Coutts & Company v. Mr. Philip Mano
Claim Number: FA0902001247305
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 <coutts-uk.biz>, 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.
Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A Response was received on
On 17.03.09, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
· It is also the contention of the Complainant that the Company holds numerous trademark registrations for its “COUTTS” mark and that their Mark “COUTTS” has been registered with the United Kingdom Intellectual Property Office (“UKIPO”) since 1989, copy whereof is annexed as Exhibit-C, Tab-1), with the United States Patent and Trademark Office (“USPTO”) since 1997, copy whereof is annexed as Exhibit-D, Tab-2, and with the EU Office for Harmonization in the Internal Market (“OHIM”) since 2006, copy whereof is annexed as Exhibit-E, Tab-3. In this regard the Complainant has annexed a spreadsheet as Exhibit-F, Tab-4, listing the Complainant’s registrations and pending applications worldwide for Complainant’s Mark “COUTTS”. Complainant has contended that it uses the mark in promoting and providing, amongst other things, for banking services, credit services, financial planning and wealth protection services directly or through its affiliates throughout United Kingdom and abroad.
· It is further the contention on behalf of the Complainant that an important / considerable part of its business today is through its online banking business and services. It contends that by its secure online banking service, accessed through its website at <coutts.com> or <coutts.co.uk>, customers can, amongst other things, view their balance and the transactions, make payments and move money between accounts or to any account in the UK.
(i) <couttsandcompany.net> and
To substantiate its claim, the Complainant has annexed as Exhibit D, the WHOIS registration records.
· While relying upon the following decisions of the National Arbitration Forum, the Complainant claims that its rights to the mark “COUTTS” have recently been recognized by the National Arbitration Forum :
(i) Coutts & Company v. Mohammed Sumali - FA 995629 (July 11, 2007) - Complainant has established its rights in the mark “COUTTS” pursuant to Policy 4(a)(i) through registration of the mark with the UKIPO and USPTO.
& Co. v. Itzahau
(iii) Coutts & Company and National Westminster Bank plc v. Webland Concepts c/o Dan Halman - FA1013539 (Aug. 1, 2007) - The Panel finds that Complainant’s timely registrations of the marks “COUTTS” and “NATWEST” with the USPTO establish their rights in the Marks pursuant to Policy 4(a)(i);
Complainant further alleges that
the domain name <coutts-uk.biz> is confusingly similar to Complainant’s mark
“COUTTS” because it incorporates the
mark fully and merely adds a hyphen, the geographic indicator “
· Respondent has provided a Response. This response is a handwritten one page letter dated 20.2.09 sent under the name and signature of one P.Mano – impleaded as respondent in the present Complaint. This hand written response is to the effect of disowning the disputed domain name registration and in fact the respondent has stated that someone else must have used his detailed fraudulently. He has further stated that even his RBS credit card has been used fraudulently.
· The NAF has informed the Panel that this hard copy of the response is delayed and further submitting the response only in a hard copy format is not in compliance with ICANN Rule 5(a).
The Panel finds that the domain name <coutts-uk.biz> deserves to be transferred to the Complainant and the Respondent is not entitled to use this domain name. Even otherwise, the respondent has informed the NAF that someone else must have used his details fraudulently and his RBS credit card has also been used fraudulently. In fact, in the light of the response of the respondent – no further discussion or examination is required in the present Complaint. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under : -
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.
· The Panel is unambiguously of the view that Respondent’s uses fully Complainant’s Mark and has merely added a hyphen, a geographic indicator and a generic top level domain name extension to make its Domain Name appear to be distinct. The incorporation of Complainant’s Mark in Respondent’s domain name is the dominant element in the Domain Name and such a use/incorporation of complainant mark in respondent’s domain name gives an impression of sponsorship, affiliation or association of Respondent’s domain name with Complainant. Prima facie, the Respondent appears to have chosen this Domain Name for that very reason and, therefore, Respondent’s Domain Name is confusingly similar to Complainant’s mark.
In support of its argument that the inclusion of a hyphen or a generic top-level domain name extension within a disputed domain name is “inconsequential to a[n] [ICANN] Policy 4(a)(i), the Complainant has relied upon the decision of National Arbitration Forum (March 13, 2008) in WorldPay Limited v. Farris - FA 1142584 - holding the respondent’s mark <worldpay-shipping.com> to be confusingly similar to the mark of the Complainant “WORLDPAY”, despite addition of a hyphen and a generic top-level domain name extension, because such minor additions fail to create a “distinct domain name ......... capable of overcoming a confusingly similar analysis as set forth in Policy 4(a)(i).
The Panel finds that there is strength in the Complainant’s
argument that the previous Administrative Panels and Arbitrators have
repeatedly concluded that a domain name that appropriates another party’s
trademark with only slight variations, such as the addition of a geographic
indicator, remains confusingly similar to the other party’s mark. It is
apparent that Respondent’s Domain Name incorporates Complainant’s Mark
completely and abbreviates the generic and/or geographic term “United Kingdom”
as “uk” and has added it specifically which corresponds to the location where
Complainant conducts its business and also to the location of Complainant’s
global headquarters. However, Respondent’s addition of the geographic indicator
(i) Nike, Inc. v. Jung - Case No. D2000-1471 (WIPO, Jan. 11, 2001) - <nike-europe.com> and <nikeeurope.com> were confusingly similar to the complainant’s “Nike” mark, noting that “geographical additions do not alter the underlying meaning of a domain name”.
(ii) Fluke Corp. v. Cullum - FA 0267476 (National Arbitration Forum, June 4, 2004) - holding that the domain names <fluke-uk.com> and <fluke-uk.net> of the respondent were confusingly similar to the complainant’s mark because the domain names contained in the complainant’s mark are in its entirety and has merely added “the common abbreviation for the United Kingdom, namely ‘UK,’ which signifies the geographic location where [the Complainant engage[d] in commercial activity under its ............ mark”);
(iii) The Royal Bank of Scotland Group plc v. Domain Admin - FA 1126039 (National Arbitration Forum, Feb. 14, 2008) holding that the domain name <rbs-online-uk.com> is confusingly similar to Complainant’s “RBS” mark despite the additions of the geographic identifier “uk,” along with hyphens and the generic term “online” to Complainant’s “RBS” mark);
· This Panel had also recently decided the case being Endurance Specialty Holdings Ltd. v. Insight Claim No.FA0901001242362, inter-alia, observing and holding as under : -
“………Complainant contends that Respondent’s <endurancere.com> domain name is confusingly similar to its ENDURANCE mark. The <endurancere.com> domain name differs from Complainant’s mark in two ways: (1) the letters “re” have been added to the end of the mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. The Panel finds that if two letters are added to mark, the resulting domain name is still confusingly similar to the mark. The Complainant has referred to Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks. The Complaint has also referred to the case of Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), holding that “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy 4(a)(i) analysis.”. The Complainant has referred to the case of Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002), finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”. The Panel also finds that adding a gTLD to a mark also fails to sufficiently distinguish a domain name from that mark, because every domain name must include a top-level domain. The Complainant has also relied upon the case of Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark. Therefore, the Panel finds that these changes to the ENDURANCE mark do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s <endurancere.com> domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy 4(a)(i)……………………….”
Panel finds that Respondent’s use of the Domain Name further increases the
likelihood of confusion. Respondent used
the Domain Name to resolve to a website where Internet users would be misled to
believe that the website belonged to Complainant, or that it was the official
website of Complainant. As of January
27, 2009, the Domain Name resolved to a fraudulent imitation of Complainant’s
website. The Complainant has relied upon the decision of WIPO Case No. D2004-0739 (Oct. 18, 2004) in - The Gaming Board for
· The Panel in the facts and circumstances of the case, is clearly of the view that Respondent has no rights to or legitimate interest in the Domain Name. It further observes that the Complainant has not licensed or otherwise authorized Respondent to use its mark “COUTTS” or any variations thereof to anyone. From the document annexed as EXHIBIT-A it is observed that Respondent has registered the disputed Domain Name on January 19, 2009 only, i.e. after more than nineteen years when the Complainant first registered its mark “COUTTS” in 1989. (EXHIBIT C, Tab 2.)
· The Panel observes that under the ICANN Policy, when a complainant demonstrates rights in a domain name, the burden shifts to the respondent to prove that it has rights in the name. ICANN Policy 4(c)(i)–(iii) provides three situations under which a respondent would have rights in a domain name:
Respondent did not establish any of these situations and, therefore, could not demonstrate any rights or legitimate interests in the Domain Name.
The Panel has observed that Respondent has never
used the Domain Name “COUTTS” in connection with a bona fide offering of
goods or services nor made a legitimate non-commercial or fair use of the
Domain Name. On the contrary, it has
used the Domain Name to operate a website that substantially imitated the login
page of Complainant’s website at <coutts.com>
and that apparently was being used in an effort to fraudulently acquire
personal information from Complainant’s customers or potential customers.
Specifically, the website prominently displayed the statement, “Welcome to the
official site of COUTTS,” along with duplications of Complainant’s “COUTTS”
logo and word mark, thereby giving a deception that Respondent is not only
associated or affiliated with Complainant’s business, but that Respondent is
the Complainant. For example, Respondent’s website contained a field for Complainant’s
unsuspecting customers and potential customers to enter an “Access
Code,” along with a “Login” button.
· The Panel is of the clear view that such a use does not constitute a bona fide offering of goods and services, or any other legitimate use or interest in the domain name. To come to the above conclusion, the Panel has taken into consideration the following decisions relied upon by the Complainant : -
(iii) ABB Asea Brown Boveri Ltd. v. SWX Teleinformatics Servs. - D2007-0082 (WIPO, April 2, 2007) holding that the Respondent has failed to show rights or legitimate interests in the domain name when Respondent was using the domain name to divert users to its own website where it pretended to be affiliated with the complainant by incorporating the complainant’s trademark in the domain name and copied the complainant’s corporate web design for its own commercial gain);
(iv) The Royal Bank of Scotland Group plc v. PrivacyProtect.org - FA 1126045 (National Arbitration Forum, Feb. 14, 2008) holding that “The Panel finds Respondent’s attempt to pass itself off as Complainant and phish for customers’ confidential information is neither a use in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy 4(c)(iii)”.
Accordingly, Respondent’s attempt to capitalize on Complainant’s well known mark by attracting Internet users to its website, imitating Complainant’s genuine website and soliciting personal information, 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).
· The Panel further observes that given the fact that the Complainant has trademark rights in the distinctive, well-known “COUTTS” mark, any use by Respondent of the Domain Name incorporating the entire mark of the Complainant 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. Such a use by the respondent is in disregard of the decisions - Broadcom Corp. v. Ayers Int’l Group, Inc., FA 112562 (Nat. Arb. Forum July 24, 2002) holding that “any actual use by Respondent of the disputed domain name would be an infringement of Complainant's statutory rights in its BROADCOM trademark”); and also the decision in the case of Deutsche Bank Aktiengesellschaft v N.Y. TV Tickets Inc., WIPO Case No. D2001-1314 (Feb. 12, 2002) whereby it has been held that “given the notoriety of the Complainant's Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark”). Accordingly, Respondent will not be able to use the Domain Name in connection with a bona fide offering of goods or services under Policy 4(c)(i), or for a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).
· With reference to Policy 4(c)(ii), the Panel is of the view that it does not get established from the record or otherwise that Respondent is commonly known by the name “COUTTS-UK” or the Domain Name. The Panel further observes that the Respondent does not currently use and has never used these domain names in connection with its business. On the contrary, it registered its Domain Name under “Mr Philip Mano” which has no apparent relation with Complainant’s mark “COUTTS”. The Panel, in this regard, reiterates and re-affirms the decision in the case of - Nike, Inc. v. BargainName.com, FA 0496731 (Nat. Arb. Forum Aug. 2, 2005) - holding out that the respondent had registered the domain name <nikezone.com> under the name “BargainName.com” and noting that based the Whois contact information, one can infer that the respondent is not commonly known by the name); and also the decision in the case of Wells Fargo & Co. v. Ehostpros.com, FA 0386980 (Nat. Arb. Forum Feb. 9, 2005) - holding that the respondent lacked rights and legitimate interests in the domain name where there was no evidence that the respondent was either commonly known by the disputed domain name or was authorized to register domain names featuring the complainant’s WELLS FARGO mark). Hence, the Panel is of the clear view that the Respondent lacks rights and legitimate interests in the Domain Name pursuant to Policy 4(c)(ii).
· The Panel observes that Complainant’s “COUTTS” mark is a registered trademark and well-known throughout the world. Respondent is thus deemed to have actual or constructive knowledge of the mark. The Panel observes and supports that the reliance by Complainant to the following decisions shows the use of Complainant’s mark by the respondent to be in bad faith : -
(i) Reed Elsevier Inc. v. Colan, FA 0161469 (Nat. Arb. Forum Sept. 19, 2003) - holding bad faith by the respondent based solely on the fact that the respondent had constructive knowledge of the complainant’s registered trademark.
(ii) State Farm Mutual Auto. Ins. Co. v. Unasi, Inc., FA 0521055 (Nat. Arb. Forum Aug. 29, 2005), holding that based on the fame of Complainant’s mark, the fact that Respondent chose a Domain Name which fully incorporates Complainant’s mark and the fact that Respondent intentionally used duplications of Complainant’s trademarks on its website, it is clear that Respondent had knowledge of Complainant’s mark and is attempting to take advantage of Complainant’s goodwill.
(iii) Morgan Stanley v. Blog Network Int’l, FA 0564204 (Nat. Arb. Forum Oct. 28, 2005) holding, “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”);
Since Respondent had knowledge of Complainant’s mark, Respondent’s registration and continued holding of the Domain Name was and is in bad faith. Respondent in his response is claiming himself to be a victim of fraud by stating that not only his name and details but even his RBS credit card has been fraudulently misused in relation to the disputed domain name.
· The Panel further observes that Respondent’s use of the Domain Name to perpetrate an apparent fraud by acquiring personal information from Complainant’s current and prospective customers constitutes evidence that Respondent registered and used the Domain Name in bad faith pursuant to Policy 4(a)(iii). Respondent’s website indicated that it is the “official site” of Complainant, giving the impression to Internet users that they had reached Complainant’s legitimate website, especially given Respondent’s use of Complainant’s Mark and logo. Numerous panels have held that using a domain name as Respondent was here constitutes bad faith under ICANN Policy. The Panel observes that Complainant has relied upon the following decisions to substantiate the use by respondent of complainant’s mark to be in bad faith :
(i) Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding bad faith registration and use pursuant to Policy 4(a)(iii) where a domain name “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients”;
(ii) Halifax plc v. Sontaja Sunducl, WIPO Case No. D 2004-0237 (June 3, 2004) (“evidence of duplication in the Complainant’s trading get-up, branding and imagery is direct evidence of the domain name being used in bad faith… [T]he apparent potential for “phishing” and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity.”). In this case, Respondent has demonstrated its bad faith by using a confusingly similar domain name to resolve to a counterfeit website which uses Complainant’s name, marks and logos to deceive Complainant’s customers and prospective customers into providing personal account information in furtherance of some improper, if not fraudulent activity.
(iii) Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) - holding bad faith registration and use pursuant to Policy 4(a)(iii) where the respondent used the domain name to redirect Internet users to a website imitating the complainant’s website to fraudulently acquire personal information from the complainant’s clients);
(iv) Wells Fargo & Co. v. Ehostpros.com, FA 386980 (Nat. Arb. Forum Feb. 9, 2005) (finding the respondent’s use of the domain name, which was a confusingly similar variation of the complainant’s mark, to fraudulently retrieve personal and financial information from Complainant’s customers was evidence that the respondent registered and used the domain name in bad faith pursuant to Policy 4(a)(iii);
· The Panel is of the view that the ICANN Policy 4(b)(iv) envisages that bad faith can be established by evidence that demonstrates that “by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site…..........., by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on [Respondent’s] web site or location.” The Panel is of the view that the Respondent’s efforts to solicit personal and confidential information from Complainant’s banking customers are almost certainly in pursuit of some commercial gain, and by utilizing Complainant’s “COUTTS” mark, Respondent is intentionally creating a high “likelihood of confusion” for unsuspecting Internet users which is also an evidence of Respondent’s use in bad faith. Complainant has relied upon the decision of the National Arbitration Forum in Capital One Financial Corp. v. Howel, FA 0289304 - (Aug. 11, 2004) - holding that the use of the complainant’s CAPITAL ONE mark within the domain name <capitalonebank.biz> for presumable commercial benefit created a likelihood of confusion in violation of ICANN Policy 4(b)(iv)).
· The Panel is further of the clear view that the Respondent’s bad faith ought to be considered in light of the particular dangers raised by the improper use of a financial institution’s trademarks. Respondent’s use of the Domain Name to connect to a “bank” website purporting to be Complainant’s official website and requesting personal information of customers is in furtherance of some sort of “phishing” scheme. Due to the sensitive nature of the confidential information that is routinely exchanged between banks and their customers online, banks are consistently exposed to online threats and schemes such as “webjacking” and “phishing”.
· The Panel is further of the view that financial institutions, such as Complainant, are among the most common targets. The NAF and WIPO databases reflect numerous cases initiated by well-known banks and other financial institutions. Indeed, Complainant and its affiliates recently have been forced to initiate numerous proceedings before the NAF to recover domain names used to perpetrate fraudulent schemes targeted at Complainant’s online banking customers. In this regard, the Complainant has relied upon the following decisions : -
(i) The Royal Bank of Scotland Group plc v. PrivacyProtect.org, FA 1126039 (Nat. Arb. Forum Feb. 14, 2008) – holding that the transfer of the domain name <rbs-online-uk.com> and finding that the respondent’s use of the domain name “to acquire the personal information of Complainant’s customers, a tactic known as ‘phishing,’ . . . is evidence of bad faith registration and use under Policy 4(a)(iii)”).
(ii) WorldPay Ltd. v. Farris, FA 1142584 (Nat. Arb. Forum March 13, 2008) (ordering transfer of the domain name <worldpay-shipping.com> - holding that the respondent’s use of the domain name in an attempt to pass itself off as the complainant indicates bad faith registration and use; such use of the domain name for the respondent’s presumable commercial gain is further evidence of bad faith);
(v) The Royal Bank of Scotland Group, plc v. Hansen, FA 1177347 (Nat. Arb. Forum May 28, 2008) - holding that the transfer of the domain name <privilegebank-online.com> and finding bad faith registration and use where the respondent used the domain name to take part in a phishing scheme in order to obtain sensitive personal information from Complainant’s Internet customers by imitating Complainant’s genuine financial website”);
· The Panel is of the view that the type of wrongful activity recurring in these cases results in serious harm not only to the financial institutions involved, but also to their customers, who are often unsuspecting Internet users seeking access to their bank accounts and is clearly in violation of the following decisions relied upon by the Complainant : -
(i) Am. Int’l Gr., Inc. v. Busby , FA 0156251 (Nat. Arb. Forum May 30, 2003) (“Following its registration of the disputed domain name, Respondent proceeded to host a website that duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business……...... In a nutshell, Respondent used the disputed domain name to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”.
(ii) Capital One Fin. Corp. v. Howel, FA 0289304 (Nat. Arb. Forum Aug. 11, 2004), holding that the respondent used the domain name <capitalonebank.biz> in connection with an Internet phishing scam to defraud consumers into revealing their personal and proprietary information for the respondent’s commercial gain.
(iii) Wells Fargo & Co. v. John Doe, FA 0466104 (Nat. Arb. Forum June 3, 2005) (domain name resolving to website that lured unsuspecting customers into entering personal information under the mistaken belief that they were visiting the complainant financial institution’s security page found to be part of “phishing” scam, illegitimate, and in bad faith);
The Panel is of the clear view that the respondent in the present case has hosted its website which duplicated Complainant’s marks, apparently in order to perpetrate a fraud on consumers.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coutts-uk.biz> domain name be TRANSFERRED from Respondent to Complainant.
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