National Westminster Bank plc v. Natwest Plc
Claim Number: FA0610000817121
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 Natwest Plc (“Respondent”), 6 Cottage St, Salem, MA 01970.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <natwestbankonline.net>, registered with Tucows 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2006.
On October 11, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <natwestbankonline.net> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 October 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 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@natwestbankonline.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <natwestbankonline.net> domain name is confusingly similar to Complainant’s NATWEST and NATWEST BANKLINE marks.
2. Respondent does not have any rights or legitimate interests in the <natwestbankonline.net> domain name.
3. Respondent registered and used the <natwestbankonline.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a financial institution offering a wide range of business and personal financial goods and services. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983) and the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,021,601 filed December 3, 1973) for the NATWEST mark. Complainant also holds a registration with the UKPO for the NATWEST BANKLINE mark (Reg. No 1,491,408 registered June 11, 1993). Complainant uses these marks in connection with its financial services business. Complainant has registered the <natwest.com> and <natwestonline.com> domain names to operate its website providing information and services to Complainant’s online customers.
Respondent registered the <natwestbankonline.net> domain name on January 17, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring links to commercial third-party websites offering financial services in competition with Complainant. Examples of these links include “loans,” “credit cards” and “financial planning.”
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 holds registrations with the USPTO and the UKPO
for the NATWEST and NATWEST BANKLINE marks, that significantly predate
Respondent’s registration of the disputed domain name. The Panel finds that Complainant has
established rights in the NATWEST and NATWEST BANKLINE marks pursuant to Policy
¶ 4(a)(i) through registration of the marks.
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 <natwestbankonline.net> domain
name is confusingly similar to Complainant’s NATWEST and NATWEST BANKLINE
marks. The disputed domain name
includes the NATWEST mark in its entirety.
The disputed domain name also includes the majority of the NATWEST
BANKLINE mark, separating the terms “bank” and “line” with the preposition
“on.” The addition of the preposition
“on” to the term “line” creates the impression that the disputed domain name
offers Internet users access to Complainant’s banking services “online.” Such manipulation of Complainant’s mark does
not sufficiently differentiate the disputed domain name from Complainant’s
mark. The
Panel finds that the disputed domain name is confusingly similar to
Complainant’s marks 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding
that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); 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).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that
Respondent lacks rights and legitimate interest in the <natwestbankonline.net> domain
name. Complainant’s assertion
constitutes a prima facie case
pursuant to the Policy, shifting the burden to Respondent to demonstrate that
it does have rights or legitimate interests in the disputed domain name. Respondent had the opportunity to submit a
Response, providing the Panel with evidence and arguments that might support a
finding that Respondent has rights or legitimate interests. Respondent’s failure to avail itelf of the
opportunity to submit a Response suggests to the Panel that Respondent lacks
rights or legitiamte interests. Despite
Respondent’s failure to respond, the Panel will examine the available evidence
to determine whether Respondent has rights or legitimate interests pursuant to
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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
The disputed domain name is being used to host a website filled with links to financial institutions in competition with Complainant. Many of the posted links appear to divert Internet users to commercial websites offering financial goods and services in direct competition with Complainant’s financial goods and services. Such use is not a bona fide offering of goods or services. Nor is such use a legitimate noncommercial or fair use as Respondent is presumably receiving pay-per-click referral fees from the posted links. The Panel finds that the disputed domain name is not being used in connection with 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
There is no available evidence that Respondent is commonly
known by the <natwestbankonline.net>
domain name. While Respondent’s
WHOIS information identifies Respondent as “Natwest Plc,” there is no evidence
to support a finding that Respondent is otherwise known by this name either
personally or in business. There is no
record of a registered company with that name, and Complainant asserts without
contradiction that Respondent is not licensed by or otherwise affiliated with
Complainant. The Panel finds that
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was
not “commonly known by” the <shantiyogaworks.com> domain name
despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name.”); see also City News & Video v. Citynewsandvideo,
FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS
information lists its name as ‘citynewsandvideo,’ there is no evidence before
the Panel to indicate that Respondent is, in fact, commonly known by the
disputed domain name <citynewsandvideo.com> pursuant to Policy ¶
4(c)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <natwestbankonline.net> domain
name to redirect Internet users to its website featuring links to third-party
websites in competition with Complainant.
Internet users seeking Complainant’s genuine websites at
<natwest.com> and <natwestonline.com> may instead find themselves
at Respondent’s website. Internet users
finding themselves redirect to Respondent’s website are confronted with
numerous links to third-party websites, offering financial goods and services
similar to those offered by Complainant.
Internet users may follow those links and do business with the
third-party websites in competition with Complainant, thus, diverting business
away from Complainant. The Panel finds that such use disrupts
Complainant’s business, and Respondent has evidenced bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also
Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding
that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <natwestbankonline.net>
domain name is confusingly similar to Complainant’s marks. This confusing similarity makes it possible
that Internet users will find themselves at Respondent’s website instead of at
Complainant’s genuine websites when using Complainant’s marks in a web browser
or Internet search engine. Once at
Respondent’s website, the confusing similarity of Respondent’s domain name,
combined with the links on Respondent’s website, may mislead Internet users
into believing that Respondent’s website is sponsored by or affiliated with
Complainant. Respondent is presumably
capitalizing from this confusion by collecting pay-per-click referral
fees. The Panel finds that Respondent
has evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
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 <natwestbankonline.net> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 21, 2006
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