National Westminster Bank plc v. fidelitybanknigeriaplC c/o Mr. James Smith
Claim Number: FA0607000747953
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 fidelitybanknigeriaplC c/o Mr. James Smith (“Respondent”), 39 Adeyemo Alakija, Victoria Island, Lagos, Lagos 2341, NG.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <nationwestb.net>, <nationwest.net>, and <nationwestb.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.
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 July 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 17, 2006.
On July 21, 2006, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <nationwestb.net>, <nationwest.net>, and <nationwestb.com> domain names are registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Direct Information Pvt Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.com 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 July 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 14, 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@nationwestb.net, postmaster@nationwest.net, and postmaster@nationwestb.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2006, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nationwestb.net>, <nationwest.net>, and <nationwestb.com> domain names are confusingly similar to Complainant’s NATWEST and NATIONAL WESTMINSTER BANK marks.
2. Respondent does not have any rights or legitimate interests in the <nationwestb.net>, <nationwest.net>, and <nationwestb.com> domain names.
3. Respondent registered and used the <nationwestb.net>, <nationwest.net>, and <nationwestb.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, provides a wide-range of banking and financial services in the United Kingdom and throughout the world. Complainant offers its services under the NATWEST and NATIONAL WESTMINSTER BANK marks, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983 and Reg. No. 1,587,103 issued March 13, 1990).
Respondent, Domains Ventures, registered the <nationwestb.net> domain name on February 1, 2006, the <nationwest.net> domain name on January 11, 2006, and <nationwestb.com> domain name on February 3, 2006. Respondent’s <nationwestb.net> and <nationwest.net> domain names resolve to websites that utilize Complainant’s logo and marks and attempt to pass themselves off as websites of Complainant’s banking and financial services business. The websites located at the <nationwestb.net> and <nationwest.net> domain names also request information from Internet users, including the Internet user’s name, user identification, and password. Respondent’s <nationwestb.com> domain name resolves to an inactive website that 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 asserts and provides evidence of trademark registrations for its NATWEST and NATIONAL WESTMINSTER BANK marks throughout the world, including with the USPTO. Consequently, the Panel finds that Complainant’s trademark registrations evince Complainant’s rights in the NATWEST and NATIONAL WESTMINSTER BANK marks in accord with Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006)(finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks wit the USPTO satisfies the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).
Furthermore, the Panel finds that Respondent’s <nationwestb.net>, <nationwest.net>, and <nationwestb.com> domain names are confusingly similar to Complainant’s NATWEST and NATIONAL WESTMINSTER BANK marks. Respondent’s disputed domain names consist of abbreviations of Complainant’s registered NATIONAL WESTMINSTER BANK mark with the addition of the generic top-level domain (“gTLD”) “.net” or “.com.” Moreover, the <nationwestb.net> and <nationwestb.com> domain names feature Complainant’s NATWEST mark with the addition of the letters “ion” and “b,” along with a gTLD. Therefore, consistent with the holdings of prior panels, the Panel in the instant case finds that Respondent’s alterations to Complainant’s registered marks do not negate the creation of confusing similarity between the disputed domain names and Complainant’s marks. See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the <barnesandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar to the complainant’s BARNESANDNOBLE.COM mark because the additions of the letter “s” and generic top-level domains to the dominant features of the complainant’s mark do not negate the confusingly similar aspects of the domain names pursuant to Policy ¶ 4(a)(i)); 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.
In accord with Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights and legitimate interests with respect to the disputed domain names. However, once Complainant demonstrates a prima facie case, the burden then shifts, and Respondent must establish that it possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in connection with the <nationwestb.net>, <nationwest.net>, and <nationwestb.com> domain names under Policy ¶ 4(c).
The Panel finds that the evidence on record fails to indicate that Respondent is commonly known by the <nationwestb.net>, <nationwest.net>, and <nationwestb.com> domain names pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information suggests that Respondent is known as “fidelitybanknigeriaplC” or “MR. JAMES SMITH,” and not by any of the disputed domain names. Moreover, there is no indication that Respondent is affiliated in any way with Complainant. Thus, the Panel finds that the evidence does not demonstrate that Respondent is commonly known by any of the disputed domain names under 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 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”).
Furthermore, the evidence on record suggests that Respondent’s <nationwestb.net> and <nationwest.net> domain names resolve to websites that attempt to pass themselves off as websites of Complainant’s banking and financial services business. Specifically, Respondent utilizes Complainant’s logo and NATWEST mark in the exact manner in which the mark appears on Complainant’s website. Consequently, the Panel finds that Respondent has not engaged in 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), and therefore has not demonstrated rights or legitimate interests with respect to the <nationwestb.net> and <nationwest.net> domain names. See Vapor Blast Mfg. Co. v. R & S Techs., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website).
Additionally, in attempting to pass themselves off as websites for Complainant, Respondent’s websites located at the <nationwestb.net> and <nationwest.net> domain names request personal information from Internet users, namely the Internet user’s name, user identification, and password. As a result, the Panel finds that Respondent has engaged in phishing, and that such conduct serves as further evidence of Respondent’s lack of rights or legitimate interests in the <nationwestb.net> and <nationwest.net> domain names under Policy ¶ 4(a)(ii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel also finds that Respondent’s <nationwestb.com> domain name resolves to an inactive website that is “under construction.” Thus, the Panel finds that Respondent’s failure to use the <nationwestb.com> domain name in any way indicates that Respondent does not have rights or legitimate interests with respect to the domain name under Policy ¶ 4(a)(ii). 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 Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <nationwestb.net> and <nationwest.net> domain names to operate websites that attempt to pass themselves off as websites for Complainant’s banking and financial services business. Moreover, as previously stated, Respondent’s websites attempt to obtain personal information from Internet users who likely mistake Respondent’s websites for those of Complainant. Therefore, the Panel finds that Respondent’s use of the <nationwestb.net> and <nationwest.net> domain names to attempt to pass itself off as Complainant, as well as Respondent’s phishing activities, establish that Respondent registered and used the <nationwestb.net> and <nationwest.net> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(a)(i)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
With respect to the <nationwestb.com> domain name, the Panel finds that Respondent has failed to make any use or any demonstrable preparations to use the disputed domain name. Therefore, the Panel finds that Respondent’s inactive use of the domain name serves as evidence that Respondent registered and used the in bad faith pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <nationwestb.net>, <nationwest.net>, and <nationwestb.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 30, 2006
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