National Westminster Bank plc v. Bruce Bennett
Claim Number: FA0605000709188
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 Bruce Bennett (“Respondent”), 2002 Richard Jones Rd, Nashville, TN 37215.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nationalwestministerbankonline.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 22, 2006.
On May 23, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <nationalwestministerbankonline.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 May 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 13, 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@nationalwestministerbankonline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <nationalwestministerbankonline.com> domain name is confusingly similar to Complainant’s NATIONAL WESTMINSTER BANK mark.
2. Respondent does not have any rights or legitimate interests in the <nationalwestministerbankonline.com> domain name.
3. Respondent registered and used the <nationalwestministerbankonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, holds trademark registrations with the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,278,213 issued March 15, 1991; Reg. No. 1,278,214 issued March 15, 1991) and with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,587,103 issued March 13, 1990) for the NATIONAL WESTMINSTER BANK mark. Complainant uses the mark in connection with financial goods and services, including personal and business banking and credit services, financial planning services and insurance services. Complainant uses its <natwest.com> and <natwestonline.com> domain names to operate websites offering online banking services, including the ability for clients to view balances and statements, pay bills and complete other financial transactions.
Respondent registered the <nationalwestministerbankonline.com> domain name January 17, 2006. Respondent is not using the disputed domain name and that as of May 4, 2006 the domain name resolved to a website with a message stating “This site is under construction.”
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 NATIONAL WESTMINSTER BANK mark through registration of the mark with the USPTO and UKPO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <nationalwestministerbankonline.com> domain name is confusingly similar to Complainant’s NATIONAL WESTMINSTER BANK mark because Respondent’s domain name uses a common misspelling of Complainant’s mark (the addition of an extra letter “i”), combined with the generic descriptive term “online” and the top-level domain “.com.” The Panel finds that common misspellings, combined with generic descriptive terms and top-level domains, are insufficient to overcome the confusing similarity between the disputed domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s assertion that Respondent lacks rights or legitimate interest in the <nationalwestministerbankonline.com> domain name constitutes a prima facie case for purposes of this Panel. Once a prima facie case is so established, the burden shifts to the Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel may regard Respondent’s failure to respond as evidence that no such rights or legitimate interests exist. See 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).”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will examine the available evidence to determine whether or not the Respondent has rights or legitimate interests in the disputed domain name.
Respondent is not using the <nationalwestministerbankonline.com> domain name. Instead, the domain name resolves to a website with the message “This site is under construction.” The Panel finds that such passive holding of a disputed domain name does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)); see also Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Furthermore, there is no available evidence suggesting that Respondent is commonly known by the <nationalwestministerbankonline.com> domain name, either as an individual or for business purposes. Complainant indicates that Respondent has no authorization from, or affiliation with, Complainant that would justify the use of the confusingly similar domain name. In addition, Respondent’s WHOIS information identifies Respondent as “Bruce Bennett,” which is in no way similar to Respondent’s <nationalwestministerbankonline.com> domain name. Thus, the Panel finds that Respondent has failed to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that the respondent was not “commonly known by” the name “girls gon wild” or <girlsgonwild.com>).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <nationalwestministerbankonline.com> domain name, which is confusingly similar to Complainant’s NATIONAL WESTMINSTER BANK mark, resolves to a website with a “This site is under construction” message. In the absence of any evidence of preparations to use the disputed domain name, such nonuse constitutes passive holding. The Panel finds that the passive holding of a domain name constitutes bad faith registration and use pursuant to Policy 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) the respondent knew or should have known of the complainant’s famous GALLO marks and (2) the respondent made no use of the domain name <winegallo.com>).
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 <nationalwestministerbankonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 28, 2006
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