National Westminster Bank plc v. nat
Claim Number: FA0612000862844
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams
& Bernstein LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <natwest-bklondon.com>, 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 December 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 8, 2006.
On December 7, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <natwest-bklondon.com> 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 December 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2007 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-bklondon.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 10, 2007, 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 <natwest-bklondon.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwest-bklondon.com> domain name.
3. Respondent registered and used the <natwest-bklondon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the <natwest-bklondon.com> domain name on July 27, 2006. Respondent is using the disputed domain name to operate a website that mimics the content of Complainant’s genuine website, implies that it is the genuine website of Complainant, and includes an “e-Banking” page which solicits Internet users to enter their personal information such as account numbers and pin numbers.
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 has established rights in the NATWEST mark through registration with the USPTO and the UKPO. See 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.”); see also 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.”).
Respondent’s <natwest-bklondon.com> domain name is
confusingly similar to Complainant’s marks.
The disputed domain name contains Complainant’s entire NATWEST mark and
adds a hyphen, the letters “bk” and the geographic term “
The Panel finds that Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must initially
demonstrate that Respondent lacks rights or legitimate interests with regard to
the disputed domain name. Once Complainant sufficiently establishes a prima facie case, however, the burden
shifts to Respondent to demonstrate that it has rights or legitimate interests
in connection with the disputed domain name under 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 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).”). The Panel finds that Complainant has demonstrated a
prima facie case and 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 Respondent does not have rights or legitimate interests in the <natwest-bklondon.com> domain name. Respondent is using the disputed domain name to operate a website that mimics the content of Complainant’s legitimate website. By passing itself off as Complainant, Respondent attempts to gain personal information such as passwords, account numbers, and pin numbers for the purpose of defrauding Complainant’s customers. In Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002), the panel found that the respondent lacked rights or legitimate interests in the disputed domain name as it essentially copied the complainant’s website in order to steal account information from the complainant’s customers. Additionally in Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003), the panel found that the respondent’s attempt to profit from the disputed domain name by passing itself off as the complainant “is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) . . . .” As such, in the instant case, the Panel finds that Respondent is not using the <natwest-bklondon.com> domain name in connection with 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).
Moreover, Based upon the evidence on record, the Panel finds that Respondent is not commonly known by the <natwest-bklondon.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant contends that Respondent is not associated with Complainant, and is not authorized by Complainant to use the NATWEST mark. Moreover, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Consequently, the Panel finds that the evidence fails to demonstrate that Respondent is commonly known by the <natwest-bklondon.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
The panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent’s use of the <natwest-bklondon.com> domain name to operate a website that mimics Complainant’s legitimate website for the purpose of gaining access to Internet users’ personal information with the intention to defraud Complainant’s customers. The Panel finds that Respondent registered and is using the <natwest-bklondon.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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”); see also 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).
Moreover, the Panel finds that Respondent’s use is likely, and intended, to cause confusion as to Complainant’s sponsorship of and affiliation with the <natwest-bklondon.com> domain name. The Panel finds that Respondent has further shown bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
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 <natwest-bklondon.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 24, 2007
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