national arbitration forum

 

DECISION

 

National Westminster Bank plc v. Terry John c/o Ninekfive

Claim Number: FA0611000843484

 

PARTIES

 

Complainant is National Westminster Bank plc (“Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., Three Wachovia Center, 401 South Tryon Street, Suite 6000, Charlotte, NC 28202.  Respondent is Terry John c/o Ninekfive (“Respondent”), No 4 chery tree 348, New York, NY 10029.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <natwest-bankonline.com>, registered with Network Solutions, LLC.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 20, 2006.

 

On November 17, 2006, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <natwest-bankonline.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 November 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 19, 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-bankonline.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <natwest-bankonline.com> domain name is confusingly similar to Complainant’s NATWEST mark.

 

2.      Respondent does not have any rights or legitimate interests in the <natwest-bankonline.com> domain name.

 

3.      Respondent registered and used the <natwest-bankonline.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, National Westminster Bank plc, was founded in 1968 and is a leading financial institution based in the United Kingdom.  Complainant offers a wide range of financial services to more than 7.5 million personal customers and 850,000 small business accounts worldwide.  Complainant holds numerous trademark registrations worldwide for its NATWEST mark and other various marks incorporating the NATWEST mark.  One such registration for the NATWEST mark is with the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,021,601 issued March 12, 1973).  Complainant also operates websites at the <natwest.com> and <natwestonline.com> domain names.   

 

Respondent registered the <natwest-bankonline.com> domain name on December 16, 2005.  Respondent’s disputed domain name resolves to a website that was previously used to obtain financial and personal information from Internet users, and is currently not being actively used. 

 

DISCUSSION

 

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.  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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s trademark registration with the UKPO sufficiently establishes Complainant’s rights in the NATWEST mark.  Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also 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."). 

 

The Panel further finds that Respondent’s <natwest-bankonline.com> domain name is confusingly similar to Complainant’s NATWEST mark as it contains Complainant’s mark in its entirety with the addition of the terms “bank” and “online.”  The addition of the term “bank” has an obvious relationship to Complainant’s business, and the term “online” also does not sufficiently distinguish the disputed domain name from Complainant’s NATWEST mark under Policy ¶ 4(a)(i).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); 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.     

 

Rights or Legitimate Interests

 

Complainant initially must establish that Respondent lacks rights or legitimate interests with respect to the disputed domain name.  However, once Complainant makes a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the <natwest-bankonline.com> domain name.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub-paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted to Respondent.”); see also 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).”).

 

Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <natwest-bankonline.com> domain name, and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name.  Additionally, Complainant asserts that Respondent is not authorized to use Complainant’s NATWEST mark and that Respondent is not associated with Complainant in any way.  In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in a domain name where the respondent was not known by the mark.  The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 

 

Respondent previously used the disputed domain name to obtain personal and financial information from Internet users.  Such a fraudulent use, known as “phishing,” demonstrates that Respondent lacks rights and legitimate interests in the disputed domain name.  Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that 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 or a legitimate noncommercial or fair use).

 

The Panel further finds that Respondent is currently not making an active use of the <natwest-bankonline.com> domain name as the disputed domain name resolves to a website that displays a “Forbidden” message.  Respondent has also not demonstrated preparations to use 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).  Accordingly, the Panel finds Respondent has failed to demonstrate rights or legitimate interests under Policy ¶ 4(a)(ii).  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services); see also American Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.           

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent has used the <natwest-bankonline.com> domain name to obtain personal and financial information from Internet users attempting to locate Complainant’s website.  Such use of the disputed domain name is evidence of bad faith registration and use under 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.”).

 

Respondent is currently not making an active use of the disputed domain name, and has presented no demonstrable preparations to use it.  Such inactive use constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of 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 finds that Policy ¶ 4(a)(iii) has been satisfied.    

 

DECISION

 

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-bankonline.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  January 5, 2007

 

 

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