national
arbitration forum
DECISION
National Westminster Bank plc v. onlineco
Claim
Number: FA0703000938025
PARTIES
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 onlineco (“Respondent”), 8394
fifth avenue, New York, NY 10104, AU.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <natwestco-online.com>, registered
with Enetica Pty Ltd.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on March 15, 2007;
the National Arbitration Forum received a hard copy of the Complaint on March 16, 2007.
On March 27, 2007,
Enetica Pty Ltd confirmed by e-mail to
the National Arbitration Forum that the <natwestco-online.com>
domain name is registered with Enetica Pty Ltd
and that Respondent is the current registrant of the name. Enetica Pty
Ltd has verified that Respondent is bound by the Enetica Pty Ltd 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 March 30, 2007,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of May 19, 2007 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@natwestco-online.com by
e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On April 24, 2007, pursuant to Complainant's
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., 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.
RELIEF SOUGHT
Complainant requests that the domain
name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the
following assertions:
1. Respondent’s
<natwestco-online.com>
domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent
does not have any rights or legitimate interests in the <natwestco-online.com> domain name.
3. Respondent
registered and used the <natwestco-online.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, National Westminster Bank plc, holds
registrations for the NATWEST mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983) and with the United
Kingdom Patent Office (“UKPO”) (Reg. No. 1,021,601 filed December 3, 1973 ), as well
as in numerous other international jurisdictions. Complainant is a
leading international financial institution and utilizes the NATWEST mark in
connection with offering an array of financial services, including credit cards
and personal and business banking services. Complainant’s customers use
personal information, such as names and passwords, to gain access to online
banking services, including account information.
Respondent registered the <natwestco-online.com>
domain name on September
27, 2006. Respondent is using the disputed domain name to
operate a website that mimics the content of Complainant’s genuine website,
implies that it is the genuine website of Complainant, and solicits Internet
users to enter their personal information such as account numbers and pin
numbers.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant has established rights in the NATWEST mark
through registration with the USPTO and the UKPO. 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb.
Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”).
Respondent’s <natwestco-online.com>
domain name is confusingly similar to Complainant’s marks. The disputed domain name contains
Complainant’s entire NATWEST mark and adds the letters “co,” a hyphen and the
term “online.” The Panel finds that
Respondent has not distinguished its domain name from Complainant’s mark for
purposes of Policy ¶ 4(a)(i). See
Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a respondent
does not create a distinct mark but nevertheless renders the domain name
confusingly similar to the complainant’s marks); see also Health
Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003)
(“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination
of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Broadcom
Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the
<broadcomonline.com> domain name is confusingly similar to the
complainant’s BROADCOM mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
According to Policy ¶ 4(a)(ii), Complainant must initially
demonstrate that Respondent lacks rights or legitimate interests with regard to
the disputed domain name. Once Complainant sufficiently establishes a prima facie case, however, the burden
shifts to Respondent to demonstrate that it has rights or legitimate interests
in connection with the disputed domain name under Policy ¶ 4(a)(ii). 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 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).”). The Panel finds that Complainant has demonstrated a prima facie case and will examine the
evidence on record to determine whether Respondent has any rights or legitimate
interests with respect to the disputed domain name pursuant to Policy ¶
4(c).
The Panel finds that Respondent does not have rights or
legitimate interests in the <natwestco-online.com>
domain name. Respondent is using the
disputed domain name to operate a website that mimics the content of
Complainant’s legitimate website. By
passing itself off as Complainant, Respondent attempts to gain personal
information from Internet users for the purpose of defrauding Complainant’s
customers. In Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002),
the panel found that the respondent lacked rights or legitimate interests in
the disputed domain name as it essentially copied the complainant’s website in
order to steal account information from the complainant’s customers. Additionally in Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003), the panel found that
the respondent’s attempt to profit from the disputed domain name by passing
itself off as the complainant “is neither a bona fide offerings [sic] of goods
or services, nor an example of a legitimate noncommercial or fair use under
Policy ¶¶ 4(c)(i) & (iii) . . . .”
As such, in the instant case, the Panel finds that Respondent is not
using the <natwestco-online.com>
domain name in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Moreover, Based upon the evidence on record, the Panel finds
that Respondent is not commonly known by the <natwestco-online.com>
domain name pursuant to Policy ¶ 4(c)(ii). Complainant contends that
Respondent is not associated with Complainant, and is not authorized by
Complainant to use the NATWEST mark. Moreover, Respondent’s WHOIS
information does not indicate that Respondent is commonly known by the disputed
domain name. Consequently, the Panel finds that the evidence fails to
demonstrate that Respondent is commonly known by the <natwestco-online.com> domain name under Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat.
Arb. Forum Feb.
10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is using the <natwestco-online.com>
domain name to operate a website that mimics Complainant’s legitimate website
for the purpose of gaining access to Internet users’ personal information with
the intention to defraud Complainant’s customers. The Panel finds that Respondent registered
and is using the <natwestco-online.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Am.
Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that
the disputed domain name was registered and used in bad faith where the
respondent hosted a website that “duplicated Complainant’s mark and logo,
giving every appearance of being associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the AIG
mark”); see also Vivendi Universal Games
v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where
the complainant’s mark was appropriated at registration, and a copy of the
complainant’s website was used at the domain name in order to facilitate the
interception of the complainant’s customer’s account information, the
respondent’s behavior evidenced bad faith use and registration of the domain
name).
Moreover, the Panel finds that Respondent’s use is likely to
cause confusion as to Complainant’s sponsorship of and affiliation with the <natwestco-online.com> domain
name. The Panel finds that Respondent
has further shown bad faith registration and use under Policy ¶ 4(b)(iv). See Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on
its website and offering identical services as those offered by the
complainant); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natwestco-online.com> domain name be
TRANSFERRED from Respondent to Complainant.
James
A. Carmody, Esq., Panelist
Dated: May 2, 2007
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