National Westminster Bank plc v. nat west
Claim Number: FA0705000993119
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwestbankplclondon.org>, registered with Melbourne IT, Ltd.
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 May 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 29, 2007.
On May 30, 2007, Melbourne IT, Ltd confirmed by e-mail to the National Arbitration Forum that the <natwestbankplclondon.org> domain name is registered with Melbourne IT, Ltd and that Respondent is the current registrant of the name. Melbourne IT, Ltd has verified that Respondent is bound by the Melbourne IT, 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 June 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 26, 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@natwestbankplclondon.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 2, 2007, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <natwestbankplclondon.org> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestbankplclondon.org> domain name.
3. Respondent registered and used the <natwestbankplclondon.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1968, Complainant, National Westminster Bank plc, has provided a wide variety of financial services under the NATWEST mark, including personal and business banking services and credit cards. Complainant is part of The Royal Bank of Scotland Group plc, the world’s fifth-largest financial services group. Complainant maintains websites at the following domain names: <natwest.com>, <natwestbanklondon.com>, <natwestbanklondon.org>, and <natwestbklondon.com>.
Complainant has registered the NATWEST mark in the
Respondent registered the <natwestbankplclondon.org> domain name on April 6, 2007. Respondent’s website at the disputed domain name mimics Complainant’s websites. The website prominently displays Complainant’s NATWEST mark and appears to provide contact information for Complainant and its employees. The website also contains data fields prompting Internet users to log into their accounts with Complainant.
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 NATWEST mark pursuant to Policy ¶ 4(a)(i) by virtue of its numerous trademark registrations for the mark around the world. 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 FIA Card Servs., Nat’l Ass’n v. Impulse Mktg. Group, Net OPS, FA 944261 (Nat. Arb. Forum June 18, 2007) (holding that the complainant’s trademark registrations for the PLATINUM PLUS and WORLD CLASS PLATINUM PLUS marks, which it held with the USPTO, demonstrated its rights in the marks pursuant to Policy ¶ 4(a)(i)).
The <natwestbankplclondon.org>
domain name prominently features Complainant’s NATWEST mark followed by three
terms: “bank,” a term referring to Complainant’s financial services; “plc,” the
abbreviation for “public limited company;” and “
The disputed domain name also includes the generic top-level domain (“gTLD”) “.org.” As a top-level domain is a required element of every domain name, the Panel finds that this is also not a distinguishing difference under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant maintains that Respondent has no rights or
legitimate interests in the <natwestbankplclondon.org>
domain name. Complainant bears the
initial burden of proof under Policy ¶ 4(a)(i) of making a prima facie case that Respondent lacks rights and legitimate
interests in the domain name at issue.
Once it makes a prima facie case,
the burden shifts to Respondent to show that it does have rights or legitimate
interests. See ALPITOUR S.p.A. v.
Albloushi, FA 888651
(Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii)
requires that the complainant must show that the respondent has no rights to or
legitimate interests in the subject domain name and that once the complainant
makes this showing, the burden of production shifts to the respondent to rebut
the complainant’s allegations); see also Swedish Match UK Ltd. v. Admin,
Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once
a prima facie case has been established by the complainant under Policy
¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or
legitimate interests in the disputed domain name). The Panel finds that Complainant has
fulfilled its burden of making a prima facie case, and thus the burden
is now upon Respondent to show it has rights or legitimate interests pursuant
to Policy ¶ 4(a)(i).
Because Respondent has not submitted a Response, the Panel presumes that Respondent has no rights or legitimate interests in the domain name at issue. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). Nevertheless, the Panel will still examine the record to see if Respondent can establish any rights or legitimate interests under the factors listed in Policy ¶ 4(c).
The WHOIS information lists “nat west” as the registrant of
the <natwestbankplclondon.org>
domain name, but there is no other evidence in the record suggesting that
Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent
is not commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Qwest Commc’ns Int’l,
Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The
Panel determines that, because of the fame of Complainant’s mark, Respondent
does not have rights or legitimate interests in the
<qwestcommunications.net> domain name, despite the presence of the word
‘qwest’ in the domain name registration WHOIS information.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum
Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE
ELECTRONICS mark on its web page and in its domain name . . . , there is no
evidence that Respondent is commonly known by the
<ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or
that there is any other entity besides Complainant authorized to trade as
ULTIMATE ELECTRONICS.”).
Moreover, Complainant argues that Respondent is using the <natwestbankplclondon.org> domain
name to mimic its own website and engage in a fraudulent phishing scheme. Complainant claims that Respondent’s domain
name resolves to a website prominently displaying its NATWEST mark and
prompting Internet users to enter their account information. The Panel finds that diverting Internet users
to its own website in order to fraudulently acquire their personal information
does not constitute a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed
domain name pursuant to Policy ¶ 4(c)(iii).
See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov.
11, 2004) (finding that a domain name that “is confusingly similar to
Complainant’s mark, redirects Internet users to a website that imitates
Complainant’s website, and is used to acquire personal information from
Complainant’s potential associates fraudulently” does not fall within the
parameters of Policy ¶¶ 4(c)(i) and (iii)); see
also Allianz of Am. Corp. v. Bond,
FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of
the <allianzcorp.biz> domain name to fraudulently acquire the personal
and financial information of Internet users seeking Complainant’s financial
services was not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed
domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <natwestbankplclondon.org> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii),
because the domain name resolves to an unauthorized website prompting Internet
users to enter personal and financial information, including bank account
numbers. The Panel concludes that
Respondent is engaged in phishing and that attempting to fraudulently acquire
personal information from Internet users seeking Complainant’s products and
services constitutes bad faith registration and use in violation of Policy ¶
4(a)(iii). See Wells
Fargo & Co. v.
Furthermore, Respondent’s diversion of Internet users
seeking Complainant’s products to its own website for commercial gain
constitutes bad faith registration and use under Policy ¶ 4(b)(iv), because
Respondent likely profits from redirecting consumers to its own website and is,
therefore, taking advantage of the confusing similarly between Complainant’s NATWEST
mark and the <natwestbankplclondon.org>
domain name. See H-D Michigan, Inc.
v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that
the disputed domain name was registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv) through the respondent’s registration and use of the
infringing domain name to intentionally attempt to attract Internet users to
its fraudulent website by using the complainant’s famous marks and likeness); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May
19, 2006) (holding that the respondent registered and used the
<myspacebot.com> domain name in bad faith by diverting Internet users
seeking the complainant’s website to its own website for commercial gain
because the respondent likely profited from this diversion scheme).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natwestbankplclondon.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 9, 2007
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