National Westminster Bank plc v. Elias Dye
Claim Number: FA1003001313548
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 <natwestminster.com>, registered with Tucows 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 March 16, 2010.
On March 17, 2010, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <natwestminster.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 March 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@natwestminster.com by e-mail. Also on March 17, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has offered financial services to the public since 1968.
Complainant offers these financial services under its NATWEST trademark.
Complainant holds multiple trademark registrations with the United Kingdom Intellectual Property Office ("UKIPO") (including No. 1,021,601, issued December 3, 1973) and with the United States Patent and Trademark Office ("USPTO") (including Reg. No. 1,241,454, issued June 7, 1983) for its NATWEST mark.
Respondent is not authorized or licensed to use Complainant’s NATWEST mark.
Respondent registered the <natwestminster.com> domain name on January 20, 2010.
The disputed domain name resolves to a website that resembles Complainant’s homepage and offers financial services in competition with the business of Complainant.
Respondent’s <natwestminster.com> domain name is confusingly similar to Complainant’s NATWEST mark.
Respondent does not have any rights to or legitimate interests in the domain name <natwestminster.com>.
Respondent registered and uses the <natwestminster.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.
Trademark registration with a national trademark authority is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of trademark registrations around the world); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that complainants had established rights in marks where the marks were registered with a trademark authority). Complainant holds trademark registrations for its NATWEST mark with both the UKIPO and with the USPTO. Therefore, Complainant has established rights in its NATWEST mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <natwestminster.com>
domain name is confusingly similar to Complainant’s NATWEST mark. The disputed
domain name adds the descriptive suffix “minster,” which references
Complainant’s mark and trade name, and the domain name also adds the generic
top-level domain (“gTLD”) “.com.” The
addition of such a descriptive term and a gTLD is insufficient to distinguish
the disputed domain name adequately from Complainant’s mark. See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb.
Forum Mar. 13, 2000) (finding that a respondent’s domain name
<marriott-hotel.com> is confusingly similar to a complainant’s MARRIOTT
mark); see also 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.
Thus, the Panel concludes that Respondent’s <natwestminster.com> domain name is confusingly similar to Complainant’s NATWEST mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <natwestminster.com> domain name. Previous panels have found that when a complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to prove that it does have rights to or legitimate interests in its domain name. See 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 made out a sufficient prima facie case. And, owing to Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the <natwestminster.com> domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because a respondent failed to submit a Response:
Complainant’s
submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations … unless clearly contradicted by the
evidence.
Nonetheless, we will examine the record before us, by reference to the criteria 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 name which are cognizable under the Policy.
We begin our examination by noting that Complainant contends, and Respondent does not deny, that Respondent is not authorized or licensed to use Complainant’s NATWEST mark. Moreover, the WHOIS information for the contested domain name identifies the registrant only as “Elias Dye,” which does not resemble the disputed domain name. On this record we must conclude that Respondent is not commonly known by the <natwestminster.com> domain name so as to possess a claim to rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent had no rights to or legitimate interests in a contested domain name 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
We also observe that there is no dispute as to Complainant’s assertion that Respondent uses the <natwestminster.com> domain name to attempt to pass itself off as Complainant in order to offer financial services that compete with the business of Complainant. Respondent’s use of the disputed domain name, as alleged, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent attempted to pass itself off as a complainant online in a blatant unauthorized use of that complainant’s mark, which evidenced that that respondent had no rights to or legitimate interests in a disputed domain name); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with the business of a complainant, was not a bona fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <natwestminster.com> domain name resolves to a website that purports to be Complainant’s website, and which offers financial services in competition with business of Complainant. Respondent’s use of the <natwestminster.com> domain name in the manner alleged disrupts Complainant’s financial services business, which demonstrates bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that a respondent registered a domain name primarily to disrupt its competitor when it sold goods similar to those offered by a complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation in a contested domain name from a complainant's marks suggests that a respondent, that complainant’s business competitor, registered the names primarily for the purpose of disrupting that complainant's business).
Respondent likely profits from its use illicit of the <natwestminster.com> domain name, whether from the receipt of click-through fees or otherwise. Respondent offers financial services that compete with Complainant’s similar services. Internet users may become confused as to Complainant’s possible sponsorship of or affiliation with the disputed domain name, resolving website and featured financial services. These circumstances further evidence that the disputed domain name was registered and is being used in bad faith. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iv) where the domain resolved to a website that offered products similar to those sold under a complainant’s mark); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of the domain name there at issue to resolve to a website where services are offered to Internet users which are similar to those marketed by a complainant is likely to confuse those users into believing that that complainant might be the source of the services offered at the site).
For these reasons, the Panel finds that Complainant has satisfied the proof requirements of 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 <natwestminster.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 22, 2010
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