National Westminster Bank plc v. NOLDC, Inc.
Claim Number: FA0611000853697
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <natwestbank-international.com> and <nwestbankinternational.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 28, 2006.
On November 28, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <natwestbank-international.com> and <nwestbankinternational.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 November 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 19, 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@natwestbank-international.com and postmaster@nwestbankinternational.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <natwestbank-international.com> and <nwestbankinternational.com> domain names are confusingly similar to Complainant’s NATWEST and NATWEST BANKLINE marks.
2. Respondent does not have any rights or legitimate interests in the <natwestbank-international.com> and < nwestbankinternational.com> domain names.
3. Respondent registered and used the <natwestbank-international.com> and <nwestbankinternational.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the <natwestbank-international.com> and <nwestbankinternational.com> domain names on May 18, 2006 and November 12, 2005, respectively. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring links to commercial third-party websites offering financial services in competition with Complainant. Examples of these links include “loans,” “credit cards” and “financial planning.”
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 holds registrations with the USPTO and the UKPO
for the NATWEST and NATWEST BANKLINE marks that significantly predate
Respondent’s registration of the disputed domain name. The Panel finds
that Complainant has established rights in the NATWEST and NATWEST BANKLINE
marks pursuant to Policy ¶ 4(a)(i) through
registration of the marks. 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 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.”).
Complainant contends that Respondent’s <natwestbank-international.com> and <nwestbankinternational.com>
domain names are confusingly similar to Complainant’s marks. Respondent’s <natwestbank-international.com> domain name features Complainant’s entire NATWEST mark and adds the
generic terms “bank” and “international” as well as a hyphen. Moreover, Respondent’s <nwestbankinternational.com>
domain name retains the dominant features of Complainant’s NATWEST mark but
omits the letters “a” and “t” and adds the terms “bank” and
“international.” The Panel finds that
Respondent’s disputed domain names are confusingly similar to Complainant’s
marks for purposes of Policy ¶ 4(a)(i). See Health Devices Corp.
v.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent lacks all rights or legitimate interests in the <natwestbank-international.com> and <nwestbankinternational.com> domain names. In instances 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 names. See 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 using its disputed
domain names to resolve to websites that feature links to various competing and
related commercial websites from which Respondent presumably receives referral
fees. The Panel finds that Respondent’s
use is neither a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use pursuant to Policy ¶ (c)(iii). See
Computer Doctor Franchise Sys., Inc.
v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that
the respondent’s website, which is blank but for links to other websites, is not
a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services).
Moreover, Complainant contends that Respondent is neither
commonly known by the <natwestbank-international.com> and <nwestbankinternational.com> domain names nor authorized to register domain names
featuring Complainant’s NATWEST and NATWEST BANKLINE marks in any way. In the absence of evidence suggesting
otherwise, the Panel finds that Respondent has not established rights or legitimate
interests in accordance with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the domain name precede
the respondent’s registration; (3) the respondent is not commonly known by the
domain name in question).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends that Respondent is using the <natwestbank-international.com> and <nwestbankinternational.com> domain names to operate websites that provide Internet users with links to various competing financial services websites. The Panel finds that Respondent’s use constitutes a disruption of Complainant’s business and evinces bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Furthermore, Respondent’s use will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting websites. The Panel finds that such use of domain names for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
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 <natwestbank-international.com> and <nwestbankinternational.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 5, 2007
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