National Westminster Bank plc v. Isidro Vera c/o Vera & Frank Invest
Claim Number: FA0802001145779
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ntwestaccess.org>, 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 February 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 15, 2008.
On February 15, 2008, Tucows Inc confirmed by e-mail to the National Arbitration Forum that the <ntwestaccess.org> 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 February 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 6, 2008 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@ntwestaccess.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 14, 2008, 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 financial institution based in the
Since 1968, Complainant has operated under the NATWEST trademark, which was registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454, issued June 7, 1983).
Complainant, through its parent company The Royal Bank of Scotland Group, owns and operates the <natwest.com>, <natwestuk.com>, <natwest-bank.com>, <natwestonline.com> domain names in conjunction with its banking operations, all of which resolve to the main <natwest.com> website.
Respondent registered the <ntwestaccess.org> domain name on October 31, 2007.
Respondent is currently using the disputed domain name to resolve to a website that imitates Complainant’s website in an attempt to acquire confidential information from Complainant’s customers.
Respondent is thus engaged in “phishing,” an illicit attempt to manipulate Internet users into divulging their personal information such as passwords or account numbers.
Respondent’s <ntwestaccess.org> domain name is confusingly similar to Complainant’s NATWEST mark.
Respondent does not have any rights to or legitimate interests in the <ntwestaccess.org> domain name.
Respondent registered and uses the <ntwestaccess.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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 has offered sufficient evidence of its rights in
the NATWEST mark under Policy ¶ 4(a)(i) through
registration of the mark with the USPTO.
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.”
On the point of confusing similarity, in registering the <ntwestaccess.org> domain name, Respondent incorporated Complainant’s NATWEST mark while merely omitting the letter “a” and adding the generic word “access” and the generic top-level domain “.org.” It is well established that the addition of a generic top-level domain, such as “.org,” is wholly irrelevant for purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See, for example, 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.
Furthermore, in the circumstances here presented, the omission of a single letter from a complainant’s mark fails to render the disputed domain name distinct. See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to a complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant).
Finally, the addition of a generic word, especially one related to Complainant’s operations or industry, also falls short of rending the disputed domain name distinct. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to a complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to that complainant’s business).
Therefore, we conclude that Respondent’s <ntwestaccess.org> domain name is
confusingly similar to Complainant’s NATWEST mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <ntwestaccess.org> domain name. This allegation, taken together with the supporting record, constitutes a sufficient prima facie case supporting Complainant’s allegations. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Therefore Respondent now has the burden of proving that it nonetheless has rights or legitimate interests in its domain name pursuant to Policy ¶ 4(a)(ii).
Because Respondent has failed to answer the Complaint
herein, we are free to conclude that Respondent has no rights to or interests
in the disputed domain name. See Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
Nevertheless, we will examine the available record to determine if there is any basis for concluding that Respondent has rights to or interests in the contested domain name sufficient to satisfy the requirements of the Policy.
In this connection, we first observe that there is no
dispute that Respondent’s domain name resolves to a website which merely
imitates Complainant’s website. Given the
confusingly similarity between Complainant’s mark and the disputed domain name,
it is evident that Respondent has attempted to pass itself off as Complainant,
and has as well failed to demonstrate a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net,
FA 203208 (Nat. Arb. Forum Nov. 28, 2003):
It is neither a bona fide offerings [sic] of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶ 4(c)(i) & (iii) when the holder of
a domain name, confusingly similar to a registered mark, attempts to profit by
passing itself off as Complainant . . . .
See also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where a respondent copied a complainant’s website in order to steal account information from that complainant’s customers, that respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name.”).
We also note that there is no evidence within the record,
including the pertinent WHOIS domain name registration information, to suggest that
Respondent is commonly known by the <ntwestaccess.org>
domain name. Likewise Respondent has not
pointed to any evidence suggesting that it has any license or other consent to
use Complainant’s mark. Moreover, the
registrant of the disputed domain name is identified as “Isidro Vera c/o Vera
& Frank Invest,” which bears no resemblance to the disputed domain
name. Therefore, we conclude that
Respondent lacks rights to and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where a respondent was not commonly
known by a mark and never applied for a license or permission from a
complainant to use a trademarked name); see also 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.”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that the disputed domain name is confusingly similar to Complainant’s NATWEST mark. Because Respondent appears to be passing itself off as Complainant, its conduct creates a likelihood of confusion as to the possibility of Complainant’s sponsorship of or affiliation with Respondent’s website. We may safely presume that this website generates revenue for Respondent. This is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where a respondent registered and used a domain name confusingly similar to a complainant’s mark to attract users to a website sponsored by that respondent).
We also take cognizance of Complainant’s allegation, which
Respondent does not deny, that Respondent is engaged in “phishing,” a form of
Internet fraud. Respondent’s use of the
disputed domain name to defraud Complainant’s customers is evidence of bad
faith registration and use of the disputed domain name within the meaning of Policy
¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad
faith registration and use because a respondent used a domain name to redirect
Internet users to a website that imitated a complainant’s website fraudulently to
acquire personal information from that complainant’s clients); 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 because it redirected Internet users to a
website that imitated a complainant’s website which was used fraudulently to
acquire personal information from that complainant’s potential associates).
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 <ntwestaccess.org> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 24, 2008
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