National Westminster Bank plc v. Hosting Services Inc c/o Tech Support
Claim Number: FA0908001278540
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 <natwestonline-uk.com>, registered with Enom, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 11, 2009.
On August 10, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <natwestonline-uk.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 1, 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.
On September 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a financial institution based in the
Complainant is the owner of the NATWEST trademark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No 1,241,454, issued June 7, 1983), the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,021,601, issued January 2, 1975), and the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4,319,067, issued April 18, 2006).
Complainant uses its NATWEST mark in conjunction with the
promotion and provision of banking, credit cards, financial planning, and
insurance services throughout the
Complainant has not licensed or otherwise authorized Respondent to use the NATWEST mark, or any variation thereof.
Respondent registered the <natwestonline-uk.com> domain name on May 6, 2009.
The disputed domain name redirects Internet users to Complainant’s website at the <natwest.com> domain name.
Respondent’s <natwestonline-uk.com> domain name is confusingly similar to Complainant’s NATWEST mark.
Respondent does not have any rights to or legitimate interests in the <natwestonline-uk.com> domain name.
Respondent registered and uses the <natwestonline-uk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registrations of the NATWEST trademark with the USPTO, the UKIPO and the OHIM confer upon Complainant rights in the mark sufficient for purposes of Policy ¶ 4(a)(i). See Nat’l Westminster Bank plc v. Short, FA 1152426 (Nat. Arb. Forum Apr. 4, 2008) (finding that a complainant established rights in the NATWEST mark pursuant to Policy ¶ 4(a)(i) by virtue of its trademark registrations with the UKIPO, the OHIM, and the USPTO); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant established rights in the GOOGLE mark through its holding of trademark registrations around the world).
Respondent’s <natwestonline-uk.com> domain name
incorporates Complainant’s NATWEST mark in its entirety with several
insignificant alterations. The addition
of the term “online,” which corresponds to the mode of delivery of services
offered by Complainant under the NATWEST mark, does not serve to distinguish
Respondent’s disputed domain name. See Broadcom Corp. v. Domain
Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the
<broadcomonline.com> domain name is confusingly similar to a
complainant’s BROADCOM mark). Moreover,
the addition of a hyphen and the geographically descriptive term “
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
Therefore, the Panel concludes that Respondent’s <natwestonline-uk.com> domain name is confusingly similar to Complainant’s NATWEST mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have any rights to or legitimate interests in the <natwestonline-uk.com> domain name. Once a prima facie case has been made out by Complainant, the burden shifts to Respondent to demonstrate that it has rights to or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has adequately established a prima facie case in these proceedings. Because Respondent has failed to respond to the allegations of the Complaint, we may presume that Respondent lacks any rights to or legitimate interests in the domain name <natwestonline-uk.com>. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate its rights to or legitimate interests in a disputed domain name). We will nonetheless examine the record to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name under the criteria set out in Policy ¶ 4(c).
We begin by observing that there is no dispute as to Complainant’s allegation that Respondent’s <natwestonline-uk.com> domain name redirects Internet users to Complainant’s website resolving from the <natwest.com> domain name. We may presume from the circumstances presented that Respondent receives referral fees from this diversion. Thus, we conclude that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii), respectively. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that a respondent’s commercial use of a challenged domain name suggests that that respondent lacks rights to or legitimate interests in the domain); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that a respondent’s use of a complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
We next note that Respondent does not deny the allegation of the Complaint to the effect that Complainant has not licensed or otherwise authorized Respondent to use the “NATWEST” mark, or any variation thereof. This, taken together with the pertinent WHOIS information, which lists the registrant of the <natwestonline-uk.com> domain name as “Hosting Services Inc c/o Tech Support,” permits the conclusion that Respondent lacks rights to and legitimate interests under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the domain there in issue).
Complainant has therefore satisfied Policy ¶ 4(a)(ii).
We have already concluded that the disputed domain name
resolves to Complainant’s website resolving from the <natwest.com> domain
name, and that Respondent engages in this diversion in order to receive
commercial referral fees. We therefore conclude that Respondent has, for
commercial gain, created a likelihood of confusion as to Complainant’s possible
affiliation with the disputed domain name. Respondent has therefore engaged in
bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Sports
Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.
See also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there in question was obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for a respondent’s commercial gain).
For this reason, we find that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <natwestonline-uk.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 15, 2009
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