national
arbitration forum
DECISION
National Westminster Bank plc v. giggs23 c/o Rebecca Clower
Claim Number: FA0810001230018
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 <natwestonlinebanking-uk.net>, registered with Australian Style Pty Ltd.
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.
Judge Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2008.
On October 20, 2008, Australian Style Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <natwestonlinebanking-uk.net> domain name is registered with Australian Style Pty Ltd and that Respondent is the current registrant of the name. Australian Style Pty Ltd has verified that Respondent is bound by the Australian Style Pty Ltd 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 October 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 11, 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@natwestonlinebanking-uk.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <natwestonlinebanking-uk.net> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestonlinebanking-uk.net> domain name.
3. Respondent registered and used the <natwestonlinebanking-uk.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, National Westminster Bank plc, was founded in
1968 in the
Complainant holds numerous registrations for its NATWEST mark. Complainant’s mark has been registered with the United Kingdom Intellectual Property Office (“UKIPO”) since 1973 (Reg. No. 1,021,601 filed December 3, 1973) and with the United States Patent and Trademark Office (“USPTO”) since 1983 (Reg. No. 1,241,454 issued June 7, 1983). Additionally, Complainant holds registrations for the NATWEST ON LINE mark as Complainant’s business includes on line banking and financial transactions.
Respondent registered the <natwestonlinebanking-uk.net> domain name on July 28, 2008. The disputed domain name resolves to a website designed to look much like Complainant’s website. Confused consumers may believe that they are using Complainant’s website and, therefore, release private information, such as bank account numbers as well as passwords.
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 established rights in the NATWEST mark under
Policy ¶ 4(a)(i) through registration of the mark in
multiple countries, including with the UKIPO and 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.”); see also 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.”).
Respondent’s <natwestonlinebanking-uk.net> domain
name is confusingly similar to Complainant’s mark. Respondent incorporates the entire mark into
the domain name with the addition of the generic terms “online” and “banking,”
a hyphen, the geographic descriptive term “
The Panel concludes that Complainant has established Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <netwestonlinebanking-uk.net> domain name. Once Complainant has made a prima facie case the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). 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…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.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has presented a prima facie case. The Panel will now consider whether all of the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Respondent’s disputed domain name resolves to a website that
is an imitation of Complainant’s website, including logos. Because of the confusingly similar domain
name and the artfully created imitation website, the Panel assumes that Respondent
is attempting to pass itself off as Complainant. The Panel finds that Respondent is attempting
to capitalize on Complainant’s well known marks and reputation to attract
consumers. This deception does not
constitute a use in connection with a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See National 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…such 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.”); see also 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 . . . .”).
Respondent’s disputed domain name contains a “Consumer Login” section that brings consumers to a login page. The login page asks consumers to provide their personal account information. Respondent thus attempts to defraud confused consumers into revealing personal information from which Respondent may profit. This use of a fraudulent website to coerce unsuspecting consumers into divulging critical personal information has been defined as “phishing.” The Panel finds that Respondent’s website, in practicing phishing, does not constitute either a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 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 Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant
asserts that Respondent is not commonly known by the disputed domain name. Based on the information in the record, the
Panel may find that Respondent lacks rights and legitimate interests pursuant
to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered
the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel concludes that Complainant has established Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
With the <netwestonlinebanking-uk.net> domain name, Respondent is attempting to pass itself off as Complainant. The disputed domain name resolves to a website purporting to be Complainant and prominently featuring Complainant’s logo and other information similar to Complainant’s website. The Panel determines that this establishes that Respondent registered and used the disputed domain name in bad faith for the purpose of disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent’s registration of a
confusingly similar name that bears Complainant’s entire mark creates a
substantial likelihood of confusion as to the source and affiliation of the
disputed domain name and corresponding website.
Complainant argues that Internet users seeking Complainant’s future or
current business will likely happen across Respondent’s disputed domain name
and corresponding website, and be led to divulge private information to
Respondent through this pretext.
Complainant infers that Respondent has a prime motive of commercial and
monetary gain by passing itself off in such a manner. The Panel may therefore find that Respondent
has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see also Am. Univ.
v. Cook, FA 208629 (Nat. Arb. Forum Dec.
22, 2003) (“Registration and use of a domain name that incorporates another's
mark with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”).
Respondent’s use of the disputed domain name that resolves to a website purporting to be Complainant’s website is evidence of registration and use of the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). The Panel finds the attempt by Respondent to pass itself off as Complainant is in itself sufficient to establish bad faith registration and use of the disputed domain name. See Wells Fargo & Co. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant…the purpose of which is to deceive Complainant’s customers…The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).
The intent of Respondent in using a confusingly similar domain name that resolves to a website that is virtually identical to Complainant’s is to create a “phishing” scheme to attract unwary consumers who are then encouraged to give over personal information. The Panel finds that Respondent’s website evidences bad faith registration and use of the disputed domain name 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 Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
The Panel concludes that Complainant has established 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 <natwestonlinebanking-uk.net> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 1, 2008
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