National Westminster Bank plc v. tega doo c/o etehch
Claim Number: FA0901001244902
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 <ntwestbkonline.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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
30, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
February 19, 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 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.
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 <ntwestbkonline.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <ntwestbkonline.com> domain name.
3. Respondent registered and used the <ntwestbkonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a financial institution that provides personal and business banking services, including credit cards and loans. Complainant has over 7.5 million personal customers and 850,000 small business accounts. Complainant has registered its NATWEST mark with: (1) the United Kingdom Intellectual Property Office (“UKIPO”) on January 2, 1975 (Reg. No. 1,021,601); (2) the United States Patent and Trademark Office (“USPTO”) on June 7, 1983 (Reg. No. 1,241,454); and (3) the European Union Office of Harmonization for the Internal Market (“OHIM”) on April 18, 2006 (Reg. No. 4,319,067). Complainant operates its main website from its <natwest.com> domain name.
Respondent registered the <ntwestbkonline.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.
The Panel finds that Complainant’s registrations of the
NATWEST mark with the USPTO, UKIPO, and OHIM each demonstrate Complainant’s
rights in the mark under Policy ¶ 4(a)(i).
See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum
Respondent’s <ntwestbkonline.com> domain name contains Complainant’s NATWEST mark with the following changes: (1) omission of the letter “a” from the NATWEST mark; (2) the addition of generic and/or abbreviated terms, such as “online” and “bk” (i.e. short for “bank”); and (3) the generic top-level domain “.com.” The Panel finds that the addition of a top-level domain is irrelevant since every domain requires such an element. Moreover, both the removal of one letter from a mark and the addition of descriptive terms relating to Complainant’s business fail to create a meaningful distinction, especially when, as here, the mark nevertheless remains the dominant element. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed
domain name. Based upon the allegations
made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶
4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the
Complaint, the Panel may presume that Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
However, the Panel in its discretion chooses to examine the record to
determine whether Respondent has any rights or legitimate interests
pursuant to the factors outlined in Policy ¶ 4(c). See
AOL LLC v. Gerberg, FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v.
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 Broadcom
Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
There is no
evidence within the record to suggest that Respondent is commonly known by the
disputed domain name. The WHOIS
information lists Respondent as “tega doo
c/o etehch,” and Complainant
does not allege any right or permission on behalf of Respondent to use
Complainant’s mark in any fashion. The
Panel therefore finds that Respondent is not commonly known by the disputed
domain name under 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
Respondent’s disputed domain name resolves to a website that
mimics Complainant’s business website in form.
Respondent thereby seeks to pass itself off as Complainant, and
presumably profit from this fraudulent diversion of Internet users. The Panel finds that this cannot be found as
a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii).
This fraudulent diversion of Internet users for commercial gain is also advanced by the deceptive use of the resolving website to trick Internet users into divulging their personal and private information to Respondent, believing in fact that they are communicating with Complainant. This is a textbook definition of “phishing,” and provides sufficient additional evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See 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); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking the complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has sought to pass itself off as Complainant by rendering the resolving website into an imitator of Complainant’s website. The Panel finds that Respondent has created a likelihood of confusion as to Complainant’s source, affiliation, and endorsement of the disputed domain name and corresponding website. Clearly, Respondent is seeking to commercially benefit from this fraudulent use of the confusingly similar disputed domain name. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Respondent’s engagement in phishing
constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909
(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 <ntwestbkonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 10, 2009
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