Coutts & Company v. Coutss Inc c/o Clemment Clay
Claim Number: FA0703000934720
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 <couttsandcoworld.net> and <couttsandcoworld.com>, registered with Go Daddy Software, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 12, 2007.
On
On June 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 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@couttsandcoworld.net and postmaster@couttsandcoworld.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 <couttsandcoworld.net> and <couttsandcoworld.com> domain names are confusingly similar to Complainant’s COUTTS & CO mark.
2. Respondent does not have any rights or legitimate interests in the <couttsandcoworld.net> and <couttsandcoworld.com> domain names.
3. Respondent registered and used the <couttsandcoworld.net> and <couttsandcoworld.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Coutts & Company, is the international
private banking division of The Royal Bank of Scotland Group Plc. Complainant maintains offices around the
world and services over 100,000 clients, to which it provides private banking,
credit card, investment, wealth management, and electronic banking
services. Coutts Online Banking is
Complainant’s secure online banking service and is located at the
<coutts.com> domain name (registered on
Complainant has registered the following marks with the
United Kingdom Patent Office (“UKPO”): COUTTS (Reg. No. 1,300,775 issued
November 15, 1989), COUTTS & CO (Reg. No. 1,281,344 issued February 7,
1990), COUTTS WORLD (Reg. No. 2,371,492 issued May 20, 2005), and COUTTS IN
YOUR WORLD (Reg. No. 2,248,950 issued April 25, 2001). Complainant has also registered the COUTTS
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,096,845 issued September 16, 1997; Reg. No. 2,098,866 issued September 23,
1997) and the Office for Harmonization in the Internal Market (“OHIM”) (Reg.
No. 4,275,971 issued
Respondent’s <couttsandcoworld.net> and <couttsandcoworld.com> domain names, which it registered on July 26, 2006, both resolve to a website prominently displaying Complainant’s COUTTS & CO mark and related logos with the banner “Welcome to Coutts and Co Website.” The website also contains data fields prompting Internet users to enter their account information with Complainant and to contact Complainant at Respondent’s e-mail address. Upon Complainant’s information and belief, Respondent’s website is part of an “advanced fee fraud” scheme, whereby Respondent has sent e-mails to Complainant’s customers claiming that Complainant has over $15 million left over in an account from someone killed in the Israeli Palestinian conflict. The e-mail appears to be sent by one of Complainant’s employees and urges Internet users to divulge their personal and financial information in hopes of receiving a portion of this leftover money.
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’s trademark registrations for the COUTTS, COUTTS
& CO, COUTTS WORLD, and COUTTS IN YOUR WORLD marks with the UKPO, and other
trademark authorities around the world, are sufficient for it to establish
rights in the marks pursuant to Policy ¶ 4(a)(i). See Royal
Bank of Scotland 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 ESPN,
Inc. v. MySportCenter.com, FA
95326 (Nat. Arb. Forum
Respondent’s <couttsandcoworld.net>
and <couttsandcoworld.com>
domain names each contain Complainant’s COUTTS & CO mark and add the term
“world” and the generic top-level domain (“gTLD”) “.com.” Respondent also replaces the ampersand with
the conjunction “and,” its phonetic equivalent.
The panel in LFP
IP, LLC v. Identity Consultancy, FA 969417 (Nat. Arb. Forum June 7,
2007) found the <tipsandtricks.com> domain name and TIPS & TRICKS
mark to be identical pursuant to Policy ¶ 4(a)(i), as did the panel in Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) with regards to
the <wrightandlato.com> domain name and the WRIGHT & LATO mark,
because the ampersand symbol is not reproducible in a URL. Because none of the alterations Respondent
has made sufficiently differentiate the disputed domain names from the COUTTS
& CO mark, the Panel finds that the <couttsandcoworld.net> and <couttsandcoworld.com>
domain names are confusingly similar to the mark pursuant to Policy ¶
4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696
(Nat. Arb. Forum Sept. 21, 2004)
(finding that the addition of the generic term “collection” to Complainant’s
HARRY POTTER mark failed to distinguish the domain name from the mark); see also Google Inc. v.
Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001) (finding that the respondent’s domain names were
confusingly similar to Complainant’s GOOGLE mark where the respondent merely
added common terms such as “buy” or “gear” to the end); see also 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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its allegations before the burden of proof can shift to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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); see also 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). In the instant proceeding, Complainant has satisfied its burden of making a prima facie case, and thus the burden is now upon Respondent.
Respondent has failed to submit a Response. Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the domain names at issue. See 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will still consider the available evidence to see if Respondent has any rights or legitimate interests with respect to the factors listed in Policy ¶ 4(c).
Respondent has listed itself as “Coutss Inc c/o Clemment
Clay” in the WHOIS database, but there is no other evidence pointing to
Respondent being commonly known by the <couttsandcoworld.net>
and <couttsandcoworld.com>
domain names. In fact, Respondent’s name
is simply a misspelled variation of Complainant’s COUTTS mark, dispelling any
likelihood that it is commonly known by the disputed domain names. Complainant has also not authorized or
licensed Respondent to register domain names containing its registered COUTTS
mark. Consequently, the Panel finds that
Respondent is not commonly known by the disputed domain names pursuant to
Policy ¶ 4(c)(ii).
See Valiant
Trust Co. v. Valiant Trust, FA 844658 (Nat. Arb. Forum
Furthermore, Respondent’s <couttsandcoworld.net>
and <couttsandcoworld.com>
domain names, which are confusingly similar to Complainant’s COUTTS mark,
resolve to a fraudulent website that appears similar to Complainant’s own
website and purports to offer financial services. Respondent is apparently attempting to pass
itself off as Complainant and acquire the personal and financial information of
Complainant’s customers in an alleged “advanced fee fraud” scheme. The Panel finds that Respondent is engaged in
a fraudulent phishing scheme, which does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Bank for Int’l Settlements v. BFIS, D2003-0984 (WIPO
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent appears to be engaged in a fraudulent phishing
scheme, whereby it displays a website at the confusingly similar domain names
that appears similar to Complainant’s website at the <coutts.com> domain
name and prompts Internet users to enter their account information. Respondent has also apparently sent e-mails
to Complainant’s customers directing them to this website in furtherance of an
“advanced fee fraud” scheme. In Gaming Board for Great Britain v. gaming
board, D2004-0739 (WIPO Oct. 18,
2004), the panel found an e-mail which referred to the respondent’s website in
association with a fraudulently established company constituted strong evidence
that the disputed domain name had been registered and used in bad faith by the
respondent. Furthermore, in Finter Bank Zurich v. WangDaShi, D2006-0044
(WIPO
Moreover, Respondent has registered and is using the <couttsandcoworld.net> and <couttsandcoworld.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(iv), because it is
fraudulently diverting Internet users seeking Complainant’s financial services
to its own website and profiting from the goodwill associated with the COUTTS
& CO mark by passing itself off as Complainant. 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 <couttsandcoworld.net> and <couttsandcoworld.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: July 18, 2007
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