Coutts & Company and National Westminster Bank plc v. Webland Concepts c/o Dan Halman
Claim Number: FA0706001013539
Complainants are Coutts & Company and National
Westminster Bank plc, (collectively,
“Complainant”), represented by James A. Thomas, of Parker Poe Adams &
Bernstein LLP, Post Office Box 389, Raleigh, NC 27602. Respondent is Webland Concepts c/o Dan Halman (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <coutts-eu.com> and <natwest-eu.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 25, 2007.
On June 21, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <coutts-eu.com> and <natwest-eu.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 June 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 18, 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-eu.com and postmaster@natwest-eu.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <coutts-eu.com> domain name is confusingly similar to Complainant’s COUTTS mark and Respondent’s <natwest-eu.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <coutts-eu.com> and <natwest-eu.com> domain names.
3. Respondent registered and used the <coutts-eu.com> and <natwest-eu.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Coutts & Company and National Westminster
Bank plc, are both subsidiaries of The Royal Bank of
Respondent registered the <coutts-eu.com> and <natwest-eu.com> domain names on March 15, 2007. Both disputed domain names previously resolved to websites that are imitations of Complainant’s own websites, offering links to “Login,” “Apply Now,” and “Online Banking,” where customers were invited to reveal personal and confidential financial information. The disputed domain names no longer resolve to active websites.
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 attempts to establish rights in the COUTTS and
NATWEST marks through its registration of the marks with the USPTO. The Panel finds that Complainant’s timely
registrations of the COUTTS and NATWEST marks with the USPTO establish rights
in the marks pursuant to Policy ¶ 4(a)(i). See 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.”); 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.”).
Both disputed domain names contain Complainant’s protected marks in their entirety and add a hyphen, the geographic identifier “eu,” representing the European Union, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of punctuation such as hyphens, a geographic identifier and a gTLD to an otherwise identical mark indicates confusing similarity of the domain name to the mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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 Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence indicating that it has rights or legitimate interests in accordance with 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 Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests). The Panel finds that this Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy. See 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).
“Phishing” often involves the use of e-mails, pop-ups or links 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. In the present case, Complainant asseverates that Respondent has engaged in “phishing” through its prior use of links on their websites to presumably trick unsuspecting Internet users into revealing personal and confidential information. The Panel finds that using a domain name in a fraudulent scheme to deceive Internet users into providing their personal information is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use in accordance with 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) or (iii)); 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).
Respondent’s disputed domain names no longer resolve to
active websites. The Panel finds that
Respondent’s failure to associate content with its disputed domain names indicates
a lack of rights or legitimate interests in the domain names pursuant to Policy
¶ 4(a)(ii). See Bloomberg L.P. v. Sandhu, FA 96261
(Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests
can be found when the respondent fails to use disputed domain names in any
way); see also Nike, Inc. v. Crystal
Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate
interests where the respondent made no use of the infringing domain names).
Complainant further asserts that Respondent is not commonly known by the <coutts-eu.com> and <natwest-eu.com> domain names. Respondent provides no countervailing evidence to show that it is commonly known by the disputed domain names and nothing in Respondent’s WHOIS registration information indicates that it is commonly known by the disputed domain names. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s prior use of the disputed domain names,
attempting to pass itself off as Complainant, presumably creates confusion
among unsuspecting Internet users as to the source and affiliation of the
resulting websites. The Panel finds such
confusion, presumably performed with the intent of obtaining commercial gain,
illustrates registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the
website, offering Usag products, together with the domain name may create the
(incorrect) impression that Respondent is either the exclusive distributor or a
subsidiary of Complainant, or at the very least that Complainant has approved
its use of the domain name.”); see also Compaq Info. Techs.
Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002)
(finding that the respondent’s use of the <compaq-broker.com> domain name
to sell the complainant’s products “creates a likelihood of confusion with
Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the
website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
As indicated above, Respondent’s prior use of the disputed domain names suggested “phishing.” The Panel finds that Respondent’s use of “phishing” to extract personal information from unwary Internet users suggests registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
Respondent is currently failing to associate any content with its disputed domain names. The Panel finds that the absence of content on Respondent’s disputed domain names evinces 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.”).
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 <coutts-eu.com> and <natwest-eu.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: August 1, 2007
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