National Westminster Bank plc v. Register Register c/o Register Register
Claim Number: FA0611000857543
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 Register Register c/o Register Register (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwestbanklondon.org>, registered with Tucows.
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 November 29, 2006; the National Arbitration Forum received a hard copy of the Complaint December 1, 2006.
On November 30, 2006, Tucows confirmed by e-mail to the National Arbitration Forum that the <natwestbanklondon.org> domain name is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 December 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 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@natwestbanklondon.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 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, <natwestbanklondon.org>, is confusingly similar to Complainant’s NATWEST mark.
2. Respondent has no rights to or legitimate interests in the <natwestbanklondon.org> domain name.
3. Respondent registered and used the <natwestbanklondon.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, offers a wide variety of financial services under the NATWEST mark, including personal and business banking services and credit cards. Complainant has more than 7.5 million personal customers and more than 850,000 small business accounts. When combined with its owner, the Royal Bank of Scotland Group plc, Complainant is part of the fifth-largest financial services company in the world.
Complainant registered the NATWEST mark with 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) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983).
Respondent registered the <natwestbanklondon.org> domain name July 24, 2006. Until November 15, 2006, the disputed domain name resolved to Respondent’s website that offered competing financial services. Since November 15, the disputed domain name has resolved to a blank page displaying the text: “the site you requested has been disabled.”
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.
By registration of the NATWEST mark with the UKPO and the USPTO, Complainant has demonstrated its rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also The Royal Bank of Scotland Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The disputed domain
name, <natwestlondonbank.org>, contains Complainant’s entire
NATWEST mark and simply adds the terms “
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 domain name
that contains Complainant’s protected mark.
Complainant contends that Respondent lacks such rights to and legitimate
interests in the <natwestlondonbank.org> domain name. Complainant must first make a prima facie case
in support of its allegations, and once it does so, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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); see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <natwestlondonbank.org>
domain name. See BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”); 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).
In addition, the WHOIS information lists the registrant of
the <natwestlondonbank.org> domain name as “Register Register c/o
Register Register,” and no other evidence in the record indicates that
Respondent is commonly known by the disputed domain name. Hence, Respondent does not have rights or
legitimate interests in the <natwestlondonbank.org> domain name
under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Coppertown Drive-Thru Systems,
LLC v. Snowden, FA 715089 (Nat.
Arb. Forum Jul. 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The Panel also finds that
Respondent has not used the <natwestlondonbank.org> domain name
for a bona fide offering of goods or services under Policy ¶ 4(c)(i) and
has not shown a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). By using the disputed domain
name to redirect Internet users to Respondent’s own financial services website,
which attempts to compete with Complainant, Respondent is not making a bona
fide use. Further, the blank page that
is currently at the site also does not constitute a bona fide use. In Glaxo
Group Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003), respondent registered the <wwwzyban.com> domain
name and was redirecting Internet users to a pharmaceutical site offering
products that competed with Complainant.
The panel held that the respondent was not using the domain name within
the parameters of Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith by knowingly registering and using Complainant’s protected mark in a domain name, <natwestlondonbank.org>, and then by using the domain name first, to redirect Internet users to Respondent’s competing website, potentially disrupting Complainant’s business and secondly, to hold as an inactive page. Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Industries, Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Peter Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 23, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Respondent has used the <natwestlondonbank.org>
domain name in the past to divert Internet users to its own competing financial
services website. In Dell Inc. v.
Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005), the
respondent was using the <dellcomputerssuck.com> domain name to divert
Internet users to respondent’s website displaying links to competing computer
products and services. The panel found
that the respondent’s use constituted bad faith registration and use under
Policy ¶ 4(b)(iv).
In addition, Respondent took down its website at the disputed domain name on November 15, 2006, and has not used the disputed domain name since that date. Such non-use also supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel stated in Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000), “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” See also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to use a domain name satisfied the requirement of ¶ 4(a)(iii) of the Policy).
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 <natwestbanklondon.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 12, 2007.
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