National Westminster Bank plc and The Royal Bank of
Scotland Group plc v.
williams bar
Claim Number: FA0804001179193
Complainant is National Westminster Bank plc and The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA. Respondent is williams bar (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <natwest-sec.com>, <uk-rbs.net>, and <uk-rbs.org>, 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 April 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 22, 2008.
On April 22, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <natwest-sec.com>, <uk-rbs.net>, and <uk-rbs.org> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 April
28, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 19, 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@natwest-sec.com, postmaster@uk-rbs.net, and postmaster@uk-rbs.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 22 2006 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 <natwest-sec.com> domain name is confusingly similar to Complainant’s NATWEST mark. Respondent’s <uk-rbs.net>, and <uk-rbs.org> domain names are confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <natwest-sec.com>, <uk-rbs.net>, and <uk-rbs.org> domain names.
3. Respondent registered and used the <natwest-sec.com>, <uk-rbs.net>, and <uk-rbs.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The parties filing collectively as
Complainant, National Westminster Bank plc and
The Royal Bank of Scotland Group plc, is one of the world’s leading
financial services groups. Complainant
is based in the
Respondent registered the <natwest-sec.com> domain name on March 7, 2008, the
<uk-rbs.net> domain name on February 25, 2008, and <uk-rbs.org> domain name on February 20, 2008. The disputed domain names resolves to websites that pass themselves off as 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 registered the RBS and NATWEST marks with
the UKIPO, the OHIM, and the USPTO, and therefore established rights to the
marks under Policy ¶ 4(a)(i). See Expedia,
Inc. v. Tan, FA 991075 (Nat.
Arb. Forum June 29, 2007)
(“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the
complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE
marks by registering the marks with the USPTO).
The <uk-rbs.net>, and <uk-rbs.org> domain names are confusingly similar to the RBS mark because they incorporate the entire mark and add the generic terms “uk,” a common abbreviation for the United Kingdom, and a hyphen. The addition of this geographic term does not sufficiently distinguish the disputed domain names from Complainant’s mark because the term describe Complainant’s business and geographic terms do not sufficiently distinguish disputed domain names from a registered mark. Moreover, the addition of the generic top-level domains (“gTLD”) “.net” and “.org” do not sufficiently distinguish the disputed domain names from the RBS mark because all domain names are required to have a top-level domain. Thus, the Panel finds the disputed domain names confusingly similar to Complainant’s RBS mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); 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 <natwest-sec.com>
domain name is confusingly similar to the NATWEST mark because it incorporates
the entire mark and adds the generic term “sec,” and a hyphen. The addition of this generic term does not
sufficiently distinguish the disputed domain name from Complainant’s mark. Also, the addition of the generic top-level
domain (“gTLD”) “.com” does not sufficiently distinguish the disputed domain
name from the RBS mark because all domain names are required to have a
top-level domain. Thus, the Panel finds
the disputed domain name confusingly similar to Complainant’s NATWEST mark pursuant
to Policy ¶ 4(a)(i).
See L.L. Bean, Inc. v. ShopStarNetwork,
FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the
generic word “shop” with the complainant’s registered mark “llbean” does not
circumvent the complainant’s rights in the mark nor avoid the confusing
similarity aspect of the ICANN Policy); see
also 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).”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent has neither rights nor legitimate interests in the <natwest-sec.com>, <uk-rbs.net>, and <uk-rbs.org> domain names. Complainant must first present a prima facie case establishing that Respondent lacks all rights and legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden shifts to Respondent. The Panel finds that Complainant has demonstrated that Respondent lacks rights and legitimate interests in the <natwest-sec.com>, <uk-rbs.net>, and <uk-rbs.org> domain names, and thus made a prima facie case pursuant to 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 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).
Because Respondent failed to respond to the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain names. 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.”); 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). However, the Panel will examine all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names and has never been authorized to use the RBS or NATWEST marks. Furthermore, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the <natwest-sec.com>, <uk-rbs.net>, and <uk-rbs.org> domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent uses the <natwest-sec.com>, <uk-rbs.net>, and <uk-rbs.org> domain names as an attempt to “pass itself off” as Complainant in order to defraud Complainant’s customers. Respondent’s domain names resolve to a website that imitates Complainant’s genuine online financial services website and ask for personal and financial information of Internet users interested in Complainant’s banking services. Complainant has alleged that Respondent uses these websites to “phish” for confidential financial information in an attempt to defraud Complainant’s customers. The Panel finds that Respondent’s attempt to pass itself off as Complainant and phish for customers’ private information is 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 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 Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the 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”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The website that resolves from the disputed domain names
imitates Complainant’s website and requests that RBS account holders enter
their account number and access PIN.
Respondent has capitalized on Complainant’s well-known RBS and NATWEST
marks by attracting Internet users to its website. Respondent’s use of the disputed domain names
are capable of creating confusion as to Complainant’s source, sponsorship,
affiliation, or endorsement of the <natwest-sec.com>, <uk-rbs.net>,
and <uk-rbs.org> domain names. The Panel finds that Respondent’s use of the
disputed domain names is evidence of registration and use in bad faith under
Policy ¶ 4(b)(iv).
See Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain); see also State Fair of
Respondent uses the <natwest-sec.com>, <uk-rbs.net>,
and <uk-rbs.org> domain names to engage in a phishing scam,
misdirecting Internet users seeking Complainant’s genuine website to Respondent’s
website. Respondent is deceiving
Complainant’s Internet customers and manipulating them into divulging sensitive
personal information by imitating Complainant’s genuine financial website. Thus, Respondent’s use of the disputed domain name
constitutes bad faith registration and use under 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 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).
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 <natwest-sec.com>, <uk-rbs.net>, and <uk-rbs.org> domain names be TRANSFERRED from Respondent to Complainant.
Jame A. Crary, Panelist
Dated: June 5, 2008
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