National Westminster Bank plc v. Nat West
Claim Number: FA1103001378757
Complainant is National Westminster Bank plc (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA. Respondent is Nat West (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <natwestbkonline.org>, registered with EuroDNS S.A. (R1721-LROR).
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2011; the National Arbitration Forum received payment on March 21, 2011.
On March 21, 2011, EuroDNS S.A. (R1721-LROR) confirmed by e-mail to the National Arbitration Forum that the <natwestbkonline.org> domain name is registered with EuroDNS S.A. (R1721-LROR) and that Respondent is the current registrant of the name. EuroDNS S.A. (R1721-LROR) has verified that Respondent is bound by the EuroDNS S.A. (R1721-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2011 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@natwestbkonline.org. Also on March 22, 2011, 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 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
1. Respondent’s <natwestbkonline.org> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestbkonline.org> domain name.
3. Respondent registered and used the <natwestbkonline.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a financial institution based in the United Kingdom that offers a full range of financial services, including personal and business banking services, credit cards, and small business accounts. Complainant owns multiple trademark registrations for the NATWEST mark with the United States Patent and Trademark Office (“USPTO”), the United Kingdom Intellectual Property Office (“UKIPO”), and the European Union Office of Harmonization for the Internal Market (“OHIM”), among many others:
USPTO
Reg. No. 1,241,454 issued June 7, 1983;
UKIPO
Reg. No. 1,021,601 issued December 3, 1973; and
OHIM
Reg. No. 004319067 issued April 18, 2006.
Respondent, Nat West, registered the <natwestbkonline.org> domain name on August 20, 2010. The disputed domain name resolves to a pay-per-click directory featuring links to third-party providers of banking services in competition with Complainant.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 owns multiple trademark registrations for the NATWEST mark with the USPTO, the UKIPO, and the OHIM, among many others:
USPTO
Reg. No. 1,241,454 issued June 7, 1983;
UKIPO
Reg. No. 1,021,601 issued December 3, 1973; and
OHIM
Reg. No. 004319067 issued April 18, 2006.
The Panel finds that evidence of registration with a country’s trademark authority, such as the USPTO, the UKIPO or the OHIM, sufficiently proves Complainant’s rights in the NATWEST mark for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues that Respondent’s <natwestbkonline.org> domain name is confusingly similar to Complainant’s NATWEST mark because the disputed domain name is comprised of the NATWEST mark and the abbreviations or terms “bk” (representing “bank”) and “online,” as well as the generic top-level domain (“gTLD”) “.org.” The Panel determines that the addition of a term or an abbreviation of a term do not remove the disputed domain name from the realm of confusing similarity. See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also concludes that the addition of the gTLD “.org” does not distinguish the disputed domain name. See 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). The Panel accordingly holds that Respondent’s <natwestbkonline.org> domain name is confusingly similar to Complainant’s NATWEST mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie case in these proceedings. Since Respondent failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name. See Intel Corp. v. Macare FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests”); see also 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.”). The Panel elects, however, to consider the evidence in the record according to the Policy ¶ 4(c) factors to determine if the evidence suggests that Respondent has any rights or legitimate interests in the disputed domain names.
Complainant asserts that there is no indication that Respondent is commonly known by the <natwestbkonline.org> domain name despite the WHOIS information that indicates the registrant of the disputed domain name is “Nat West.” Complainant argues that an Internet search did not reveal an entity named “Nat West” located at the address listed in the WHOIS information. Complainant alleges that there is no other evidence in the record, aside from the WHOIS information, that shows any association between Respondent and the disputed domain name. Therefore, Complainant contends that the presence of the name “Nat West” within the WHOIS information is insufficient to establish that Respondent is commonly known by the disputed domain name. Pursuant to Policy ¶ 4(c)(ii), the Panel accordingly finds that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name”).
Complainant argues that Respondent’s <natwestbkonline.org> domain name resolves to a website displaying various commercial, pay-per-click links, including many links advertising the very types of banking and financial services offered by Complainant. Complainant alleges, and the Panel agrees, that this use of the disputed domain name 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 under Policy ¶ 4(c)(iii). See 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 various 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the NATWEST mark in the <natwestbkonline.org> domain name to direct Internet users to a website advertising for other competing providers of banking and financial services disrupts Complainant’s business by causing Complainant to suffer a loss of customers, business, and revenue. The Panel finds that Respondent’s actions therefore reveal bad faith registration and use according to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant asserts that Respondent’s use of the NATWEST mark in the <natwestbkonline.org> domain name attracts Internet users by creating a false impression that Respondent’s website is somehow affiliated or connected with Complainant. Complainant argues that Respondent uses the disputed domain name in this way in order to profit from the revenue generated by the pay-per-click links displayed on the resolving website. The Panel finds that Respondent’s efforts to mislead Internet users and divert those seeking Complainant’s business in order to receive financial gain constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natwestbkonline.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 15, 2011
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