Coutts & Company v. Jane Doe
Claim Number: FA0902001247304
Complainant is Coutts & Company (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coutt--online.com>, registered with Wild West Domains, Inc.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 13, 2009.
On February 12, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <coutt--online.com> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 February 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 9, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 9, 2009. An additional e-mail from Respondent was received on March 4, 2009 and considered in the drafting of this decision.
On April 21, 2009, an Order to Lift Stay of Arbitration was granted by the FORUM and the Stay was lifted allowing the case to proceed.
On April 23, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
The trademark at issue in this dispute concerns “COUTTS,” Complainant’s registered trademark. Complainant contends that it is known as “Coutts and Company” and was founded in 1822 and that it currently exists as a private banking arm of the Royal Bank of Scotland (RBS) owning multiple trademarks worldwide for the “COUTTS” mark. Complainant uses this mark in connection with banking, credit, financial planning and wealth protection services in the U.K and abroad. Complainants owns the websites located at <coutts.com>, <coutts.co.uk>, <couttsandcompany.net> and <couttsonlinebanking.co.uk>. Complainant contends that is has built up substantial goodwill in Complainant’s mark.
Complainant contends that: (1) Respondent’s domain name, <coutt--online.com>, registered on October 31, 2008, is identical or confusingly similar to Complainant’s mark; (2) Respondent has no rights or legitimate interests in respect to the domain name <coutt--online.com>; and (3) the domain name, <coutt--online.com>, was registered and is being used in bad faith.
1. Identical or Confusingly Similar
Complainant asserts that the Domain Name is confusingly similar to Complainants mark “COUTTS,” because it fully incorporates Complainants mark with the following distinctions, (1) the omission of the letter “s”, the addition of two hyphens, and the addition of the generic word “online.”
Complainant also contends that Respondent’s use of the Domain Name further increases the likelihood of confusion because Respondent’s website misleads users into believing that Respondent’s website is Complainant’s official website or related to the latter. The Domain Name resolves to a fraudulent imitation of Complainant’s website that utilizes Complainant’s name, marks, logos, similar fonts and requests users to enter personal account information.
2. Respondent has no legitimate Rights
Complainant asserts that it is well-known under the “COUTTS” mark. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name because it is not affiliated with Complainant, nor has Respondent ever used the Domain Name in connection with a bona fide offering of goods and services. Respondent has also not used the Domain Name in connection with a legitimate non-commercial or other fair use.
Complainant asserts that until December 16, 2008, Respondent was using the Domain Name to divert Internet users to a website misappropriating Complainant’s name, mark and logos and that Respondent’s Domain Name went as far as to display the statement “Welcome to the official site of Coutts.” Complainant asserts that Respondent was involved in a fraud scheme with respect to the use of the Domain Name. As such, Complainant asserts that Respondent’s actions do not constitute a bona fide offering of goods and services.
Finally, Complainant argues that there is no evidence indicating that Respondent is known by the name <coutt--online.com>.
3. Bad Faith Registration
Complainant notes that Complainant is well-known as “COUTTS” throughout
the world, and that its mark has been registered in the
Additionally, Complainant argues that Respondent’s use of the website to obtain the personal information of Complainant’s current and prospective customers constitutes evidence that the website was registered in bad faith.
Finally, Complainant asserts that Respondent’s attempt to associate the Domain Name with Complainant for fraudulent commercial gain will likely result in damage to Complainant and is therefore also evidence of bad faith registration of the Domain Name.
Respondent contends that it was the victim of identity theft in October 2008 and that a “third” party has registered the domain name using Respondent’s postal address and name. Respondent expressed concern regarding the protection of its personal information and other data. Therefore, Respondent does not contend any of the factual allegations of Complainant.
PRELIMINARY FINDINGS – IDENTITY THEFT
This Panel has the discretion to decide whether or not Respondent has made a sufficient showing of identity theft for purposes of this dispute. Respondent has submitted a Response indicating the identity theft of its credit card information, and has submitted a “Schedule of Fraudulent Transactions” dating from October 18 until November 10, 2008. Furthermore, as evidenced by Respondent’s submission Brinkster, the provider of the Domain Name, <coutt--online.com>, has marked the account fraudulent and closed it. This Panel finds that sufficient evidence of identity theft has been presented and therefore holds that Respondent has been the victim of identity theft.
Moreover, this Panel chooses to redact Respondent´s personal information from the decision to prevent the further victimization of Respondent. See Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl.com>, FA 453727 (Nat. Arb. Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
Furthermore, this Panel will continue with the analysis of this dispute pursuant to the ICANN policy. Notice of this dispute was properly served 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. Therefore, notice of this complaint was mailed to Respondent’s address and to the e-mail <firstname.lastname@example.org> listed under administrative and technical contacts. Respondent has noted that this is not its e-mail, but likely that of, the individuals who stole its identity. This e-mail was provided by the party that registered the Domain Name in dispute. As a result, this Panel presumes that the Registration Respondent received notice of this suit via e-mail at <email@example.com> and firstname.lastname@example.org and failed to respond.
Therefore, pursuant to UDRP rules 5(e), this Panel will decide the dispute based upon the Complaint.
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.
Complainant asserts its rights in the COUTTS mark through its numerous registrations with governmental trademark authorities worldwide, including the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,300,775 issued September 8, 1989). Based on the evidence of the latter mentioned, this Panel finds that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See 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).”).
Additionally, Complainant contends that the <coutt--online.com> Domain Name is confusingly similar to Complainant’s COUTTS mark because it contains the mark in full with the following changes: (1) adding two hyphens; (2) adding the generic word “online;” (3) removing the “s” from COUTTS; and (4) adding the generic top-level domain “.com.” This Panel finds that Internet users would have difficulty in distinguishing between the two marks and that the changes are not sufficient to thwart confusion. Therefore this Panel finds that the Domain Name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Registration Respondent lacks rights and a legitimate interest in the Domain Name and then the burden shifts to Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”). Complainant has submitted evidence that the Registration Respondent registered the Domain Name in October 2008 and that the Domain Name resolves around information pretending to be that of Complainant. This Panel finds that this is a sufficient prima facie showing pursuant to the Policy and the burden now shifts to the Registration Respondent to prove otherwise.
Given that there has been no response, this Panel must rely on the evidence submitted by Complainant. Complainant supplied evidence that the disputed Domain Name resolves to a website that imitates Complainant’s own website, complete with pseudo-login components presumably designed to obtain the private information of Internet users. Complainant also submitted as evidence a screenshot of the Disputed Domain Name. This Panel finds that in doing so, Registration Respondent attempted to pass itself off as Complainant, and therefore does not possess a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Given that the true identity of Registration Respondent is unknown, this Panel infers that the Registration Respondent is not commonly known by the disputed domain name. Finally, Complainant contends that Respondent has no license or permission to utilize Complainant’s mark in any fashion. Therefore, this Panel finds that Registration Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s allegedly confusingly similar Domain Name redirects Internet users to a corresponding website that imitates Complainant’s website for Respondent’s commercial gain. A review of the screen shots of the Domain Name website and the website of Complainant reveal a remarkable similarity between the two. The evidence also reveals that the Domain Name website, appears to be the web page of Complainant, and requests users´ personal account information. This Panel finds that Registration Respondent has sought to pass itself off as Complainant for commercial gain via a likelihood of confusion as to the source of the disputed Domain Name. Therefore, this Panel finds evidence that the Domain Name was registered in bad faith 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.").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coutt--online.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: May 7, 2009
National Arbitration Forum
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