National Westminster Bank plc v. Hu Lim
Claim Number: FA0910001290988
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 <onlinebankingnatwest.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2009 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@onlinebankingnatwest.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 <onlinebankingnatwest.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <onlinebankingnatwest.com> domain name.
3. Respondent registered and used the <onlinebankingnatwest.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is an
international financial institution that offers its clients a wide range of
personal and commercial financial services.
Complainant holds a trademark registration for the NATWEST mark (Reg.
No. 1,021,601), registered on
Respondent registered the <onlinebankingnatwest.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.
Respondent registered the <onlinebankingnatwest.com>
domain name on
Respondent’s <onlinebankingnatwest.com> domain
name contains Complainant’s NATWEST
mark in its entirety and adds the descriptive term “online banking” and the
generic top-level domain “.com.”
Complainant provides online banking services as part of its financial
service offerings, thus the addition of a term with an apparent relationship to
Complainant’s business heightens the confusing similarity between the disputed
domain name and Complainant’s NATWEST mark.
Furthermore, the addition of a top-level domain is irrelevant in a Policy
¶ 4(a)(i) evaluation. Thus, the Panel
finds Respondent’s <onlinebankingnatwest.com> domain name
is confusingly similar to Complainant’s NATWEST mark under Policy ¶
4(a)(i). See American Express Co. v. MustNeed.com, FA 257901
(Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com>
domain name confusingly similar to the complainant’s AMEX mark because the
“mere addition of a generic or descriptive word to a registered mark does not
negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must establish a prima facie case that Respondent lacks
rights and legitimate interests in the disputed
domain name. The Panel finds
Complainant has met this threshold in these proceedings. Therefore, the burden of proof shifts to
Respondent, however, Respondent has not submitted a response to these
proceedings. The Panel therefore
presumes that Respondent lacks all rights and legitimate interests in the
disputed domain name, but nevertheless examines the record against the
applicable Policy ¶ 4(c) elements. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name); see
also
Respondent is using the <onlinebankingnatwest.com>
domain name to display links to third-party websites in direct competition with
Complainant. Respondent presumably
receives click-through fees for each redirected Internet user that clicks on
one of these links. Respondent’s use of
the disputed domain name is not a bona
fide offering of goods or services or a legitimate noncommercial or fair
use. The Panel accordingly finds that
Respondent lacks rights and legitimate interests in the <<onlinebankingnatwest.com>
domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See
Jerry Damson, Inc. v.
Complainant contends that Respondent is not commonly known by the <onlinebankingnatwest.com> domain name. The WHOIS information identifies Respondent as “Hu Lim,” and there is no further information in the record addressing this element of the Policy. Therefore, the Panel concludes that Respondent is not commonly known by the <onlinebankingnatwest.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to resolve to a website displaying links to competing third-party websites. The Panel finds Respondent’s use constitutes disruption, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors in the financial services industry); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of the complainant’s competitors, thereby disrupting the complainant’s business).
Respondent’s resolving website also is an attempt to profit by creating a likelihood of confusion as to Complainant’s affiliation or sponsorship of the resolving website. Respondent presumably profits from the display of competitive links through the receipt of click-through fees. Thus, the Panel finds Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
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 <onlinebankingnatwest.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 3, 2009
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