National Westminster Bank plc v. Mohamad Musthafa
Claim Number: FA0811001235902
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <natwestt20.com>, <natwesttwenty20.com>, <natwesttwenty20.info> and <natwestpremierleague.com>, registered with Godaddy.com, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 26, 2008.
On November 26, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <natwestt20.com>, <natwesttwenty20.com>, <natwesttwenty20.info> and <natwestpremierleague.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 December 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 22, 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@natwestt20.com, postmaster@natwesttwenty20.com, postmaster@natwesttwenty20.info, and postmaster@natwestpremierleague.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <natwestt20.com>, <natwesttwenty20.com>, <natwesttwenty20.info> and <natwestpremierleague.com> domain names are confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestt20.com>, <natwesttwenty20.com>, <natwesttwenty20.info> and <natwestpremierleague.com> domain names.
3. Respondent registered and used the <natwestt20.com>, <natwesttwenty20.com>, <natwesttwenty20.info> and <natwestpremierleague.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, operates a banking and financial services business, which includes online banking services. Complainant markets its services under its NATWEST mark. Complainant has registered its NATWEST mark with: (1) the United Kingdom Intellectual Property Office (“UKIPO”) on January 2, 1975 (Reg. No. 1,021,601); (2) the United States Patent and Trademark Office (“USPTO”) on June 7, 1983 (Reg. No. 1,241,454); and (3) the European Union Office of Harmonization for the Internal Market (“OHIM”) on April 18, 2006 (Reg. No. 4,319,067). Complainant operates its main website from its <natwest.com> domain name.
Respondent registered the <natwestt20.com> domain name on July 21, 2008 and the <natwesttwenty20.com>, <natwesttwenty20.info> and <natwestpremierleague.com> domain names on August 8, 2008. Respondent’s <natwestt20.com> and <natwesttwenty20.com> domain names previously resolved to websites that displayed a copy of Complainant’s NATWEST logo and purported to offer the disputed domain names for sale. When Complainant contacted Respondent with a cease-and-desist letter, Respondent replied with an offer to exchange the disputed domain names to Complainant for the cost of Respondent’s tuition fees. Currently, all of the disputed domain names resolve to websites displaying links to the third-party websites of Complainant’s competitors.
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 provided evidence it has registered its NATWEST mark with the UKIPO, the USPTO, and the OHIM. The Panel finds each of these registrations adequately establishes Complainant’s rights in its NATWEST 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s disputed domain names each completely incorporate Complainant’s NATWEST mark. The disputed domain names also incorporate generic changes such as the addition of a letter “t,” the addition of the generic terms “twenty,” “premier,” and “league,” and the addition of the numeral “20.” Furthermore, each disputed domain name contains the addition of a generic top-level domain (“gTLD”), such as “.com,” or “.info.” The Panel finds these additions do not detract from the dominant feature of the domain name, which is Complainant’s NATWEST mark. Furthermore, the addition of a gTLD is not relevant in evaluating whether a disputed domain name is confusingly similar to a mark because it is a required element of every domain name. Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s NATWEST mark pursuant to Policy ¶ 4(a)(i). See 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also 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.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant has produced a prima facie case in support of these allegations, the burden shifts to Respondent to establish otherwise. The Panel finds Complainant has established a prima facie case to support its allegations and Respondent has failed to submit a response to the case. Therefore, the Panel assumes Respondent does not have rights or legitimate interests in the disputed domain names. The Panel will, however, examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). 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).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent previously used the <natwestt20.com> and <natwesttwenty20.com> domain names to operate websites offering the <natwestt20.com> and <natwesttwenty20.com> domain names for sale. The Panel finds Respondent’s prior use of these dispute domain names was not 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). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
Currently, all of the disputed domain names resolve to websites displaying links to the websites of Complainant’s competitors. The Panel finds Respondent’s current use of the disputed domain names is not 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
Complainant contends Respondent is not commonly known by the disputed domain names. The WHOIS information lists Respondent as “Mohamad Musthafa,” and Complainant maintains it has not authorized Respondent to use its NATWEST mark in any manner. Thus, the Panel finds Respondent is not commonly known by the disputed 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s previous use of the <natwestt20.com> and <natwesttwenty20.com>
domain names, and e-mail correspondence with Complainant offering these
disputed domain names for sale is evidence Respondent registered and used the
disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See
Respondent’s disputed domains name resolve to a website
providing links to Complainant’s direct competitors. Respondent’s use is evidence of disruption
and the Panel thus finds Respondent registered and used the disputed domain
names in bad faith pursuant to Policy ¶ 4(b)(iii). See
The Panel also finds Respondent’s confusingly similar disputed domain names that resolve to websites displaying links to Complainant’s competitors creates a likelihood of confusion among Internet users regarding Complainant’s affiliation with the disputed domain names. The Panel finds this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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.”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds 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 <natwestt20.com>, <natwesttwenty20.com>, <natwesttwenty20.info> and <natwestpremierleague.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 8, 2009
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