST”, in which Complainant has built up substantial rights, and adds to it terms that describe Complainant’s business and a hyphen. According to Complainant these additions do not distinguish the Domain Name from Complainant’s Mark.
Additionally, Respondent’s use of the Domain Name to resolve to a website purporting to be Complainant’s official website further increases the likelihood of confusion. As of November 24, 2008, Respondent was using the Domain Name to divert Internet users to a website that was a fraudulent and alleged copy of Complainant’s website. Indeed, Respondent’s use of the Domain Name to resolve to a website that was a counterfeit of Complainant’s genuine website suggests that Respondent intended the Domain Name to be confusingly similar. In a similar case involving a domain name that resolved to a fraudulent copy of the complainant’s website, a panelist found that such use was evidence that the domain name was confusingly similar to the marks in question. As a result, Respondent’s use of the Domain Name to resolve to a fraudulent copy of Complainant’s genuine website is further evidence that the Domain Name was confusingly similar to Complainant’s Mark.
Accordingly, in light of the foregoing and given the fame of
Complainant’s Mark, Complainant asserts that it has met its burden of establishing
that the Domain Name is identical or confusingly similar to Complainant’s Mark.
Complainant
further contends that Respondent has no rights to or legitimate interests in
the Domain Name at dispute. Complainant has not licensed or otherwise authorized
Respondent to use its “NATWEST” mark, or any variation thereof. Respondent registered the Domain Name on
November 5, 2008. This was more than
thirty years after Complainant first registered the “NATWEST” mark. Any value the Domain Name may have is derived
solely by incorporating Complainant’s Mark.
Further Respondent has never used the Domain Name at dispute in
connection with a bona fide offering of goods or services nor made a
legitimate non-commercial or fair use of the Domain Name. To the contrary, as of November 24, 2008, the
Domain Name had resolved to a website that intentionally imitated Complainant’s
genuine website in virtually all respects, including imitations of
Complainant’s marks and logos, in an obvious effect to mislead users into believing
that they were in fact at Complainant’s website. For example, Complainant’s unsuspecting
customers and potential customers who are looking for Complainant’s site and
who arrived at this site with the “NatWest” banner and with links including
“Personal Banking”, “Private Banking”, “Business Banking”, “Commercial Banking”
which are similar services offered by
Complainant are deceived into believing that they have reached Complainant’s
site. Respondent was attempting to use
the deception of this counterfeit site presumably in furtherance of a
“phishing” or an illegal scheme.
According to Complainant such use assuredly does not constitute a use
in connection with a bona fide offering of goods and services, or any other
legitimate use or interest in the Domain Name. Indeed,
use which intentionally trades on the fame of another can not constitute a
‘bona fide’ offering of goods or services.
To conclude otherwise would mean that a Respondent could rely on
intentional infringement to demonstrate a legitimate interest, an
interpretation which is obviously contrary to the intent of the Policy. Accordingly, Respondent’s attempt to
capitalize on Complainant’s well-known mark by attracting Internet users to its
website that imitated Complainant’s genuine website in an attempt to pass
itself off as Complainant – likely in furtherance of some fraudulent activity –
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).
Given that Complainant has registered trademark rights in the distinctive, well-known “NATWEST” mark, any actual use by Respondent of the <natwest-netbank.com> domain name would infringe on Complainant’s trademark rights. As a matter of law, no use by Respondent of this Domain Name could be legitimate or in connection with a bona fide offering of goods or services. Accordingly, Respondent will not be able to use the Domain Name in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Further,
there is no indication that Respondent is commonly known by
“natwest-netbank.com.” To the contrary,
Respondent registered the Domain Name at dispute under the name “Vivek
Bhondve”, which has no apparent relation to Complainant’s Mark or to the Domain
Name at dispute. Moreover, the fact that Respondent was
using the Domain Name in a scheme imitating Complainant in a deliberate attempt
to deceive Complainant’s current and prospective customers, likely in
furtherance of some fraudulent activity, further supports the conclusion that
Respondent is not commonly known by the Domain Name. Hence, Respondent lacked rights and
legitimate interests in the Domain Name pursuant to Policy ¶ 4(c)(ii).
Finally, the Domain Name no
longer resolves to an active website.
The Registrant’s website has since been taken down, likely due to its
fraudulent activity. There is no evidence that Respondent is preparing to use the Domain
Name in connection with a bona fide offering of goods or services pursuant to
Policy ¶4(c)(i), or for a legitimate
noncommercial or fair use pursuant to Policy ¶4(c)(iii). This constitutes further evidence that
Respondent has no rights or legitimate interest in the Domain Name.
Finally
Complainant asserts that it has met its burden of proving that Respondent has
no rights or legitimate interests in respect to the Domain Name.
Complainant further contends that
the “NATWEST” mark upon which Complainant relies is a registered
trademark and well-known throughout the world.
In fact, Complainant’s Mark has been registered in the
Further
Respondent’s use of the Domain Name at dispute to resolve to a fraudulent
imitation of Complainant’s website constitutes evidence that Respondent
registered and used the Domain Name in bad faith pursuant to Policy ¶4(a)(iii). In this case, Respondent has demonstrated
its bad faith by using a confusingly similar domain name to resolve to a
website which contained duplications of Complainant’s name, marks and logos and
Complainant’s website in an attempt to pass itself off as Complainant and to
deceive Complainant’s customers and prospective customers in furtherance of
some improper, if not fraudulent activity.
Further, Respondent’s use of the Domain Name at dispute to operate a website purporting to be Complainant’s website in an effort to pass itself off as Complainant, evidently for commercial gain, is evidence of bad faith under ICANN Policy ¶4(b)(iv). Respondent purported to be associated with Complainant, a well-established financial institution, and it likely has registered and used the Domain Name as part of a potential “phishing” scam designed to trick Internet users into providing personal information to Respondent. This type of activity has been previously found to be indicative of bad faith registration and use. As discussed above, the Domain Name at dispute had linked to a website fraudulently imitating Complainant’s legitimate website, appropriating Complainant’s mark and logo and giving the impression that it was associated with or sponsored by Complainant. The purpose of Respondent’s website was to confuse and mislead Complainant’s existing and potential customers who were looking for Complainant’s products and services. The effect of Respondent’s registration and use of the Domain Name was to interfere with Complainant’s business and goodwill, likely for Respondent’s own commercial gain. Accordingly, in this case, Respondent’s use of the Domain Name to attract Internet users to its website, likely for his own commercial gain, is evidence of bad faith registration and use.
Finally, Respondent’s
current passive holding of the Domain Name, which fully incorporates Complainant’s
trademark identically and in its entirety, is also evidence of bad faith. More specifically, inaction in relation to a
domain name registration where the domain name can only sensibly refer to the
Complainant, as in this case, constitutes bad-faith use of the domain name
under ICANN Policy ¶4(b). Respondent is using the Domain Name in bad
faith because the Domain Name contains, in its entirety, Complainant’s
trademark which has long been in substantial use, has strong reputation and is
well-known, and can only sensibly refer to the Complainant, does not resolve to
an active website, and because there is no evidence of any actual or
contemplated good faith basis for Respondent’s use of the Domain Name.
For these reasons, Complainant
asserts that it has met its burden of proving that the Domain Name was
registered and is being used in bad faith.
In its e-mail dated January 24, 2009, Respondent stated the following:
“This is with reference to the complaint transmittal
received by me yesterday i.e. January 23, 2009.
After going through all the details as stated in the
notice I hereby put forth the facts in front of you:
1.
Firstly I have never
authorized nor participated in the transaction or registration as stated in the
complaint.
2.
Secondly the date of
transactions coincides with the dispute I have with my credit card company of
fraudulent use of my credit card without my knowledge. These transactions were
done in the period when I did not possess the credit card and the card was with
my bank and or in transit. I would never know the card number or other details
to authorize any transactions.
3.
Thirdly as mentioned
in the details of respondent information my name, address and telephone number
are correct. This information is available with all credit card company
databases. But I do not own the e-mail id mentioned. Probably this is the id of
the person who has fraudulently used my information to register with the domain
name.
I’m attaching all the relevant details as far as the
disputed transactions follow-up I’m having with my credit card bank. The
reference number is quoted and it is still under investigation. I would request
you to withdraw this complaint against me and work in liaison with my credit
card bank and cyber crime authorities to apprehend the right person and file a
suit against him.
Awaiting a positive response to the above. Please accept my support for solving the dispute at the earliest.
Thanks
& Regards,”
In its e-mail dated January 30, 2009, Respondent additionally stated
the following:
“Dear Sir,
This is with reference to my conversation with Bess S.
Hilliard, representative of Troutman Sanders LLP. I have been asked to approach
the forum for further suggested action on the reference subject.
I will throw some light on the subject in brief.
1. January 23rd 2009 I received a complaint notice from Troutman
Sanders for having registered domain name similar to their client Natwest Bank.
For which I had replied to them on 24th January 2009. You can find it below this
mail.
2. Later Miss Bess gave me a call to verify the facts and suggested
to put this situation in front of you to come up with suggestive action to be
taken ahead.
3. Recollecting the data I had with me, the registration was done by
some unidentified person using my personal details without my authorization.
The transactions remain disputed with my credit card bank and the matter is
under investigation.
4. I have attached all the relevant mails of the interaction with my
credit card bank.
5. The fact is the transactions were done when the credit card bank
had dispatched the card and was in transit. There was no possible way that I
would have known the number of the card to authorize any transaction.
Please go through the mails for further investigation. I
have also addressed the mail to the Pune and Mumbai cyber crime investigation
branch for local support.
I don’t want to get involved into any legal complications
that would further burden me financially and mentally. Please suggest further
course of action for the subject matter. Also I have requested Troutman Sanders
to withdraw the complaint against me.
I’m waiting for a positive reply on the same from you.
Thanks & Regards,”
In its e-mail dated January 31, 2009, Respondent finally
stated:
“With reference to your mail, I confirm that this is my
complete response. You may consider this as a non-compliant response. I hope
this will not burden me with any financial dues towards you for further
process.”
FINDINGS
The Panel finds that:
1.
the
Domain Name <natwest-netbank.com> is
confusingly similar to the Complainant’s mark,
2.
the
Respondent has not established any right or legitimate interest in the Domain
Name <natwest-netbank.com
> and
3. the Respondent has registered and is using
the Domain Name < natwest-netbank.com > in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Although Respondent has provided a Response that
was deficient because a hard copy of the Response was not received before the
Response deadline, the Panel decides to consider Respondent’s submission. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb.
21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies
would be an extreme remedy not consistent with the basic principles of due
process. . . ."); see also J.W. Spear & Sons PLC v. Fun League
Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where
the respondent submitted a timely response electronically, but failed to submit
a hard copy of the response on time, “[t]he Panel is
of the view that given the technical nature of the breach and the need to
resolve the real dispute between the parties that this submission should be
allowed and given due weight”).
Complainant asserts rights to the NATWEST mark, which it has registered numerous times with the United Kingdom Intellectual Property Office (“UKIPO”) (i.e. Reg. No. 1,021,601 issued in 1975) as well as other governmental trademark authorities. Many previous panels have concluded that these trademark registrations establish Complainant’s rights in the NATWEST mark pursuant to Policy ¶ 4(a)(i), and the Panel makes such a finding in the instant case as well. See Nat’l 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 & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <natwest-netbank.com> domain name contains the NATWEST mark in its entirety and adds a hyphen, the term “netbank,” and the generic top-level domain “.com.” The Panel determines Complainant’s NATWEST mark remains the dominant portion of the disputed domain name, and that the additions do not detract from this overall impression. The Panel further notes that the additions of the hyphen and “.com” are generally considered irrelevant. Based on these reasons, the Panel concludes that Respondent’s <natwest-netbank.com> domain name is confusingly similar to Complainant’s NATWEST mark pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Complainant must show that the Respondent has no rights or
legitimate interests in respect of the disputed domain name. The Respondent
does not assume the burden of proof, but may establish a right or legitimate
interest in a disputed domain name by demonstrating in accordance with
paragraph 4(c) of the Policy:
(a) He
has made preparations to use the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services prior
to the dispute;
(b) He is commonly
known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make
a legitimate, non-commercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); 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 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.”); 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 is not commonly known by the <natwest-netbank.com> domain name, and notes that the WHOIS
information identifies Respondent as “Vivek Bhondve.” The Panel therefore finds that Respondent
cannot establish rights or legitimate interests in the <natwest-netbank.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat.
Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by
the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in
the record); see also Instron Corp. v.
Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the
respondent was not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of
the disputed domain name and there was no other evidence in the record to
suggest that the respondent was commonly known by the domain names in dispute).
According to Complainant,
Respondent’s <natwest-netbank.com> domain name previously resolved to a website that imitated Complainant’s
official website with displays of Complainant’s marks and logos. This website also allegedly encouraged
Internet users to divulge confidential information. The Panel determines that Respondent was
attempting to pass itself off as Complainant and phish for customers’ sensitive
personal information, which would fail to constitute a bona fide offering of goods or services or a legitimate
noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Kmart
of
Complainant states that
Respondent’s <natwest-netbank.com> domain name does not currently resolve to an active website. The Panel considers this to be additional
evidence that Respondent lacks rights and legitimate interests in the <natwest-netbank.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Thermo Electron
Corp. v. Xu, FA 713851 (Nat.
Arb. Forum July 12, 2006) (finding that the respondent’s
non-use of the disputed domain names demonstrates that the respondent is not
using the disputed domain names for a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP
Int’l, Inc. v. Baker Enters., FA 204112
(Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's
[failure to make an active use] of the domain name does not establish rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent was attempting to commercially gain by passing itself off as Complainant by prominently displaying Complainant’s marks and logos, and hosting a website virtually identical to Complainant’s website. The Panel determines that this would have likely confused Internet users as to the source or affiliation of the <natwest-netbank.com> domain name and the resolving website. The Panel further determines that this constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Panel also determines that Respondent’s efforts to profit from this venture by phishing for customers’ confidential information provides sufficient grounds to find bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Complainant notes that
Respondent is not actively using the <natwest-netbank.com> domain name.
The Panel finds this to be additional evidence that Respondent
registered and is using the <natwest-netbank.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to
make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see
also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO
Nov. 28, 2000) (finding that merely holding an infringing domain name without
active use can constitute use in bad faith).
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 <natwest-netbank.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: March 2, 2009
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