National Westminster Bank plc v. Dezider Banga
Claim Number: FA0912001300743
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue, each registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com, are <cardsonlinenatwest.com> and <natwestsharedealing.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 30, 2009.
On December 30, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <cardsonlinenatwest.com> and <natwestsharedealing.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 December 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of Janauary 20, 2010 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@cardsonlinenatwest.com and postmaster@natwestsharedealing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 29, 2010, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant holds numerous
trademark registrations for the NATWEST mark with the United States Patent and
Trademark Office (“USPTO”) (including Reg. No. 1,241,454, issued June 7, 1983)
and the United Kingdom Intellectual Property Office (“UKIPO”) mark (including
Reg. No. 1,021,601, issued January 2, 1975) in connection with its marketing of
a full range of financial services, including personal and business banking
services and credit cards.
Respondent has not been
licensed or otherwise authorized by Complainant to use the NATWEST mark.
Respondent registered the <cardsonlinenatwest.com> and <natwestsharedealing.com> domain
names on September 5, 2009 and September 7, 2009, respectively.
The
disputed domain names resolve to websites displaying various commercial links,
including links to the sites of Complainant’s business competitors.
Respondent
presumably generates pay-per-click fees from these links.
Respondent’s <cardsonlinenatwest.com> and <natwestsharedealing.com> domain names are confusingly similar to Complainant’s NATWEST mark.
Respondent does not have any rights to or legitimate interests in the domain names <cardsonlinenatwest.com> and <natwestsharedealing.com>.
Respondent registered and uses the domain names <cardsonlinenatwest.com> and <natwestsharedealing.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) Each of the same domain names 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 has established
rights in the NATWEST mark under policy ¶ 4(a)(i) through its trademark
registrations with the USPTO and the UKIPO.
See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb.
Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national
trademark authorities, a Panel determined that “such registrations present a prima facie case of Complainant’s rights
in the mark for purposes of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v.
Renaissance
Complainant argues that Respondent’s domain names <cardsonlinenatwest.com> and <natwestsharedealing.com> are confusingly similar to Complainant’s NATWEST mark pursuant to Policy ¶ 4(a)(i). The <cardsonlinenatwest.com> domain name merely adds the descriptive phrase “cards online” to the entirety of Complainant’s mark, while the <natwestsharedealing.com> domain name merely adds the descriptive phrase “share dealing” to the mark. Additionally, both disputed domain names add the generic top-level domain (“gTLD”) “.com.” The addition of a descriptive phrase to the entirety of Complainant’s mark creates confusing similarity between the disputed domain names and the mark. See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that a respondent’s domain names, which incorporated a complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to a complainant’s VANCE mark, which described that complainant’s business, a respondent “very significantly increased” the likelihood of confusion between the domain thus created and that complainant’s mark).
Moreover, the addition of a gTLD to a mark is irrelevant in distinguishing
the resulting domain name from the mark.
See Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
See also 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 competing mark).
Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or
legitimate interests in the disputed domain names. Once Complainant makes out a
prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it has rights to or
legitimate interests in the disputed domain names. See Intel Corp. v.
Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the
“complainant must first make a prima facie case that [the] respondent
lacks rights and legitimate interests in the disputed domain names under Policy
¶ 4(a)(ii), and then the burden shifts to [the]
respondent to show it does have rights or legitimate interests.”); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must
first make out a prima facie case that a respondent lacks rights to and
legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to that respondent to show that it does have such rights or
legitimate interests).
Complainant has established a prima facie case in support of its contentions and Respondent has
failed to submit a Response to these proceedings. Therefore, we are entitled to presume that
Respondent has no rights to or legitimate interests in the disputed domain
name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.
See also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003):
It
can be inferred that by defaulting Respondent showed nothing else but an
absolute lack of interest on the domain name.
Nevertheless,
we will examine the record before us, in light of the standards set out in
Policy ¶ 4(c), to determine whether there is in it any basis for concluding
that Respondent has rights to or legitimate interests in the disputed domain
names which are cognizable under the Policy.
We begin by observing that the pertinent WHOIS information lists the registrant of each of the contested domain names only as “Dezider Banga.” We also take note of complainant’s allegation, which Respondent does not deny, that Respondent has not been licensed or otherwise authorized by Complainant to use the NATWEST mark. On the strength of this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain names pursuant to 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 all 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).
We also note that Complainant alleges, and Respondent does not deny, that both the <cardsonlinenatwest.com> and <natwestsharedealing.com> domain names resolve to websites displaying links to the websites of Complainant’s business competitors. Respondent presumably generates pay-per-click fees from Internet users’ visits to these links. Respondent’s use of the disputed domain names in the manner alleged is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with a complainant’s business 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 domain pursuant to Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not a use in connection with 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), where a respondent presumably earned “click-through” fees for each Internet user it redirected to other websites).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent is using the
disputed domain names to attract Internet users interested in Complainant’s
goods and services and to redirect them to the websites of Complainant’s business
competitors. Respondent’s use of the
disputed domain names in this manner constitutes disruption of Complainant’s
business and is evidence of Respondent’s bad faith registration and use of the
contested domain names under Policy ¶ 4(b)(iii). See Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a contested domain name to attract
Internet users to a directory website containing links to the websites of a
complainant’s commercial competitors represents bad faith registration and use of
the domain under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii)
where a respondent used the disputed domain name to operate a commercial search
engine with links to a complainant’s commrecial competitors).
Respondent’s use of the
disputed domain names alleged in the Complaint, taken together with its evident
attempt to profit through the receipt of pay-per-click fees from such
activities, creates a strong likelihood of confusion with Complainant’s NATWEST
mark, which is evidence of bad faith registration and use of the contested
domains pursuant to Policy ¶ 4(b)(iv). See T-Mobile
USA, Inc. v. utahhealth, FA 697821 (Nat.
Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma,
Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of
a domain name confusingly similar to a complainant’s mark to display links to
various third-party websites demonstrated bad faith registration and use of the
domain pursuant to Policy ¶ 4(b)(iv)).
For these reasons, the Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
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 domain names <cardsonlinenatwest.com> and <natwestsharedealing.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 12, 2010
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