National Westminster Bank plc v. natwuk inc c/o james stone
Claim Number: FA0811001234574
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR
The domain name at issue is <nationalwestminsteruk.com>, registered with Enom, 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
On
On November 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 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@nationalwestminsteruk.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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nationalwestminsteruk.com> domain name is confusingly similar to Complainant’s NATIONAL WESTMINSTER mark.
2. Respondent does not have any rights or legitimate interests in the <nationalwestminsteruk.com> domain name.
3. Respondent registered and used the <nationalwestminsteruk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a British financial institution that provides personal and business banking services, including credit cards and loans. Complainant has over 7.5 million personal customers and 850,000 small business accounts. Complainant holds a number of trademark registrations for the NATIONAL WESTMINSTER mark around the world, including one with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,444,866 issued January 7, 1994).
Respondent registered the <nationalwestminsteruk.com>
domain name on
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.
Registration with the UKIPO establishes rights in
Complainant’s NATIONAL WESTMINSTER mark pursuant to Policy ¶ 4(a)(i). See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <nationalwestminsteruk.com>
domain name contains Complainant’s entire mark, adds the geographic term “
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie showing that Respondent lacks rights and legitimate interests in the <nationalwestminsteruk.com> domain name. Next, the burden shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See 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).”).
Respondent’s website resolving from the <nationalwestminsteruk.com> domain name is almost an exact copy of Complainant’s website. Moreover, Respondent has submitted no evidence to suggest that there is any independent content or usage that would constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel finds this to be the case of a respondent passing itself off as a complainant. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent’s attempts to pass itself off as the complainant online is a 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”).
Moreover, Respondent’s WHOIS information does not indicate
that Respondent is commonly known by the <nationalwestminsteruk.com>
domain name and Respondent has not provided any evidence to suggest
otherwise. Thus, the Panel finds that
Respondent is not commonly known by the disputed domain name under 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 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).
Complainant asserts that Respondent’s disputed domain name constitutes an exercise of “phishing.” Phishing refers to the conduct of portraying a website as another’s website, primarily for the purpose of deceiving Internet users into voluntarily divulging their private information, such as account or social security numbers. The Panel finds that Respondent’s confusingly similar domain name and corresponding website squarely fit within this definition, for Respondent’s website provides ample fraudulent opportunity and deceptive imitation to convince Internet users to divulge their private information as it relates to Complainant’s business and accounts. Therefore, Respondent’s phishing constitutes wholly sufficient evidence of Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s confusingly similar <nationalwestminsteruk.com> domain name resolves to a
website that imitates and copies Complainant’s website. The Panel finds that Respondent’s imitation
of Complainant’s website and use of a confusingly similar domain name that diverts
Internet users to a competing website is evidence of bad faith registration and
use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding that the respondent registered the domain name in
question to disrupt the business of the complainant, a competitor of the
respondent); see also 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).”).
Furthermore, the Panel finds that
Respondent’s imitation of Complainant’s website and use of a confusingly
similar domain name creates a likelihood of confusion and is evidence of bad
faith registration and use under Policy ¶ 4(b)(iv). See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th Cir. 2002) ("While an
intent to confuse consumers is not required for a finding of trademark
infringement, intent to deceive is strong evidence of a likelihood of
confusion."); see also America
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on
its website and offering identical services as those offered by the
complainant).
The Panel finds
that, by engaging in phishing via the disputed domain name and resulting
website, Respondent’s actions constitute bad faith registration and use under
Policy ¶ 4(a)(iii), as it attempts to use deception to artfully purloin the
information of Complainant’s potential and actual customers. 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 HOPE worldwide, Ltd.
v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the
respondent registered and used the domain name in bad faith because it
redirected Internet users to a website that imitated the complainant’s website
and was used to fraudulently acquire personal information from the
complainant’s potential associates).
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 <nationalwestminsteruk.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: December 30, 2008
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