National Westminster Bank plc v. Vonase Inc
Claim Number: FA0609000792449
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 Vonase Inc (“Respondent”), 5348 Vegas Drive, Suite # 976, Las Vegas, NV 89108.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <natwestbank-online.net>, registered with Blue Razor Domains, 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 September 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 13, 2006.
On Sepember 14, 2006, Blue Razor Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <natwestbank-online.net> domain name is registered with Blue Razor Domains, Inc and that Respondent is the current registrant of the name. Blue Razor Domains, Inc has verified that Respondent is bound by the Blue Razor Domains, 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 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@natwestbank-online.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 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 <natwestbank-online.net> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestbank-online.net> domain name.
3. Respondent registered and used the <natwestbank-online.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, 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. Complainant is a leading international financial institution and utilizes the NATWEST mark in connections 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, as well as allowing customers to engage in online banking services. Complainant’s customers use personal information, such as names and passwords, to gain access to online banking services, including account information.
Respondent registered the <natwestbank-online.net> domain name on June 16, 2006. Respondent is using the disputed domain name to operate a website that mimics the content of Complainant’s genuine website. Respondent’s website includes the frequent and prominent use of the NATWEST mark and implies that it is the genuine website of Complainant. Respondent’s website solicits the personal information of Internet users with fields for a “feed back form,” “email login” and “online banking,” all of which prompt Internet users to disclose proprietary information. Respondent’s website includes a page discussing the privacy and security purportedly supplied by Respondent’s 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’s registrations of the NATWEST mark 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 right in that mark on
Complainant. Thus, the Panel finds that
Complainant has 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.”).
Respondent’s <natwestbank-online.net>
domain name is confusingly similar to Complainant’s NATWEST mark. Respondent’s domain name includes
Complainant’s mark in its entirety.
Respondent’s domain name adds the terms “bank” and “online” to
Complainant’s mark along with a hyphen and the top-level domain “.net”. The terms “bank” and “online” are
descriptive terms with a relationship to Complainant’s business. The terms “bank” and “online” suggest that
the disputed domain name leads to a website where Complainant’s customers could
engage in online banking services, and do not distinguish the disputed domain
name from Complainant’s mark. The
addition of a hyphen and the top-level domain “.net” also do not distinguish
the disputed domain name from Complainant’s mark because a hyphen does not
create a new or unique domain name and a top-level domain is required for all
domain names. Thus, the Panel finds
that the disputed domain name is confusingly similar to Complainant’s 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
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (finding that hyphens and top-level domains are irrelevant for purposes
of the Policy); 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).
Complainant asserts that Respondent lacks rights or legitimate interests in the <natwestbank-online.net> domain name. 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 will examine 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.”)
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which copies the content of Complainant’s genuine website. Respondent’s website displays Complainant’s mark and is formatted to look like Complainant’s genuine website. Respondent’s website appears to attempt to pass itself off as Complainant’s website in order to gain sensitive proprietary information, such as account numbers and passwords, from Complainant’s customers. The Panel finds that such use 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). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name.”).
There is no available evidence indicating that Respondent is commonly know by the <natwestbank-online.net> domain name. Respondent’s WHOIS information identifies Respondent as “Vonase Inc,” a name with no obvious relationship to the disputed domain name. Further, Complainant asserts without contradiction that Respondent is not affiliated with Complainant and does not have permission from Complainant to reflect Complainant’s NATWEST mark in a domain name. The Panel finds that Respondent is not commonly known by the disputed domain name as contemplated by Policy ¶ 4(c)(ii) and thus lacks rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent’s <natwestbank-online.net>
domain name is confusingly similar to Complainant’s NATWEST mark. Internet users seeking Complainant’s genuine
websites may become misdirected to Respondent’s website and because of the
combination of the confusingly similar domain name with the content of
Respondent’s website, which mimics Complainant’s genuine websites, may believe
that Respondent’s website is sponsored by or affiliated with Complainant. Respondent appears to be capitalizing on
this confusion by using the website to acquire the proprietary information of
Complainant’s customers, presumably to steal their identities for illegal
gain. The Panel finds that such use is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by
displaying the complainant’s mark on its website and offering identical
services as those offered by the complainant).
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.” Thus, the Panel finds that Respondent’s use of the disputed
domain name to redirect Internet users to its website, which copies the content
of Complainant’s website, presumably to obtain the personal information of
Complainant’s customers, is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13,
2002) (finding that where the
complainant’s mark was appropriated at registration, and a copy of the
complainant’s website was used at the domain name in order to facilitate the
interception of the complainant’s customer’s account information, the
respondent’s behavior evidenced bad faith use and registration of the domain
name); see also Am. Int’l Group, Inc. v. Busby, FA 156251
(Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was
registered and used in bad faith where the respondent hosted a website that
“duplicated Complainant’s mark and logo, giving every appearance of being
associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the AIG mark.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natwestbank-online.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 25, 2006
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