National Westminster Bank plc v. Louise Short
Claim Number: FA0802001152426
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwestcarhire.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2008.
On February 19, 2008, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the National Arbitration Forum that the <natwestcarhire.com> domain name is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the name. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.com 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 February 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 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@natwestcarhire.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
OnMarch 21, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <natwestcarhire.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestcarhire.com> domain name.
3. Respondent registered and used the <natwestcarhire.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, provides a full range of financial services to individuals and businesses. Complainant has registered its NATWEST mark with multiple governmental agencies. Complainant provided evidence of several of its NATWEST mark registrations including its registration with: (1) the United Kingdom Intellectual Property Office (“UKIPO”) on January 2, 1975 (Reg. No. 1,021,601); (2) the United States Patent and Trademark Office (“USPTO”) on June 7, 1983 (Reg. No. 1,241,454); and (3) the Office of Harmonization for the Internal Market (“OHIM”) on April 18, 2006 (Reg. No. 4,319,067).
Respondent’s <natwestcarhire.com> domain name was registered on June 7, 2007. Respondent’s disputed domain name resolves to a website which offers car rental booking services unrelated to 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 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 provided extrinsic evidence of the registration of its NATWEST mark with the UKIPO, the USPTO and the OHIM. The Panel finds this evidence sufficiently establishes Complainant’s rights in its NATWEST mark pursuant to Policy ¶ 4(a)(i). See 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."); 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 <natwestcarhire.com>
domain name incorporates Complainant’s NATWEST mark as the dominant element of
the disputed domain name, with the mere addition of the generic terms “car” and
“hire.” Additionally, Respondent’s
disputed domain name includes the generic top-level domain (gTLD) “.com,” which
is not relevant in determining whether a disputed domain name is confusingly
similar to a mark. Thus, the Panel finds
Respondent’s <natwestcarhire.com>
domain name is confusingly similar to Complainant’s NATWEST mark pursuant to
Policy ¶ 4(a)(i).
See Arthur Guinness Son
& Co. (
Thus, the Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these
allegations, the burden shifts to Respondent to establish it does have rights
or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant has presented a sufficient prima facie case to support its allegations. Respondent failed to submit a response to
these proceedings. Therefore, the Panel
may assume Respondent does not have rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will inspect the record
and determine whether Respondent has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Respondent’s <natwestcarhire.com>
domain name resolves to a website which offers car rental booking
services. Respondent’s use of the
disputed domain name diverts Internet users looking for Complainant’s financial
services to Respondent’s unrelated car rental business. The Panel finds Respondent’s diversionary use
is 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). See Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003)
(“Respondent's use of a domain name confusingly similar to Complainant’s mark
to divert Internet users to websites unrelated to Complainant's business does
not represent 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).”); see also Seiko Kabushiki Kaisha v. CS into Tech,
FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”).
In addition, Respondent does not appear to be commonly known
by the <natwestcarhire.com>
domain name. The WHOIS information lists
Respondent as “Louise Short.” Also, the
record does not indicate Respondent has ever been authorized to use
Complainant’s NATWEST mark. Therefore,
the Panel finds Respondent does not have rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii)
because Respondent is not commonly known by the disputed domain name. 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Thus, the Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s confusingly similar <natwestcarhire.com> domain name resolves to a website
which offers Respondent’s car rental booking services to Internet users. This use of Complainant’s mark in
Respondent’s disputed domain name creates a likelihood of confusion among
Internet users as to the source sponsorship, affiliation or endorsement of the
content of the website resolving from Respondent’s disputed domain name. Thus, Respondent is attempting to profit from
its use of the confusingly similar disputed domain name. The Panel finds this conduct constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v.
Thus, 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 <natwestcarhire.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 4, 2008
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