National Westminster Bank plc v. Lu Lan
Claim Number: FA1001001301875
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 <natwestinternal.com>, registered with Above, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 7, 2010.
On January 12, 2010, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <natwestinternal.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 January 13, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 2, 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@natwestinternal.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 2010, 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 <natwestinternal.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestinternal.com> domain name.
3. Respondent registered and used the <natwestinternal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, offers a range
of financial services, such as personal and business banking services and
credit cards. Complainant began
operation in 1968 and currently owns more than 3,600 branches. Complainant offers its financial products and
services under its NATWEST mark.
Complainant holds multiple trademark registrations with the State
Intellectual Property Office of the People’s Republic of
Respondent registered the <natwestinternal.com> domain name on October 22, 2009. The disputed domain name resolves to a website featuring hyperlinks to financial products and services 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.
Previous panels have found that registration of a mark with
a federal trademark authority is sufficient to establish rights in a mark under
Policy ¶ 4(a)(i).
Complainant holds a trademark registration with the SIPO for its NATWEST
mark (e.g., Reg. No. 956,365 issued
March 6, 2007). Therefore, the Panel
finds that Complainant has established rights in the NATWEST mark through its
registration with the SIPO. See Miller
Brewing
Past panels have further held that the addition of a generic
term and a generic top-level domain (“gTLD”) to a complainant’s mark fails to
adequately distinguish a disputed domain name from the mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat.
Arb. Forum Sept. 21, 2004) (finding that the addition of the generic
term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark); see also Disney
Enters. Inc. v. McSherry, FA
154589 (Nat. Arb. Forum June 17, 2003) (finding the
<disneyvacationvillas.com> domain name to be confusingly similar to
Complainant’s DISNEY mark because it incorporated Complainant’s entire famous
mark and merely added two terms to it); see also Reese v. Morgan, FA 917029 (Nat.
Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic
top-level domain “.com” is insufficient to differentiate a disputed domain name
from a mark). Respondent’s <natwestinternal.com>
domain name couples the
generic term “internal” and the gTLD “.com” with Complainant’s NATWEST
mark. Thus, the Panel finds that
Respondent’s <natwestinternal.com> domain name is confusingly similar to Complainant’s NATWEST mark pursuant
to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent lacks rights and legitimate interests in the <natwestinternal.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent has failed to offer evidence, and there is no evidence in the record, proving Respondent is commonly known by the <natwestinternal.com> domain name. Complainant asserts that Respondent is not authorized to use the NATWEST mark. The WHOIS information identifies the domain name registrant as “Lu Lan.” Complainant alleges Respondent is not affiliated with Complainant. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See 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 was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the <natwestinternal.com> domain name to resolve to a website featuring hyperlinks to competitors of Complainant in the financial products and services industry. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant 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)).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been satisfied.
Respondent’s <natwestinternal.com> domain name resolves to a website featuring hyperlinks to financial products and services that compete with Complainant. Internet users may purchase these financial products and services from one of Complainant’s competitors instead of from Complainant because of Respondent’s use of the confusingly similar disputed domain name. The Panel finds Respondent’s use of a confusingly similar disputed domain name for this purpose constitutes a disruption of Complainant’s financial products and services business, 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) (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)); 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 respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel infers Respondent receives click-through fees from
the hyperlinks featured on the website resolving from the <natwestinternal.com>
domain name. Respondent is using the
confusingly similar disputed domain name to profit from Internet user’s
confusion as to Complainant’s affiliation with the resolving website. The Panel finds Respondent’s use of the
disputed domain name constitutes bad faith registration and use under Policy ¶
4(b)(iv). See
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natwestinternal.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 22, 2010
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