Coutts & Company v. Mohammed Sumali
Claim Number: FA0705000995629
Complainant is Coutts & Company (“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 <coutts-co-uk.com> and <couttsco-uk.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On May 31, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <coutts-co-uk.com> and <couttsco-uk.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 June 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 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@coutts-co-uk.com and postmaster@couttsco-uk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <coutts-co-uk.com> and <couttsco-uk.com> domain names are confusingly similar to Complainant’s COUTTS mark.
2. Respondent does not have any rights or legitimate interests in the <coutts-co-uk.com> and <couttsco-uk.com> domain names.
3. Respondent registered and used the <coutts-co-uk.com> and <couttsco-uk.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Coutts &
Co., is a well-established financial institution based in the
Respondent, Mohammed Sumali, registered the <coutts-co-uk.com> and <couttsco-uk.com>
domain names on
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 established rights in the COUTTS mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the UKPO and the
USPTO. See Royal
Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb.
22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK
OF SCOTLAND mark with the United Kingdom Patent Office as evidence of
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
The <coutts-co-uk.com>
and <couttsco-uk.com>
domain names incorporate Complainant’s entire COUTTS
mark and add hyphens and the descriptive and geographic abbreviations
“co” and “uk,” which stand for “company” and “United Kingdom,” respectively. Complainant’s full business name is “Coutts
& Company,” and Complainant’s principal place of business is in the
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant claims that Respondent has no rights or legitimate interests in the <coutts-co-uk.com> and <couttsco-uk.com> domain names. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). In this case, Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results
in its failure to meet its burden, but also will be viewed as evidence itself
that Respondent lacks rights and legitimate interests in the disputed domain
name.”); see also Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution
Sept. 23, 2000) (finding no rights or legitimate interests where no such right
or interest was immediately apparent to the panel and the respondent did not
come forward to suggest any right or interest it may have possessed). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent is not commonly known by the <coutts-co-uk.com> and <couttsco-uk.com>
domain names, because the WHOIS information lists “Mohammed Sumali” as the
registrant of the domain names, and there is no other evidence in the record
suggesting that Respondent is commonly known by the disputed domain names. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July
7, 2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also M. Shanken
Commc’ns v. WORLDTRAVELERSONLINE.COM,
FA 740335 (Nat. Arb. Forum
Furthermore, Respondent’s <coutts-co-uk.com> and <couttsco-uk.com> domain names previously resolved to a website similar in appearance to Complainant’s website that prompts Internet users to enter personal and financial information. Consequently, the Panel finds that Respondent was engaged in “phishing,” which constitutes 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 ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the respondent’s diversion of Internet users to a third-party website for the purpose of fraudulently acquiring their personal information constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”).
Moreover, the evidence in the record indicates that Respondent’s <coutts-co-uk.com> and <couttsco-uk.com> domain names do not currently resolve to an active website. The lack of any demonstrable preparations to use the disputed domain names in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use allows the Panel to conclude Respondent has not demonstrated rights or legitimate interests in the <coutts-co-uk.com> and <couttsco-uk.com> domain names pursuant to Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The evidence on record
suggests that Respondent previously used the disputed domain names in
connection with a “phishing” scheme seeking to obtain personal and financial information
from Internet users. Thus, the Panel
finds that Respondent’s conduct indicates bad faith registration and use
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 Capital One Fin. Corp. v. Howel,
FA 289304 (Nat. Arb. Forum
Additionally, Respondent’s failure to currently use the <coutts-co-uk.com> and <couttsco-uk.com> domain names in any way is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s non-use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); 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.”).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <coutts-co-uk.com> and <couttsco-uk.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
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