National Westminster Bank plc v. Natty Westy
Claim Number: FA0704000973530
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
NAME
The domain name at issue is <natwestbk-international.net>, registered with Tucows Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2007.
On April 30, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <natwestbk-international.net> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 May 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 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@natwestbk-international.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a leading financial institution based in the
In connection with the provision of these services, Complainant has registered a number of marks with the United States Patent and Trademark Office (“USPTO”) including the NATWEST service mark (Reg. No. 1,241,454, issued June 7, 1983).
Respondent registered the disputed domain name on January 12, 2007.
The disputed domain name, prior to March 16, 2007, resolved to a website designed to be a facsimile of Complainant’s own website.
The disputed domain name currently resolves to no content.
Respondent’s <natwestbk-international.net> domain name is confusingly similar to Complainant’s NATWEST mark.
Respondent does not have any rights or legitimate interests in the domain name <natwestbk-international.net>.
Respondent registered and uses the disputed <natwestbk-international.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of its NATWEST service mark with
the USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). 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.”
Respondent’s <natwestbk-international.net> domain
name incorporates Complainant’s mark in its entirety, and merely adds an
abbreviation for the word “bank,” and the word “international,” which describe
Complainant’s business. Moreover, the
addition of a hyphen between the abbreviation for “bank” and the word
“international” does nothing to render the disputed domain name sufficiently
distinct from Complainant’s mark. The
disputed domain name also contains the generic top-level domain (“gTLD”)
“.com.” These changes do not avoid a
finding of confusing similarity of the domain name to the mark pursuant to
Policy ¶ 4(a)(i).
See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
Sept. 27, 2002) (“[I]t is a well established principle that generic top-level
domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where a respondent’s domain name combines a
complainant’s mark with a generic term that has an obvious relationship to that
complainant’s business); further see Health Devices Corp. v.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Where Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence illustrating that it possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest nonetheless exists).
Complainant alleges, and Respondent does not deny, that, prior to March 16, 2007, the disputed domain name resolved to a website designed to be a facsimile of Complainant’s website. We may presume that the purpose of Respondent’s subterfuge was to collect personal identification information from unsuspecting Internet users, thus engaging in a practice commonly referred to as “phishing.” Respondent’s use of the disputed domain name registration in such a manner is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
It is likewise undisputed on the record before us that the disputed domain name currently resolves to a website containing no content. The Panel finds that Respondent’s current inactive use of the disputed domain name suggests that Respondent lacks all rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000): (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).
Complainant further asserts that there is no evidence that Respondent has ever been commonly known by the disputed domain name. Indeed, Respondent’s WHOIS registration information reveals that “Natty Westy” is the registrant of the disputed domain name. In the absence of countervailing evidence, we conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting a claim that a respondent was commonly known by the “Krylon” nickname because there was no evidence indicating when the alleged nickname was adopted and how it was used); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
There is no dispute that Respondent’s previous use of the disputed domain name was to engage in phishing. Such use demonstrates registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004): “The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.” See also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a respondent registered and used a domain name in bad faith where it redirected Internet users to a website that imitated a complainant’s website fraudulently to acquire personal information from that complainant’s potential associates).
Respondent’s current use of the disputed domain name registration fails to associate content with the resulting website. The Panel finds that Respondent’s non-use of the disputed domain name registration evidences registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000): “[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
Finally under this heading, it appears that Respondent
registered the domain name <natwestbk-international.net>
with at least constructive knowledge of
Complainant’s rights in the NATWEST
service mark by virtue of Complainant’s
prior registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <natwestbk-international.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 6, 2007
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