National Westminster Bank plc v. 121 Internet c/o Direct Communication
Claim Number: FA0603000671023
Complainant is National Westminster Bank plc (“Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC 27602. Respondent is 121 Internet c/o Direct Communication (“Respondent”), Cov, WestMids Cv1 2DA, GB.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwest.net>, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2006.
On March 31, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <natwest.net> 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 April 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 27, 2006 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@natwest.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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." 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 <natwest.net> domain name is identical to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwest.net> domain name.
3. Respondent registered and used the <natwest.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, has continuously and extensively used the NATWEST mark in connection with its personal and business banking services, including insurance, since 1968. Complainant has more than 7.5 million personal customers and over 850,000 small business accounts around the world. The Royal Bank of Scotland Group, the fifth-largest financial services group in the world, is the owner of Complainant.
Complainant has registered the NATWEST mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983) and the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,021,601 issued February 1, 1975; Reg. No. 1,278,207 issued April 4, 1990; Reg. No. 1,278,208 issued January 1, 1990). Complainant has also registered the <natwest.com> domain name (registered on February 11, 1997).
Respondent registered the <natwest.net> domain name on April 8, 2002. Respondent’s domain name resolves to a website at the <carinsurance.co.uk/securequote.introdn.htm> domain name, which is filled with links to the websites of Complainant’s competitors in the insurance industry.
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 has established rights in the NATWEST mark by
registering the mark with the USPTO and UKPO.
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 Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which the respondent operates; therefore it is sufficient that
the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <natwest.net> domain name is identical to Complainant’s NATWEST mark, because it wholly incorporates the mark and merely adds the generic top-level domain “.net.” Panels have held that the addition of a gTLD to a complainant’s mark does not sufficiently distinguish the domain name from the mark. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark). Therefore, the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <natwest.net> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <natwest.net> domain name.
See CMGI, Inc.
v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s
failure to produce requested documentation supports a finding for the
complainant); see also Am. Online,
Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or
legitimate interests where the respondent fails to respond). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “121 Internet c/o Direct Communication,”
and there is no other evidence in the record suggesting that Respondent is
commonly known by the <natwest.net> domain name. Hence, Respondent has not established rights
or legitimate interests in the <natwest.net> domain name pursuant
to Policy ¶ 4(c)(ii). See Am.
Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb.
Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”); see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail").
Furthermore, Respondent’s <natwest.net> domain
name, which is confusingly similar to Complainant’s NATWEST mark, resolves to a
website featuring links to Complainant’s competitors in the insurance
industry. In TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel concluded
that the respondent’s registration and use of confusingly similar domain names
to divert Internet users to its own website did not constitute a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair
use under Policy ¶ 4(c)(iii), and that hosting links to the complainant’s
direct competitors only reinforced that conclusion. Because Respondent is also diverting Internet users to its own
website containing links to Complainant’s direct competitors, its use of the
disputed domain name also does not constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use
under Policy ¶ 4(c)(iii). See Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) (finding that the respondent engaged in bad faith use and registration by
using domain names that were identical or confusingly similar to the
complainant’s mark to redirect users to a website that offered services similar
to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the domain name for the primary purpose of disrupting
Complainant’s business, because the <natwest.net> domain name
resolves to a website featuring links to Complainant’s competitors in the
insurance industry. In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel
found that the respondent had registered and used the <euro-disney.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because it resolved to
a website promoting a competing theme park.
Here, then, Respondent’s use of the disputed domain name to operate a
website with links to Complainant’s competitors provides evidence that it
registered the domain name primarily to disrupt Complainant’s business in
violation of Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
Furthermore, Respondent has registered and is using the <natwest.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name resolves to a web directory featuring links to Complainant’s direct competitors. In Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), the panel found that the respondent’s diversion of Internet users who were seeking the complainant’s website to its own website for commercial gain created “a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, endorsement, or affiliation of its website” and, therefore, provided evidence of bad faith registration and use in violation of Policy ¶ 4(b)(iv). In this case, Respondent is also redirecting Internet users seeking Complainant’s financial and insurance services to its own website for commercial gain, because Respondent likely receives referral fees for each consumer it diverts to other websites. Thus, Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s NATWEST mark, and profiting from the goodwill associated with the mark, which violates Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <natwest.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 16, 2006
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