National Westminster Bank PLC v. Nathaniel Westerly
Claim Number: FA0912001299106
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 <natwest-inc.com>, registered with Godaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 16, 2009.
On December 15, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <natwest-inc.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2010 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@natwest-inc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <natwest-inc.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwest-inc.com> domain name.
3. Respondent registered and used the <natwest-inc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, holds numerous trademark registrations for the NATWEST mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,241,454 issued June 7, 1983) and the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 1,021,601 issued December 3, 1973). Complainant uses its NATWEST mark in connection with a full range of financial services, including personal and business banking services.
Respondent, Nathaniel Westerly, registered the <natwest-inc.com> domain name on September 14, 2009. The disputed domain name resolves to a website that substantially imitates Complainant’s own website and is apparently being used in an effort to fraudulently acquire personal information from Complainant’s clients or potential clients. The website prominently displays duplications of Complainant’s NATWEST mark and logo along with links to purported banking services.
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 asserts rights in its NATWEST mark through its holding of trademark registrations for the NATWEST mark with both the USPTO (e.g., Reg. No. 1,241,454 issued June 7, 1983) and the UKIPO (e.g., Reg. No. 1,021,601 issued December 3, 1973). The Panel finds that Complainant has provided sufficient evidence to establish rights in the NATWEST mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <natwest-inc.com> domain name is confusingly similar to Complainant’s
NATWEST mark because Respondent’s disputed domain name incorporates the
entirety of Complainant’s mark, adds a hyphen, the generic abbreviation “inc,”
which stands for incorporated and the generic top-level domain (“gTLD”) “.com.” The Panel finds none of these additions,
separate or in conjunction, provide sufficient distinguishing features between
the disputed domain name and Complainant’s NATWEST mark, necessitating a
finding of confusing similarity under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(finding that hyphens and top-level domains are irrelevant for purposes of the
Policy); see also Wells
Fargo & Co. v. Bogucki, FA
147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the
<wellfargobank.com> domain name is confusingly similar to the WELLS FARGO
mark, because altering the mark by one letter and adding “…the word ’bank,’ a word that both describes
the type of business that Complainant engages in and is included in its
<wellsfargobank.com> domain name, does not alleviate any confusing
similarity.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has
failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the burden
shifts to [the] respondent to show it does have rights or legitimate
interests.”); see also 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).
Nevertheless, the Panel will examine the record to determine if
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Nathaniel Westerly.” Respondent is not licensed or otherwise authorized to use Complainant’s NATWEST mark or any variation thereof. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed 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).
Complainant alleges that Respondent was using the website accessed by the disputed domain name to use Complainant’s mark to fraudulently acquire personal information of Internet users who accessed the disputed domain name seeking Complainant’s services. The Panel finds that “phishing” for personal information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); 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).
Furthermore, Respondent’s disputed domain name resolves to a website that prominently
displays duplications of Complainant’s NATWEST mark and logo. The Panel finds Respondent is
attempting to pass itself off as Complainant by imitating Complainant’s logo,
which is further evidence that Respondent lacks rights and legitimate interests
in the disputed domain name under Policy ¶4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the confusingly similar disputed domain
name in order to intentionally attract Internet users to its website to “phish”
for users’ personal information by creating a strong likelihood of confusion
with Complainant’s NATWEST mark. The
Panel presumes Respondent then profits by using such information for fraudulent
purposes. Thus, the Panel finds
Respondent’s use of the disputed domain name is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See Wells Fargo & Co. v.
Additionally, the Panel finds Respondent’s attempt to pass itself off as Complainant is evidence of bad faith registration and use under Policy ¶4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
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 <natwest-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 2, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum