Coutts & Company v. Jane Doe
Claim Number: FA0902001247304
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@coutt--online.com 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 March 13, 2009, an Order to Stay the Administrative Proceeding was
granted by the FORUM and the proceedings were stayed for a time period of
forty-five (45) days.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
B. Respondent
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 postmaster@coutt--online.com by e-mail. Therefore, notice of this complaint
was mailed to Respondent’s address and to the e-mail <davz87@yahoo.com>
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 <davz87@yahoo.com> and
postmaster@coutt--online.com and failed to respond.
Therefore, pursuant to UDRP rules 5(e), this
Panel will decide the dispute based upon the Complaint.
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.
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.").
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 <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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