National Westminster Bank plc v. Mark Fazzina
Claim Number: FA0609000791964
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 Mark Fazzina (“Respondent”), 603 Kerr Street, Columbus, OH 43215.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thenatwestbankonline.com>, registered with Tlds, Llc d/b/a Srsplus.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 11, 2006.
On September 15, 2006, Tlds, Llc d/b/a Srsplus confirmed by e-mail to the National Arbitration Forum that the <thenatwestbankonline.com> domain name is registered with Tlds, Llc d/b/a Srsplus and that Respondent is the current registrant of the name. Tlds, Llc d/b/a Srsplus has verified that Respondent is bound by the Tlds, Llc d/b/a Srsplus 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 September 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 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@thenatwestbankonline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <thenatwestbankonline.com> domain name is identical/confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <thenatwestbankonline.com> domain name.
3. Respondent registered and used the <thenatwestbankonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a financial institution based in the
United Kingdom that offers a wide range of financial services, including
personal and business banking services and credit cards. Originally founded in 1968, Complainant now
provides its financial and banking services to more than 7.5 million personal
customers and 850,00 small business accounts.
Complainant is owned by the Royal Bank of Scotland Group, and is part of
the fifth-largest financial services group in the world. Complainant holds a trademark
registration for the NATWEST mark with the United States Patent and Trademark
Office (Reg. No. 1,241,454 issued June 7, 1983), as well as with the United
Kingdom Patent Office. Complainant also
holds the <natwest.com> and <natwestonline.com>
domain name registrations, through which Complainant operates websites in
connection with its offering of online banking services.
Respondent, Mark Fazzina, registered the <thenatwestbankonline.com> domain name on June 1, 2006. As of June 28, 2006, Respondent’s <thenatwestbankonline.com> domain name resolved to a website for a fictitious bank attempting to pass itself off as Complainant. The resulting website prompted Internet users to enter personal information relating to their bank accounts with Complainant, including customer numbers, social security numbers, and passwords. As of September 5, 2006, Respondent’s disputed domain name did not resolve to an active website.
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 provides evidence of several trademark registrations for the NATWEST mark in jurisdictions throughout the world, including a trademark registration with the USPTO. Thus, the Panel finds that Complainant’s registration of its NATWEST mark with the USPTO sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Moreover, the Panel finds that Respondent’s <thenatwestbankonline.com> domain name is confusingly similar to Complainant’s NATWEST mark for purposes Policy ¶ 4(a)(i). Respondent’s disputed domain name consists of Complainant’s registered NATWEST mark with the addition of the article “the,” and the descriptive terms “bank” and “online,” followed by the generic top-level domain (“gTLD”) “.com.” Previous panels have consistently held that the addition of an article such as “the,” fails to sufficiently differentiate a domain name from a mark. See Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the domain names fails to make them separate and distinct, as distinguishable from Complainant’s marks.”); see also John Fairfax Publ’ns Pty Ltd. v. Pro-Life Domains Not for Sale, FA 213460 (Nat. Arb. Forum Jan. 6, 2004) (“The addition of the article ‘the’ does not significantly distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i).”). Furthermore, the addition of terms that describe a complainant’s business do not serve to create a domain name that is distinct from the complainant’s mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); 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). Additionally, the addition of a gTLD does not negate the creation of confusing similarity between the resulting domain name and a mark under Policy ¶ 4(a)(i). See 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); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding that the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Therefore, the Panel in the instant case concludes that Respondent’s <thenatwestbankonline.com> domain name is confusingly similar to Complainant’s NATWEST mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Per Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant establishes a prima facie case, the burden shifts, and Respondent must demonstrate that it has rights or legitimate interests in connection with the disputed domain name pursuant to Policy ¶ 4(a)(ii). See 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”); see also 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 subparagraph, 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.”). The Panel finds that Complainant has established a prima facie case. Therefore, the Panel will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
The Panel finds that the evidence on record does not suggest
that Respondent is commonly known by the disputed domain name in accord with
Policy ¶ 4(c)(ii). Complainant asserts
that Respondent is neither licensed nor otherwise authorized to use
Complainant’s registered NATWEST mark.
Respondent’s WHOIS information does not indicate that Respondent is
commonly known by the disputed domain name.
Rather, the WHOIS information suggests that Respondent is known as “Mark
Fazzina.” Therefore, the Panel finds
that the evidence on record does not establish that Respondent is commonly
known by the <thenatwestbankonline.com> domain name under Policy ¶
4(c)(ii). See 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); see
also M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not
commonly known by the <cigaraficionada.com> domain name because the WHOIS
information lists the registrant of the domain name as as
“WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record
indicating that the respondent is known by the domain name).
The evidence on record indicates that as of June 28, 2006, Respondent was using the <thenatwestbankonline.com> domain name to operate a website that resolved to a website for a fictitious bank attempting to pass itself off as Complainant. The website located at Respondent’s disputed domain name also attempted to solicit personal information from Internet users. Consequently, the Panel finds that Respondent engaged in “phishing,” which represents 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). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the respondent’s diversion of Internet users to a third-party website for the purpose of fraudulently acquiring their personal information constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also 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.”).
The Panel also finds that as of September 5, 2006, Respondent’s <thenatwestbankonline.com> domain name no longer resolves to an active website. As a result, the Panel finds that Respondent’s failure to use the disputed domain name serves as evidence that Respondent lacks rights or legitimate interests with regard to the disputed domain name under Policy ¶ 4(a)(ii). See Hanna-Barbera Prod., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that the respondent’s failure to use or make demonstrable preparations to use the disputed domain name suggests that the respondent lacks rights and legitimate interests in the disputed domain name); 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.
As a result of Respondent’s registration and use of the
disputed domain name in connection with a
“phishing” scheme attempting to gain access to personal information from
Internet users through the use of a fictitious bank website, the Panel
concludes that Respondent’s conduct is indicative of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See
Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug.
11, 2004) (finding 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); 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.”).
Furthermore, as of September 5, 2006, Respondent failed to make any use of the disputed domain name, directing the disputed domain name to an inactive website instead. Thus, the Panel finds that Respondent’s failure to use the disputed domain name as of September 5, 2006, demonstrates bad faith registration and use under Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration 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 <thenatwestbankonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 31, 2006
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