National Westminster Bank plc v. Webname Solution
Claim Number: FA0608000766723
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 Webname Solution (“Respondent”), 1256 Guy Street, Montreal, PQ H3H 2L3 CA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwest-onlinebanking.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 2, 2006.
On August 2, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <natwest-onlinebanking.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 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@natwest-onlinebanking.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 29, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <natwest-onlinebanking.com> domain name is confusingly similar to Complainant’s NATWEST ON LINE mark.
2. Respondent does not have any rights or legitimate interests in the <natwest-onlinebanking.com> domain name.
3. Respondent registered and used the <natwest-onlinebanking.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is one of the largest financial institutions in the United Kingdom and is part of the fifth largest financial services group in the world. Through its 3,600 branches, Complainant provides banking services to more than 7.5 million personal customers and 850,000 business customers. Complainant is owned by The Royal Bank of Scotland Group. Complainant owns numerous domain names, including <natwest.com> (registered on February 11, 1997), <natwestonline.com> (registered on September 4, 2003), <natwestonlinebanking.org> (registered on October 8, 2002), <natwestonlinebanking.net> (registered on July 23, 2002), <natwestonlinebanking.info> (registered on October 8, 2002), <natwestonlinebanking.biz> (registered on October 8, 2002) and <natwestonlinebanking.org.uk> (registered on October 8, 2002).
Complainant has registered the NATWEST mark in several countries, including in the United Kingdom with the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,021,601 issued December 3, 1973; Reg. No. 2,181,287 issued November 5, 1998) and in the United States with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983). Complainant also holds a trademark registration for the NATWEST ON LINE mark with the UKPO (Reg. No. 1,278,427 issued November 5, 1990).
Respondent registered the <natwest-onlinebanking.com> domain name under the name “Webname Solution” on March 15, 2006. Respondent’s domain name resolved to a commercial web directory with links to Complainant’s competitors in the financial services industry up until around July 27, 2006. Since then, Respondent has not made any active use of the domain name in dispute.
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 submitted substantial evidence of its
numerous trademark registrations for the NATWEST and NATWEST ON LINE
marks. The Panel finds that these
trademark registrations establish Complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i). See Miller Brewing
Co. v. The Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002)
(finding that the complainant had established rights to the MILLER TIME mark
through its federal trademark registrations); see also The Royal Bank of
Scotland Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The
Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark
with the United Kingdom Patent Office as evidence of Complainant’s rights in
the mark pursuant to Policy ¶ 4(a)(i).”).
In addition, by wholly incorporating Complainant’s NATWEST
ON LINE mark and merely adding a hyphen and the term “banking,” a term that
describes an important component of Complainant’s financial services business,
Respondent has not sufficiently distinguished the <natwest-onlinebanking.com>
domain name from Complainant’s NATWEST ON LINE mark. Therefore, the disputed domain name is confusingly similar to the
mark pursuant to Policy ¶ 4(a)(i). See
Eastman Chemical Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005)
(“Therefore, the Panel concludes that the addition of a term descriptive of
Complainant’s business, the addition of a hyphen, and the addition of the gTLD
“.com” are insufficient to distinguish Respondent’s domain name from
Complainant’s mark.”); see also Amer. Express Co. v. MustNeed.com, FA
257901 (Nat. Arb. Forum Jun. 7, 2004) (finding the respondent’s
<amextravel.com> domain name confusingly similar to Complainant’s AMEX
mark because the “mere addition of a generic or descriptive word to a
registered mark does not negate” a finding of confusing similarity under Policy
¶ 4(a)(i)).
The Panel concludes that Complainant has satisfied this element of the Policy.
Complainant alleges that Respondent lacks rights and legitimate interests in the <natwest-onlinebanking.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <natwest-onlinebanking.com>
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise).
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 <natwest-onlinebanking.com>
domain name under the name “Webname Solution,” and there is no other evidence
in the record suggesting that Respondent is commonly known by the <natwest-onlinebanking.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <natwest-onlinebanking.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Coppertown Drive-Thru Systems, LLC v.
Snowden, FA 715089 (Nat. Arb.
Forum Jul. 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Respondent’s domain name currently resolves to a blank page but Respondent has used the <natwest-onlinebanking.com> domain name in the past to operate a commercial web directory with links to Complainant’s competitors in the financial services industry. In Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003), the panel found that Respondent had no rights or legitimate interests in the <jawsoflife.com> domain name because Respondent was diverting Internet users to the website of one of the complainant’s competitors. Because Respondent has also diverted Internet users seeking Complainant’s services to the websites of Complainant’s competitors and likely received click-through fees for redirecting consumers to these websites, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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)).
Moreover, Respondent’s non-use of the disputed domain name
without any demonstrable preparations for use also does not provide Respondent
with rights or legitimate interests in the disputed domain name under Policy ¶
4(c)(i) or ¶ 4(c)(iii). See Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or
service or develop the site demonstrates that the respondent had not
established any rights or legitimate interests in the domain name); see also
Vestel Elektronik Sanayi ve Ticaret
AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the
domain name is not sufficient to establish rights or legitimate interests for
purposes of paragraph 4(a)(ii) of the Policy.”).
The Panel concludes that Complainant has satisfied this element of the Policy.
Respondent has used the <natwest-onlinebanking.com>
domain name to redirect Internet users to a website with links to Complainant’s
direct competitors in the financial services industry, potentially disrupting
Complainant’s business. In EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000), the panel
concluded that the respondent had registered and used the <eebay.com>
domain name in bad faith by using it to promote auction sites competing with
the complainant. Similarly,
Respondent’s use of the disputed domain name to feature competing financial
services companies indicates that Respondent has registered and used the <natwest-onlinebanking.com>
domain name in order to disrupt Complainant’s business in bad faith according
to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding that the respondent registered the domain name in question to disrupt
the business of the complainant, a competitor of the respondent).
By using the <natwest-onlinebanking.com>
domain name to divert Internet users to competing financial services websites,
Respondent has also attempted to attract, for commercial gain, consumers
seeking information on Complainant to its own website. In Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30,
2000), the panel found that respondent’s use of the <identagene.com>
domain name, which was confusingly similar to the complainant’s IDENTIGENE
mark, to operate a website offering Internet users similar services as
Complainant constituted bad faith registration and use because it was likely to
cause consumer confusion as to the source or sponsorship of the services
offered at the domain name. Likewise, Respondent is taking advantage of
consumer confusion as to the source, affiliation, sponsorship or endorsement of
the disputed domain name and likely profiting from the goodwill associated with
the NATWEST ON LINE mark in the form of click-through fees. The Panel finds Respondent’s registration
and use of the <natwest-onlinebanking.com> domain name to be in
bad faith according to Policy ¶ 4(b)(iv).
See Allianz of America Corp. v. Bond, FA 680624
(Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under
Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching
for the complainant to its own website and likely profiting from click-through
fees).
Although Respondent’s website at the disputed domain name now resolves to a blank page, Respondent’s failure to make use of the <natwest-onlinebanking.com> domain name provides further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); 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 concludes that Complainant has satisfied this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natwest-onlinebanking.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 12, 2006
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