National Westminster Bank plc v. Insure & Go Insurance Services Ltd.
Claim Number: FA0606000739907
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 Insure & Go Insurance Services Ltd. (“Respondent”), Warners Mill, Silks Way, Braintree, Essex CM7 3GB UK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwestinsurance.com>, registered with Tucows 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 June 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 28, 2006.
On June 27, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <natwestinsurance.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 June 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 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@natwestinsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2006, 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 <natwestinsurance.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestinsurance.com> domain name.
3. Respondent registered and used the <natwestinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a leading United Kingdom financial institution specializing in personal and business banking and insurance services. Complainant has registered its NATWEST mark both with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued on June7, 1983) and with the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,021,601 issued on February 1, 1975). Complainant uses its NATWEST mark in connection with providing a full range of insurance goods and services and investment opportunities to its customers. In order to provide Internet users with information about, and access to, its goods and services, Complainant has registered numerous domain names using the NATWEST mark, including <natwestbank.org>, <natwestbank.biz>, <natwestbank.org.uk>, and operates websites in connection with those domain names.
Respondent registered the <natwestinsurance.com> domain name on December 14, 2001. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which features an Internet search engine devoted to insurance related searches. In addition to this search engine, Respondent’s website also features numerous links to third-party websites offering goods and services in direct competition with Complainant, specifically links to home, car, life and travel insurance goods and 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 has established its rights in the NATWEST mark through registration with the USPTO and the UKPO. The Panel finds that such registration with a government authority is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). 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 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.").
Respondent’s <natwestinsurance.com> domain name
is confusingly similar to Complainant’s NATWEST mark. The disputed domain name includes Complainant’s mark in its
entirety and adds the term “insurance.”
The term “insurance” clearly describes Complainant’s business as a
financial institution providing insurance goods and services. The addition of a term descriptive of
Complainant’s business to Complainant’s mark does not create a distinct
mark. On the contrary, the addition of
a term that obviously relates to Complainant’s business makes it even more
likely that Internet users will be confused about its sponsorship or
affiliation with the disputed domain name.
Thus, the Panel finds that the <natwestinsurance.com> domain
name is confusingly similar to Complainant’s NATWEST mark pursuant to Policy ¶
4(a)(i). See Oki Data Ams., Inc. v.
ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name
wholly incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see
also 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 Brown & Bigelow,
Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to the complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which the complainant is engaged, does not take the
disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <natwestinsurance.com> domain name, thus establishing a prima facie case. With the establishment of a prima facie case, the burden shifts to the Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(a)(ii). When Respondent fails to submit a Response, the Panel may view that failure as evidence that Respondent lacks rights or legitimate interests. However, the Panel will evaluate the available evidence as submitted by Complainant in order to determine whether or not Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).
Respondent is using the <natwestinsurance.com> domain name to operate a website including an Internet search engine specifically tailored to insurance related searches and links to third-party websites offering goods and services in direct competition with Complainant. Respondent’s domain name is confusingly similar to Complainant’s NATWEST mark and Respondent is utilizing that confusing similarity to redirect Internet users to Respondent’s website, presumably for Respondent’s financial benefit due to click-through referral fees from the search engine and third-party links. The Panel finds that such use is neither a bona fide offering of goods or services as outlined by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as outlined by Policy ¶ 4(c)(iii). See Trans Global Tours, LLC v. Yong Li, FA 196166 (Nat. Arb. Forum Nov. 1, 2003) (finding that the respondent was not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it was diverting Internet users to a search engine with pop-up advertisements); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant asserts, and there is no available evidence to
the contrary, that Respondent is not commonly known by the <natwestinsurance.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “Insure & Go Insurance Services
Ltd.” While the disputed domain name
and Respondent’s WHOIS identity both include the term “insurance,” Respondent’s
WHOIS information does not include anything similar to Complainant’s NATWEST
mark, also included in the disputed domain name. This evidence, combined with Complainant’s assertion that
Respondent is in no way sponsored by or affiliated with complainant,
demonstrates that Respondent is not commonly known by the disputed domain
name. Thus, the Panel finds that
Respondent lacks 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <natwestinsurance.com> domain
name to redirect Internet users to Respondent’s website featuring an Internet
search engine targeted at insurance related searches and links to third-party
websites offering an array of insurance goods and services in direct
competition with Complainant.
Presumably, Respondent is receiving pay-per-click fees from these offerings
of competing goods and services. The
Panel finds that such use disrupts Complainant’s business and is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Disney Enters., Inc. v.
Noel, FA 198805 (Nat. Arb. Forum Nov. 11,
2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent’s <natwestinsurance.com>
domain name is confusingly similar to Complainant’s NATWEST mark. Internet users interested in Complainant’s
insurance related goods and services could easily become confused by
Respondent’s domain name combining Complainant’s NATWEST mark with the term
“insurance.” Respondent is capitalizing
on this confusion to attract Internet users to Respondent’s website, which
offers an insurance focused Internet search engine and links to competing
third-party websites, presumably to generate pay-per-click fees. Internet users redirected to Respondent’s
website and confronted with the search engine and third-party links might
mistakenly believe that Respondent’s website is sponsored by or affiliated with
Complainant. Thus, Respondent is
presumably generating income from his website by attracting Internet users
through the use of a confusingly similar domain name. The Panel finds that such use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista
Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that
offered links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes); see also TM
Acquisition Corp. v. Warren, FA 204147
(Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal
website is <century21.com>, many Internet users are likely to use search
engines to find Complainant’s website, only to be mislead to Respondent’s
website at the <century21realty.biz> domain name, which features links
for competing real estate websites.
Therefore, it is likely that Internet users seeking Complainant’s
website, but who end up at Respondent’s website, will be confused as to the
source, sponsorship, affiliation or endorsement of Respondent’s website.”).
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 <natwestinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 7, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum