National Westminster Bank plc v. Scott Threlkeld
Claim Number: FA0610000823148
Complainant is National Westminster Bank plc (“Complainant”), represented by James A. Thomas of Parker, Poe, Adams & Bernstein L.L.P., Three Wachovia Center, 401 South Tryon Street, Suite 3000, Charlotte, NC, 28202. Respondent is Scott Threlkeld (“Respondent”), 8418 Dove Ridge Way, Parker, CO, 80134.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwest-banking.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 18, 2006; the National Arbitration Forum received a hard copy of the Complaint October 18, 2006.
On October 31, 2006, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <natwest-banking.com> domain name is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 21, 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-banking.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <natwest-banking.com>, is confusingly similar to Complainant’s NATWEST mark.
2. Respondent has no rights to or legitimate interests in the <natwest-banking.com> domain name.
3. Respondent registered and used the <natwest-banking.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a leading financial institution based in the United Kingdom. In connection with the provision of various financial and banking services, Complainant registered the NATWEST mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983).
Respondent registered the <natwest-banking.com> domain name April 26, 2006. The disputed domain name currently resolves to no content, after previously resolving to a website that sold services that directly competed with Complainant’s business.
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 will draw such inferences as the Panel 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 Complainant to 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 asserts rights in the NATWEST mark through registration with the USPTO. The Panel finds that Complainant’s registration and extensive use of the NATWEST mark for over twenty years is sufficient to establish rights 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 Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that the disputed domain name that Respondent registered, <natwest-banking.com>, is confusingly similar to Complainant’s mark. Respondent’s disputed domain name features Complainant’s entire NATWEST mark and adds the generic term “banking,” which obviously relates to the nature of Complainant’s business. The Panel finds that addition of a generic term to an otherwise identical mark fails to sufficiently distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant contends that Respondent lacks such rights or legitimate interests in the <natwest-banking.com> domain name. Where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. 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.”); see also 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”).
Complainant contends that Respondent is not commonly known by the <natwest-banking.com> domain name and is not authorized to register domain names featuring Complainant’s NATWEST mark in any way. Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests in accordance with Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant also contends that Respondent failed to make use
of the <natwest-banking.com> domain name. Moreover, Respondent failed to submit
evidence of any intention to use the disputed domain name in connection with
rights or legitimate interests. The
Panel finds that Respondent has not established rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See Flor-Jon Films, Inc. v. Larson, FA
94974 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to
develop the site demonstrates a lack of legitimate interest in the domain
name); see also L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb.
Forum May 30, 2002) (“A Respondent cannot simply do nothing and effectively
‘sit on his rights’ for an extended period of time when that Respondent might
be capable of doing otherwise.”).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant contends that Respondent’s failure to use the
disputed domain name in any way is evidence of bad faith registration and
use. The Panel finds that Respondent
registered and used the <natwest-banking.com> domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Telstra Corp. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible,
in certain circumstances, for inactivity by the Respondent to amount to the
domain name being used in bad faith.”).
The Panel finds that Complainant satisfied Policy ¶
4(a)(iii).
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-banking.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 11, 2006.
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