National Westminster Bank plc v. Chen Yan Hua
Claim Number: FA0911001293400
Complainant is National Westminster Bank plc (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA. Respondent is Chen Yan Hua (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwestoffhsore.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2009.
On November 7, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <natwestoffhsore.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 November 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 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@natwestoffhsore.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 8, 2009, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <natwestoffhsore.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestoffhsore.com> domain name.
3. Respondent registered and used the <natwestoffhsore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a financial institution that offers a full range of financial services under the NATWEST mark, which Complainant registered with the United Kingdom Intellectual Property Office (“UKIPO”) on December 3, 1973 (Reg. No. 1,021,601), with the United States Patent and Trademark Office (“USPTO”) on June 7, 1983 (Reg. No. 1,241,454), and with the European Union Office for Harmonization in the Markets (“OHIM”) on April 18, 2006 (Reg. No. 4,319,067). Complainant has more than 7.5 million personal customers and services more than 850,000 small business accounts. It has more than 3,600 branches and is part of the fifth-largest financial services group in the world. Complainant uses the NATWEST mark to promote, among other things, banking, credit cards, financial planning and insurance services throughout the United Kingdom and around the world.
Respondent registered the <natwestoffhsore.com> domain name on August 27, 2009. The disputed domain name resolves to a website that features links to third-party websites, some of which advertise financial services that compete with Complainant, and some of which feature adult-oriented content.
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.
The Panel finds that Complainant has established rights in
the NATWEST mark for purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the UKIPO (Reg. No. 1,021,601 issued December 3, 1973), the
USPTO (Reg. No. 1,241,454 issued June 7, 1983), and the OHIM (Reg. No.
4,319,067 issued April 18, 2006). See DatingDirect.com
Limited v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004)
(finding that the panel recognizes the distinctive nature of the complainant’s
DATINGDIRECT.COM mark through registration with the United Kingdom Intellectual
Property Office); see also Honeywell
Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the
complainant’s numerous registrations for its HONEYWELL mark throughout the
world sufficient to establish the complainant’s rights in the mark under the
Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb.
Forum May 23, 2006) (finding that where the complainant had submitted evidence
of its registration with the USPTO, “such evidence establishes complainant’s
rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that
Respondent’s <natwestoffhsore.com>
domain name is confusingly similar to its NATWEST mark. The <natwestoffhsore.com> domain name differs from Complainant’s mark in two ways:
(1) the misspelled term “offshore,” which describes Complainant’s offshore
financial activities, has been added to the end of the mark; and (2) the
generic top-level domain (“gTLD”) “.com” has been added. Neither the addition of a misspelled
descriptive term, nor the addition of a gTLD sufficiently distinguishes a
domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i). Therefore, the
Panel finds that these changes do not minimize or eliminate the resulting
likelihood of confusion, and so Respondent’s disputed domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867
(Nat. Arb. Forum July 28, 2005) (finding that the additions of the term
“batteries,” which described the complainant’s products, and the generic
top-level domain “.com” were insufficient to distinguish the respondent’s
<duracellbatteries.com> from the complainant’s DURACELL mark); see also Yokohama Tire Corp. v. Jones, FA 739888
(Nat. Arb. Forum Aug. 3, 2006) (“The Panel finds that the mere elimination,
misspelling and addition of terms to Complainant’s mark in the
<yokahamatires.com> domain name is not sufficient for Respondent to
distinguish the disputed domain name from the Y YOKOHAMA mark, especially
because the disputed domain name remains phonetically similar to the mark.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain
is irrelevant when establishing whether or not a mark is identical or
confusingly similar, because top-level domains are a required element of every
domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <natwestoffhsore.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and that Respondent has failed to respond to the Complaint. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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).”).
Complainant contends that Respondent is not commonly known
by the <natwestoffhsore.com> domain name nor has it ever been the
owner or licensee of the NATWEST mark.
The WHOIS information for the disputed domain name lists Respondent as “Chen
Yan Hua.” Because of this evidence,
along with the fact that Respondent has failed to show any evidence contrary to
Complainant’s contentions, the Panel finds that Respondent is not commonly
known by the <natwestoffhsore.com> domain name pursuant to Policy ¶ 4(c)(ii). See Victoria’s Secret v.
Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the
Complainants’ established use of their famous VICTORIA’S SECRET marks it is
unlikely that the Respondent is commonly known by either [the
<victoriasecretcasino.com> or <victoriasecretcasino.net>] 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).
Respondent maintains a website at the <natwestoffhsore.com> domain name that features links to third-party websites, some of which offer financial services. Complainant contends that Respondent is using the <natwestoffhsore.com> domain name to promote businesses that compete with Complainant. The Panel finds that this use of the <natwestoffhsore.com> domain name 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not 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)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Other links featured on the website resolving from
Respondent’s disputed domain name resolve to websites that contain
adult-oriented content, which the Panel finds is also evidence that Respondent has
not used the <natwestoffhsore.com> domain name for either 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 Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb.
Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly
similar to an established mark to divert Internet users to an adult-oriented
website “tarnishes Complainant’s mark and does not evidence noncommercial or
fair use of the domain name by a respondent”); see also InnoTown AS v. Forest, D2003-0718 (WIPO Oct. 27, 2003) (because there was “no
immediate or apparent connection between the name selected by the Respondent
and its web site offering links to various pornographic web sites” the panel
inferred that the respondent registered the domain name to “secure its residual
traffic” and held that this activity was not a bona fide offering of
goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Complainant’s business is being disrupted because of the confusion caused by the similarity between the NATWEST mark and the confusingly similar <natwestoffhsore.com> domain name (registered August 27, 2009). Complainant contends that this confusion results in diversion of Internet users to competitors of Complainant. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent is gaining
commercially through this diversion, through the “click-through” fees that
Respondent presumably collects from the third-party websites. The Panel finds that this is an intentional
use of the disputed domain name for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in
bad faith. See Asbury Auto. Group, Inc. v.
Complainant also contends that Respondent is using Complainant’s NATWEST mark to divert Internet users to websites with adult-oriented content. The Panel finds that this use of the disputed domain name is also evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to pornographic websites).
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 <natwestoffhsore.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 22, 2009
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