National Westminster Bank plc v. Danny Robinson
Claim Number: FA0604000671407
Complainant is National Westminster Bank plc (“Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC 27602. Respondent is Danny Robinson (“Respondent”), 59 Kilbury Drive, Worcester, Worcs WR5 2NG, UK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwestcreditcard.com>, registered with Advantage Interactive Ltd.
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 April 4, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2006.
On April 4, 2006, Advantage Interactive Ltd confirmed by e-mail to the National Arbitration Forum that the <natwestcreditcard.com> domain name is registered with Advantage Interactive Ltd and that Respondent is the current registrant of the name. Advantage Interactive Ltd has verified that Respondent is bound by the Advantage Interactive Ltd 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 April 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 2006 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@natwestcreditcard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <natwestcreditcard.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestcreditcard.com> domain name.
3. Respondent registered and used the <natwestcreditcard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, provides personal and business banking services. Complainant has continuously used the NATWEST mark in connection with its banking services since 1968. Complainant has more than 7.5 million personal customers and over 850,000 small business accounts around the world. The Royal Bank of Scotland Group, the fifth-largest financial services group in the world, is the owner of Complainant.
Complainant has registered the NATWEST mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983) and the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,021,601 issued February 1, 1975; Reg. No. 1,278,207 issued January 29, 1990; Reg. No. 1,278,208 issued January 29, 1990). Complainant has also registered the <natwest.com> domain name (registered on February 11, 1997).
Respondent registered the <natwestcreditcard.com> domain name on August 15, 2005. Respondent is using the disputed domain name to operate a search engine website with links to Complainant’s competitors in the credit card and banking services industries, as well as links to unrelated 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.
Complainant has established rights in the NATWEST mark
through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Respondent’s <natwestcreditcard.com> domain
name is confusingly similar to Complainant’s NATWEST mark under Policy ¶
4(a)(i), because it includes Complainant’s entire mark and simply adds the
generic terms “credit” and “card,” which are related to Complainant’s banking
services. Panels have concluded that
the mere addition of generic terms to a complainant’s mark does not negate a
finding that a domain name is confusingly similar to a 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 Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc.,
D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly
similar to the complainant's mark since it merely adds the word “auction” used
in its generic sense). Therefore, the
domain name is confusingly similar to Complainant’s NATWEST mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and
legitimate interests in the <natwestcreditcard.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <natwestcreditcard.com> domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug.
21, 2000) (finding no rights or legitimate interests where the respondent fails
to respond); see also BIC
Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000)
(“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”).
However, the Panel will now
examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Danny
Robinson,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <natwestcreditcard.com> domain
name. Consequently, Respondent has not
established rights or legitimate interests in the <natwestcreditcard.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail"); 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).
In addition, Respondent’s <natwestcreditcard.com> domain name, which includes Complainant’s NATWEST mark, resolves to a search engine website containing links to Complainant’s competitors and to other content. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel concluded that respondent’s registration and use of confusingly similar domain names to divert Internet users to its own website did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii), and that hosting links to the complainant’s direct competitors only reinforced that conclusion.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <natwestcreditcard.com> domain
name to operate a search engine website with links to Complainant’s competitors
and to content unrelated to Complainant provides evidence that Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iv). In Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000), the panel found that the respondent’s diversion of Internet
users who were seeking the complainant’s website to its own website for
commercial gain created “a likelihood of confusion with the Complainant’s mark
as to the source, sponsorship, endorsement, or affiliation of its website” and,
therefore, provided evidence of bad faith registration and use in violation of
Policy ¶ 4(b)(iv). In this case, Respondent is also redirecting Internet users
seeking Complainant’s products and services to its own website for commercial
gain, because Respondent likely receives referral fees for each consumer
it diverts to other websites. Hence,
Respondent is taking advantage of the confusing similarity between the disputed
domain name and Complainant’s NATWEST mark, and profiting from the goodwill
associated with the mark, which violates Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site).
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 <natwestcreditcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 22, 2006
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