National Westminster Bank plc v. Stephen Moore c/o Customer Service
Claim Number: FA0609000791917
Complainant is National Westminster Bank plc (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC, 27602. Respondent is Stephen Moore c/o Customer Service (“Respondent”), 48 Commerscial Way, London, SW1 1LP IE.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <natwestonlineservices.com> and <natwestonlineservices.info>, registered with Netdorm, Inc. d/b/a Dnsexit.com OnlineNIC, Inc., respectively.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 8, 2006; the National Arbitration Forum received a hard copy of the Complaint September 8, 2006.
On September 19, Netdorm, Inc. d/b/a Dnsexit.com confirmed by e-mail to the National Arbitration Forum that the <natwestonlineservices.com> domain name is registered with Netdorm, Inc. d/b/a Dnsexit.com and that Respondent is the current registrant of the name. Netdorm, Inc. d/b/a Dnsexit.com verified that Respondent is bound by the Netdorm, Inc. d/b/a Dnsexit.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
September 12, 2006 OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <natwestonlineservices.info> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. verified that Respondent is bound by the OnlineNIC, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 11, 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@natwestonlineservices.com and postmaster@natwestonline services.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain names that Respondent registered, <natwestonlineservices.com> and <natwestonlineservices.info>, are confusingly similar to Complainant’s NATWEST mark.
2. Respondent has no rights to or legitimate interests in the <natwestonlineservices.com> and <natwestonlineservices.info> domain names.
3. Respondent registered and used the <natwestonlineservices.com> and <natwestonlineservices.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a leading international financial institution based in the United Kingdom. Complainant holds registrations for the NATWEST mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983) and with the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,021,601 filed December 3, 1973) as well as in numerous other international jurisdictions. As a leading international financial institution, Complainant utilizes the NATWEST mark in connection with offering an array of financial services, including credit cards and personal and business banking services. Complainant holds registrations of the <natwest.com> and <natwestonline.com> domain names, which it uses to operate websites allowing its customers to find information about Complainant’s services online. Additionally, customers engage in online banking services at Complainant’s websites using personal information, such as names and passwords, to gain access to online banking services, including account information.
Respondent registered the <natwestonlineservices.com> domain name January 12, 2006, and the <natwestonlineservices.info> domain name January 13, 2006. Currently, the <natwestonlineservices.com> domain name resolves to a webpage with the following message posted from the registrar: “The website has been closed. If you see this page, the site must have been closed by DNSEXIT.com. A site will be closed if it is used to spread virus, spam, cheating on logins data or other illegal activities.” Before the website was shut down by the registrar, Respondent was using the <natwestonlineservices.com> domain name to operate a website that imitated Complainant’s genuine website found at the <natwest.com> domain name. Respondent’s dupicate website sought for users to provide sensitive personal information, such as account numbers and passwords. The <natwestonlineservices.info> domain name does not resolve to any content at this time, and no evidence suggests that Respondent previously put the domain name to active use.
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 will draw such inferences as the Panel 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 Complainant to 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’s registrations of the NATWEST mark with the
USPTO and UKPO predate Respondent’s registration of the disputed domain name by
many years. Under the Policy,
registration of a mark with an appropriate governmental authority confers
rights in that mark to the Complainant.
Thus, the Panel finds that Complainant established rights in the NATWEST
mark pursuant to Policy ¶ 4(a)(i). 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 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.”).
The disputed domain names, <natwestonlineservices.com> and <natwestonlineservices.info>, are confusingly similar to Complainant’s NATWEST mark. The disputed domain names include the NATWEST mark in its entirety, which is sufficient to conclude that a confusing similarity exists between the disputed domain names and Complainant’s mark, according to the panel in Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). In Oki Data Ams., Inc. the panel found that, “the 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.” The addition of the terms “online” and “services” to Complainant’s mark does nothing to distinguish the disputed domain names from Complainant’s mark. Indeed, since the terms “online” and “services” are descriptive and suggestive of Complainant’s online banking services, the additional terms increase the potential confusion between the disputed domain names and Complainant’s mark. For example, the panel in Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001), found confusing similarity between the <christiesauction.com> domain name and the CHRISTIES mark because the term “auction” was descriptive of the complainant’s business. Similarly, the panel in Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001), found that the <broadcomonline.com> domain name was confusingly similar to the complainant’s BROADCOM mark despite the addition of the term “online.” Finally, the addition of the generic top-level domains “.com” and “.info” do not distinguish the disputed domain names from Complainant’s mark because, as the panel in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) held, generic top-level domains are a required element of all domain names and do not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s NATWEST mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant provided extrinsic proof in this proceeded to establish that Complainant has rights to and legitimate interests in the mark contained in its entirety within the disputed domain names. Complainant asserts that Respondent lacks such rights to or legitimate interests in the <natwestonlineservices.com> and <natwestonlineservices.info> domain names that contain Complainant’s mark. Complainant’s assertion establishes a prima facie case under the Policy and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent had the opportunity to present the Panel with evidence and arguments supporting its rights or legitimate interests in the disputed domain name by submitting a Response.
The Panel views Respondent’s failure to respond as evidence suggesting that Respondent lacks rights or legitimate interests. Nonetheless, the Panel examines the available evidence to determine whether Respondent has rights or legitimate interests as outlined in 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 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.”)
The website operated at the <natwestonlineservices.com>
domain name is currently non-operational because the domain name registrar
closed the website, citing “a violation of abuse policy.” Prior to the closing of the website,
Respondent was using the disputed domain name to operate a website that
imitated Complainant’s genuine online banking website. Presumably, the dublicate website was being
used by Respondent to deceive Complainant’s Internet customers in order to
acquire their sensitive personal information, such as account numbers and
passwords. Respondent apparently was
using the <natwestonlineservices.com> domain name as part of a
“phishing” scam. According to the panel
in Juno Online Servs., Inc. v. Nelson,
FA 241972 (Nat. Arb. Forum Mar. 29, 2004), “‘phishing’ involves the use of
e-mails, pop-ups or other methods to trick Internet users into revealing credit
cards, passwords, social security numbers and other personal information to the
‘phishers’ who intend to use such information for fraudulent purposes.” Phishing is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The panel in Capital One Fin. Corp. v.
Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004), found that the
respondent’s use of the disputed domain name for phishing was evidence that the
respondent lacked rights or legitimate interests in the disputed domain name
because 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 nor a legitimate
noncommercial or fair use. Similarly,
in HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11,
2004) the panel found that a domain name that, “is confusingly similar to
Complainant’s mark, redirects Internet users to a website that imitates
Complainant’s website, and is used to acquire personal information from
Complainant’s potential associates fraudulently” does not fall within the
parameters of Policy ¶¶ 4(c)(i) or (iii).
Thus, the Panel finds that the Respondent lacks rights or legitimate
interests in the <natwestonlineservices.com> domain name pursuant
to Policy ¶¶ 4(c)(i) or (iii).
Respondent is not currently using the <natwestonlineservices.info>
domain name, nor is there available evidence of past legitimate use or
plans for future use. It is impossible
for Respondent to demonstrate that the disputed domain name is being held in
connection with a bona fide offering of goods or services as
contemplated by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as
contemplated by Policy ¶ 4(c)(iii) where Respondent has failed to use the
disputed domain name, or to present evidence of demonstrable preparations for
use. The panel in Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001),
declined to find rights or legitimate interests where the respondent failed to
use a disputed domain name in any way.
The panel in State Fair of Tex. v.
State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000), came to a
similar conclusion, finding that the respondent lacked rights or legitimate
interests where the respondent failed to develop a website in connection with
the disputed domain name. Thus, the
Panel finds that Respondent’s failure to use, or provide evidence of
demonstrable preparations to use the <natwestonlineservices.info> domain
name indicates that Respondent lacks rights or legitimate interests pursuant to
Policy ¶ 4(c)(i) and (iii).
Additionally, no available evidence indicates that Respondent is commonly known by the <natwestonlineservices.com> and <natwestonlineservices.info> domain names. Respondent’s WHOIS information identifies Respondent as “Stephen Moore,” a name with no obvious relationship to the disputed domain names. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) the panel looked to WHOIS information as one source of evidence for determining whether a respondent is commonly known by a disputed domain name. In Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), the panel found that the respondent was not commonly known by the <awvacations.com> where the WHOIS information identified the respondent as “Ilyoup Paik a/k/a David Sanders.” The Panel finds that Respondent is not commonly known by the disputed domain names as contemplated by Policy ¶ 4(c)(ii), and thus lacks rights or legitimate interests in the disputed domain names.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and used the disputed domain names in bad faith. The Panel is not limited to the circumstances described in Policy ¶¶ 4(b)(i)-(iv) in finding evidence of bad faith registration and use. In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel found that, “the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.” Similarly, the panel in Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000), held that “just because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.” In this case, Respondent’s use of the <natwestonlineservices.com> domain name to operate a phishing scam, and Respondent’s failure to use or prepare to use the <natwestonlineservices.info> domain name both evidence bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii).
Respondent used the <natwestonlineservices.com>
domain name to engage in a “phishing” scam, misdirecting Internet users seeking
Complainant’s genuine website to Respondent’s website, an imitation of Complainant’s
genuine website. Complainant uses its
genuine website in connection with offering extensive online banking services
to its customers and requires customers to provide sensitive proprietary
information, including account numbers and passwords, to engage in online
banking services. By imitating
Complainant’s genuine website, Respondent was deceiving Complainant’s Internet
customers and manipulating them into divulging sensitive personal information. Presumably, Respondent may have used this
sensitive information for fradulent purposes, for example, identity theft. In a similar dispute involving online
banking services, the panel in Capital One Fin. Corp. v. Howel, FA
289304 (Nat. Arb. Forum Aug. 11, 2004), found bad faith registration and use
because the respondent used the domain name to redirect Internet users to a
website that imitated the complainant’s website and to fraudulently acquire
personal information from the complainant’s clients. In HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum
Nov. 11, 2004), the panel found that the respondent registered and used the
domain name in bad faith because it redirected Internet users to a website that
imitated the complainant’s website and was used to fraudulently acquire
personal information from the complainant’s potential associates. Thus, the Panel finds that Respondent’s use
of the <natwestonlineservices.com> domain name to engage in a
fradulent “phishing” scheme is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii).
Respondent has not used the <natwestonlineservices.info> domain name in connection with a website, and no available evidence suggests that Respondent is preparing to use the disputed domain name. In fact, it is difficult to imagine a good faith use for the disputed domain name outside some use by Complainant. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel found that the complainant was under no obligation to wait until the respondent misused the disputed domain name where, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use.” This seems applicable to the case at hand, where one domain name registered to Respondent that contains Complainant’s protected mark has already been used in connection with fraudulent activities; it seems, therefore, unreasonable to impute good faith intentions to Respondent in connection with the other domain name just because Respondent has not yet put the disputed domain name to use. The panels in Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), found that the respondents’ failure to use or demonstrate preparations to use disputed domain names was itself evidence of bad faith registration and use. Thus, the Panel finds that Respondent’s failure to use or prepare to use the <natwestonlineservices.info> domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natwestonlineservices.com> and <natwestonlineservices.info> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 27, 2006.
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