National Australia Bank Limited v. Names24.world et al.
Claim Number: FA1801001768694
Complainant: National Australia Bank Limited of Perth, Australia.
Complainant Representative:
Respondent: Names24.world of Lower Plenty, Australia
Respondent Representative: Steven Rinehart of Salt Lake City, Utah, United States of America
REGISTRIES and REGISTRARS
Registries: Fox Castle, LLC; June Woods, LLC; Just Cover, LLC; Outer McCook, LLC; Pioneer Willow, LLC; Trixy Oaks, LLC; Wild Way, LLC
Registrars: eNom, LLC
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Petter Rindforth, as Examiner.
Complainant submitted: January 24, 2018
Commencement: January 25, 2018
Response Date: February 9, 2018
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain names be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Examiner finds that the Complainant has established trademark rights in the NAB trademark, including:
- Australian National Trademark registration No 1053282 NAB (word), filed on May 2, 2005, and renewed until May 2, 2025, covering goods and services in Classes 9, 16, 35, 36, 38, 41 and 42.
- Australian National Trademark registration No 1642867 nab (word), filed on August 25, 2014, and valid until August 25, 2024, covering goods and services in classes 9 and 36.
The Complainant has provided evidence of use of the trademark, as registered by the Trademark Clearinghouse.
The Respondent registered <nab.financial> on July 16, 2015; <nab.insure> on July 13, 2015; <nab.international> on July 15, 2015; <nab.life> on July 13, 2015; <nab.loans> on August 5, 2015; <nab.money> on July 16, 2016; and <nab.services> August 11, 2015.
Legal Findings and Conclusion:
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid Australian National Trademark registration No 1053282 NAB (word), as well as other active registrations, and as NAB is a trademark that is in current use.
The relevant part of the disputed domain names are <nab>, as the added top-level domains – being a required element of every domain name – are generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark. However, see also the Examiners note below on “No rights or legitimate interests” as well as “Bad faith registration and use”.
The Examiner conclude that the disputed domain names <nab.financial>, <nab.insure>, <nab.international>, <nab.life>, <nab.loans>, <nab.money>, and <nab.services> are identical to the Complainant's trademark NAB.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in <nab.financial>, <nab.insure>, <nab.international>, <nab.life>, <nab.loans>, <nab.money>, or <nab.services>, as the Complainant has not authorized the Respondent to register any domain names containing its registered and used trademark NAB, nor is the Respondent commonly known by <nab.financial>, <nab.insure>, <nab.international>, <nab.life>, <nab.loans>, <nab.money>, or <nab.services>.
The question remains whether the Complainant has shown that the Respondent has no legitimate interests in any of the disputed domain names.
The Respondent states that the disputed domain names were registered only because of their value as three-letter generic domain names, as “like all registrars and reseller, the Respondent is interested in three-letter gTLDs which are commonly sought by new and existing businesses”.
The Examiner notes that the Complainant has argued that the Respondent has also registered other domain names comprising well known trademarks of third parties, and that the Respondent has not denied this as a fact.
The Examiner further notes that both the Complainant and the Respondent resides in Australia.
Finally, the Examiner notes that at least four of the disputed domain names are registered under top-level domains that clearly are related to the Complainant’s business, namely “financial”, “insure”, “loans” and “money”.
Referring to the Respondent’s statement that Respondent is interested in three-letter gTLDs which are “commonly sought by… existing businesses”, the Examiner concludes that the Respondent registered the disputed domain names with full knowledge of the Complainant’s prior trademarks rights and with the clear aim to sell them to the Complainant. Such registration and use cannot establish any legitimate interests.
Accordingly, the Examiner find that the Complainant has established that the Respondent has no rights or legitimate interests in <nab.financial>, <nab.insure>, <nab.international>, <nab.life>, <nab.loans>, <nab.money>, or <nab.services>.
BAD FAITH REGISTRATION AND USE
As noted above: both the Complainant and the Respondent resides in Australia, and the Respondent’s business idea is to register domain names commonly sought by new and existing businesses.
The Respondent has claimed that NAB is a commonly used expression the world over, concluding that NAB is not specifically related to the Complainant. Respondent has referred to four French national trademark registrations; however the Examiner cannot see that any of them cover NAB as a single word trademark.
The Respondent has further referred to a trademark search for USA, claiming that the result shows 203 trademarks containing the word NAB. The Respondent has not provided the full list, however already at the first page of the list of those trademarks, the Examiner concludes that i) some of the registrations have expired, and ii) a number of the other trademarks consists of words were the letters “-nab-“ can only be find as a part of a word, thereby forming a completely different word.
Finally, the Respondent refers to 301 UK trademarks, “containing the word NAB”. The Examiner has carefully studied the list provided by the Respondent, and could only see that the majority of the list referred to trademarks like ABN, BNA, and ABN AMBRO.
These lists thereby do not support the Respondent’s argument that NAB is an acronym commonly used to describe many organizations other than the Complainant.
Further, both parties are based in Australia, and it is rather clear that the Complainant has a distinctive trademark right to NAB as a single word trademark in Australia, and that Respondent registered the disputed domain names with full knowledge of these prior rights.
<nab.financial>, <nab.insure>, <nab.loans>, and <nab.money> are – in combination with their respective top-level domains – clearly and directly referring to the Complainant and the Complainant’s business.
<nab.international> and <nab.services> are registered with general business indicated top-level domains. If such combination is indicating anything at all, it is only that they are related to the “international” “business” service provided by the Complainant.
Only <nab.life> may refer to something else. However, the Examiner notes that the .life top-level domain was delegated to the Root Zone of the DNS on May 15, 2014, with general availability from September 17, 2014, whereas <nab.life> was registered on July 13, 2015 together with the rest of the disputed domain names. The Examiner therefore cannot make any other conclusion than that also <nab.life> was registered in bad faith, with the aim to be related to the Complainant.
In the Respondent’s reply of November 29, 2017, to the Complainant’s request for transfer of the disputed domain names, the Respondent states that <nab.financial>, <nab.insure>, <nab.international>, <nab.life>, <nab.loans>, <nab.money>, and <nab.services> “are available for purchase”, and that “the ownership of a wide range of NAB domain names would be of value for National Australia Bank to support its business and to further develop its worldwide internet presence”. “Domain names by their nature have an important functional use directing all users to a chosen business and/or website”. The Respondent – referring to the “intrinsically high value” of the disputed domain names - then asking the Complainant to provide an offer in order to buy the disputed domain names.
These actions also clearly shows that the Respondent has registered and is using <nab.financial>, <nab.insure>, <nab.international>, <nab.life>, <nab.loans>, <nab.money>, and <nab.services> primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to the Complainant who is the owner of the NAB trademark, for valuable consideration in excess of documented out-of pocket costs directly related to the domain names.
The Examiner concludes that the Respondent has both registered and is using the disputed domain names <nab.financial>, <nab.insure>, <nab.international>, <nab.life>, <nab.loans>, <nab.money>, and <nab.services> in bad faith.
The Respondent contends that the Complaint was brought in an abuse of the URS process or contains material falsehoods, as the Complainant had no bona fide basis for commencing the proceeding.
Referring to the facts, comments and documentation provided by both the Complainant and the Respondent, as well as referring to the conclusions above, the Examiner does not agree with the Respondent.
It is rather clear that it is the Respondent that have no rights or legitimate interests in the disputed domain names, and also have registered and used <nab.financial>, <nab.insure>, <nab.international>, <nab.life>, <nab.loans>, <nab.money>, and <nab.services> in bad faith.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
Petter Rindforth, Examiner
Dated: February 09, 2018
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