national
arbitration forum
DECISION
National Westminster Bank plc v. Jones Emeron
Claim Number: FA0806001210038
PARTIES
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 <natwestonlinebank.com>, registered with Godaddy.com, Inc.
PANEL
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 17, 2008.
On June 16, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <natwestonlinebank.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 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@natwestonlinebank.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 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <natwestonlinebank.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestonlinebank.com> domain name.
3. Respondent registered and used the <natwestonlinebank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, National Westminster Bank plc, is a financial
institution operating under the NATWEST mark and is based in the
Respondent’s <natwestonlinebank.com> domain name was registered on April 1, 2008. Prior to the filing of this Complaint, it resolved to a website imitating Complainant’s genuine main website. It includes identical copies of Complainant’s marks and logos and uses a “contact us” link with fraudulent information to make the website look like it is run by Complainant. Furthermore, when unsuspecting Internet users click upon an “online banking” link, they are directed to another website, in which they are asked to enter personal and confidential information such as their username, password, sex, nationality, annual income, account type and other identifying information. The <natwestonlinebank.com> domain name no longer resolves to an active website, but rather currently resolves to a web page stating “This Account Has Been Suspended.”
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant has registered the NATWEST mark in numerous
jurisdictions across the world.
Particularly with Complainant’s registrations of the mark with the
UKIPO, the OHIM, and the USPTO, the Panel finds that Complainant has
sufficiently established its right in the NATWEST mark pursuant to Policy ¶
4(a)(i). See Royal Bank of Scot. Group plc & Nat’l
Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006)
(“Complainant’s trademark registrations for the NATWEST mark with the United
Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant
to Policy ¶4(a)(i).”); see also Ferring B.V.
& Bio-Tech. Gen. (Israel) Ltd. v. Ferland, FA 1139912 (Nat. Arb. Forum Mar. 18, 2008) (holding that registration
alone with the OHIM would be sufficient to demonstrate rights in a mark under
Policy ¶ 4(a)(i)); see also Am.
Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005)
(“Complainant has established rights in the AIG mark through registration of
the mark with several trademark authorities throughout the world, including the
United States Patent and Trademark office (‘USPTO’)… .”).
The <natwestonlinebank.com> domain name contains Complainant’s NATWEST mark in its entirety followed by the terms “online” and “bank,” which correspond to the services offered under the NATWEST mark. The disputed domain name additionally includes the generic top-level domain (“gTLD”) “.com.” “A general rule under Policy ¶ 4(a)(i) is that a domain name is confusingly similar to a third-party mark where the domain name fully incorporates the mark and simply adds additional words that correspond to the goods or services offered by the third party under the mark.” Sony Kabushiki Kaisha v. 0-0 Adult Video Corp., FA 475214 (Nat. Arb. Forum June 27, 2005) (finding the <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com> domain names confusingly similar to the complainant’s SONY mark); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).
Also, the inclusion of a gTLD such as “.com” is irrelevant for the purposes of 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 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).
And finally, previous panels have already found that the
inclusion of the words “online” and “bank” do not distinguish a disputed domain
name from the NATWEST mark because they “suggest that the disputed domain name
leads to a website where Complainant’s customers could engage in online banking
services.” See Nat’l Westminster Bank plc v. Vonase Inc., FA 792449 (Nat. Arb.
Forum Oct. 25, 2006) (finding the <natwestbank-online.net>
domain name to be confusingly similar to the complainant’s NATWEST mark); see also Nat’l Westminster Bank plc v. Natwest Plc, FA 817121 (Nat. Arb.
Forum Nov. 21, 2006) (finding that the addition of the word “online” to the
complainant’s NATWEST mark “creates the impression that the disputed domain
name offers Internet users access to Complainant’s banking services
‘online.’”); see also Nat’l
Westminster Bank plc v. natt45, FA
1176668 (Nat. Arb. Forum May 27, 2008) (stating that “generic words that describe
Complainant’s Internet financial and banking operations, such as ‘bank’ and
‘online’ will generally fail to distinguish a disputed domain name for the
purposes of Policy ¶ 4(a)(i)”).
For all of the aforementioned reasons, the Panel finds that the <natwestonlinebank.com> domain name is confusing similar to the NATWEST mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has met its burden of proof by providing enough
evidence to establish a prima facie
case that Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii).
Accordingly, it is now incumbent upon Respondent to rebut this assertion
and demonstrate that it does have rights or legitimate interests in the <natwestonlinebank.com> domain
name. See AOL LLC v. Gerberg, FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interest in the subject domain names.”);
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).
However, in the absence of any response from Respondent, the
Panel may presume that Respondent lacks rights and legitimate interests in the
disputed domain name. Nonetheless, the Panel
will examine the record in consideration of all the elements listed under
Policy ¶ 4(c). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where the respondent fails to
respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
There is no evidence in the record that allows for the
conclusion that Respondent is or ever was commonly known by the <natwestonlinebank.com>
domain name. The disputed domain name’s
WHOIS record lists “Jones Emeron,” which appears to have no connection to the <natwestonlinebank.com> domain
name. Additionally, Respondent has not
sought, nor received permission or license to use Complainant’s NATWEST mark in
any way. Absent any additional evidence,
the Panel finds that Respondent is not commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See
IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7,
2006) (finding that the respondent failed to establish rights and legitimate
interests in the <emitmortgage.com> domain name as the respondent was not
authorized to register domain names featuring the complainant’s mark and failed
to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA
699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not
commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark).
Prior to Complainant’s filing of this Complaint, the disputed
domain name resolved to a website that imitated Complainant’s main website
located at the <natwest.com> domain name.
It contained copies of Complainant’s marks, layout and logos. It additionally included a “Contact Us” link
with false contact information for Complainant, and an “Online Banking” link
that redirected Internet users to another web page asking for the user’s
username, password, birthday, nationality, annual income, and other personally
identifying information. The Panel
presumes that this unauthorized and fraudulent use is an attempt by Respondent
to steal the personal information of Complainant’s clients. Accordingly, the Panel finds this to be
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 Nat’l Westminster Bank plc v. Blues
William, FA 731824 (Nat. Arb. Forum Aug. 7, 2006) (“Respondent is using the
disputed domain name to divert Internet users attempting to locate Complainant’s
website to a website that is a fraudulent imitation of Complainant’s
website. [S]uch [a] diversion via an
imitation website as an attempt by Respondent to pass itself off as Complainant
is neither a bona fide offering of goods or services under Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”);
see also 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)).
The Panel finds that Respondent’s prior use of the disputed domain name amounts to a phishing attempt by Respondent, and that such fraudulent behavior supports the conclusion that Respondent has no rights or legitimate interests in the disputed domain name. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); 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”).
Finally, the <natwestonlinebank.com>
domain name currently resolves to an inactive website displaying only the words
“This Account Has Been Suspended.” A
prior panel, in Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007), regarded a domain name
previously used in a phishing attempt that resolved to a website that was blank
but for a banner reading “Account Suspended,” to give “no indication that
Respondent is in preparation to use the disputed domain name in connection with
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),” and as such concluded that the respondent
lacked rights and legitimate interests under Policy ¶ 4(a)(ii). Likewise, the Panel finds that Respondent’s
inactive use of the disputed domain name after its demonstrated phishing
attempt provides no evidence of Respondent’s rights or legitimate interests in
the <natwestonlinebank.com>
domain name. Without any Response from
Respondent, the Panel concludes that Respondent cannot have any rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding
no rights or legitimate interests where the respondent has advanced no basis on
which the panel could conclude that it has a right or legitimate interest in
the domain names, and no commercial use of the domain names has been
established); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that
the “under construction” page, hosted at the disputed domain name, did not
support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent’s <natwestonlinebank.com> domain name resolved to a web page fraudulently incorporating Complainant’s mark, logos and likeness. The Panel assumes that the purpose of this incriminating use is to commercially benefit Respondent. The panel in Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002), found such conduct to be “prohibited by Paragraph 4(b)(iv) of the Policy.” Further, another panel in Royal Bank of Scot. Group plc v. 123register.com, FA 649493 (Nat. Arb. Forum Apr. 14, 2006), held that when a respondent “is attempting to pass itself off as [a c]omplainant for commercial gain, such use of [a] disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Likewise, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel additionally finds that the elements listed in
Policy ¶ 4(b) are not exclusive and thus it is allowed to consider the
circumstances of this claim in determining whether or not Respondent registered
and is using the <natwestonlinebank.com>
domain name in bad faith. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be
illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (“Use in bad faith can be inferred from the totality of the
circumstances ....”).
The disputed domain
name not only previously incorporated and used Complainant’s marks, logos and
likeness in their entirety, it contained a “Contact Us” link with false
information and an “Online Banking” link, where Internet users were asked to
provide their username, password, account types, annual income, and other
personally identifying information. This
phishing attempt on the part of Respondent is found by the Panel to further
establish that Respondent registered and is using the disputed domain name 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 Wells
Fargo & Co. v.
And finally, the Panel will not allow the potential for future fraudulent schemes to be engaged in through the disputed domain name by allowing Respondent to maintain its current inactive use thereof. The Panel finds Respondent’s current inactive holding of the disputed domain name to provide additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the respondent’s decision to inactively hold the disputed domain name, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natwestonlinebank.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr.,, Panelist
Dated: July 25, 2008
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