National Westminster Bank plc v. natt45 c/o susan woods
Claim Number: FA0804001176668
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natt-westbankonline.com>, registered with Australian Style Pty Ltd.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April
18, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 8, 2008
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@natt-westbankonline.com by e-mail.
Having received no timely response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
A Response was subsequently received from Respondent on May 16, 2008 and determined to be outside of the time requirements of Rule 5. Therefore, the Panel did not consider the late submission.
On
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:
1. Respondent’s <natt-westbankonline.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natt-westbankonline.com> domain name.
3. Respondent registered and used the <natt-westbankonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a British
financial institution that provides personal and business banking services,
including credit cards and loans.
Complainant has over 7.5 million personal customers and 850,000 small
business accounts. Since 1973,
Complainant has operated under the NATWEST mark (Reg. No. 1,241,454 issued June
7, 1983), which was registered with the
Respondent registered the <natt-westbankonline.com>
domain name on
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.
The Panel finds that Complainant has adequately set forth evidence of its rights in the NATWEST mark through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <natt-westbankonline.com>
domain name
incorporates an altered form of Complainant’s NATWEST mark, in that an
additional “t” and hyphen are included between “na” and “twest.” Moreover, the generic words “bank” and
“online” are included, as well as the generic top-level domain (“gTLD”)
“.com.” Generic top-level domains are
never considered in a Policy ¶ 4(a)(i) analysis. Second, generic words that describe
Complainant’s Internet financial and banking operations, such as “bank” and
“online” will generally fail to distinguish a disputed domain name for the
purposes of Policy ¶ 4(a)(i). Finally,
the additional “t” and hyphen will not overturn a finding of confusing
similarity, as the predominant feature of the disputed domain name remains
Complainant’s mark. Moreover, the
phonetical nature of “natt-west” is identical to Complainant’s NATWEST mark. Despite the various additions in the instant
disputed domain name, the dominant feature of the mark remains Complainant’s
NATWEST mark. Given the specialized
industry of banking, it it is doubtful the disputed domain name’s banking
descriptions retain sufficient distinction from Complainant’s mark. Therefore, the Panel finds that Respondent’s
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO
June 25, 2000) (finding that the top level of the domain name such as “.net” or
“.com” does not affect the domain name for the purpose of determining whether
it is identical or confusingly similar); see
also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to the complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which the complainant is engaged, does not take the
disputed domain name out of the realm of confusing similarity); see also Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <natt-westbankonline.com> domain name. Complainant has hereby set forth a sufficient prima facie case supporting its allegations, and thus Respondent receives the burden to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s disputed domain name and corresponding website merely imitate Complainant’s own website, complete with pseudo-login components presumably designed to glean the private information of Complainant’s customer base. There is no evidence within the record to suggest that there is any independent content or usage that would constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Indeed, this appears to be the quintessential case of a respondent passing itself off as a complainant, much to the detriment of Internet users and Complainant’s business. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
There is no evidence in the record, including the WHOIS
domain name registration information, to conclude that Respondent is commonly
known by the disputed domain name. The
disputed domain name’s registrant is listed as “natt45 c/o susan woods,” which
bears no likeness to the disputed domain name.
Finally, Respondent alleges no license or permission to utilize
Complainant’s mark in any fashion, much less to register a confusingly similar
domain name whose corresponding website merely copies Complainant’s website. Therefore, the Panel finds that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Complainant has asserted that Respondent’s disputed domain
name constitutes an exercise of “phishing.”
Phishing refers to the conduct of portraying a website as another’s
website, primarily designed to deceive Internet users into voluntarily
divulging their private information, such as account or social security
numbers. Respondent’s confusingly
similar domain name and corresponding website squarely fit within this
definition, for Respondent’s website provides ample fraudulent opportunity and
deceptive imitation to convince Internet users to divulge their private
information as it relates to Complainant’s business and accounts. Therefore, Respondent’s engagement in
phishing constitutes wholly sufficient evidence of Respondent’s lack of rights
and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Juno Online Servs.,
Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that
using a domain name to redirect “Internet users to a website that imitates
Complainant’s billing website, and is used to fraudulently acquire personal
information from Complainant’s clients,” is neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum
Aug. 11, 2004) (finding that using a domain name to redirect Internet users to
a website that imitated the complainant’s credit application website and
attempted to fraudulently acquire personal information from the complainant’s
clients was not a bona fide offering of goods or services or a
legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s confusingly similar domain name diverts
Internet users seeking Complainant to a website that purports to belong to
Complainant. That such a website
attempts to defraud these diverted Internet users highly suggests that
Respondent’s primary purpose and objective was to disrupt Complainant’s
operations for financial gain.
Respondent may fairly be described as a competitor of sorts of
Complainant, in that it acted in opposition to Complainant and to the detriment
of Complainant’s business. The Panel
therefore finds that Respondent has engaged in bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Mission
KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor”
as “one who acts in opposition to another and the context does not imply or
demand any restricted meaning such as commercial or business competitor”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Respondent’s confusingly similar domain name siphons
Internet users seeking Complainant’s business to a corresponding website that
blatantly attempts to imitate Complainant and persuade these Internet users to
disclose their private banking information.
Respondent likely seeks to obtain such information for fraudulent
purposes, calculated to result in monetary gain. Thus, Respondent’s registration of the
disputed domain name and subsequent use has created the prototypical likelihood
of confusion as to the source, endorsement, and affiliation of the disputed
domain name and corresponding website.
Ordinarily, the creation of this confusion is manifested in an attempt
to capitalize off of a trademark holder’s goodwill, for the financial benefit
of displaying advertisements or selling similar products. However, Respondent’s activities of confusion
constitute sheer deception, with the sole purpose of stealing customer
information. Therefore, the Panel finds
that Respondent has engaged in bad faith registration and use under Policy ¶
4(b)(iv). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) ("While an intent to confuse consumers is not required for a finding
of trademark infringement, intent to deceive is strong evidence of a likelihood
of confusion."); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat.
Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds
that Respondent’s engagement in a phishing venture via the disputed domain name
and corresponding website usage clearly constitute bad faith registration and
use under Policy ¶ 4(a)(iii), as it attempts to use deception to artfully
purloin the information of Complainant’s potential and actual customers. See Juno Online Servs.,
Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that
using a domain name that “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” is evidence of bad faith registration and use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov.
11, 2004) (finding that the respondent registered and used the domain name in
bad faith because it redirected Internet users to a website that imitated the
complainant’s website and was used to fraudulently acquire personal information
from the complainant’s potential associates).
The Panel finds that 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 <natt-westbankonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
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