national arbitration forum

 

DECISION

 

National Westminster Bank plc v. Olatunji c/o Agboola

Claim Number: FA0612000870327

 

PARTIES

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 Olatunji c/o Agboola (“Respondent”), Plot 259, Lords Street, Okota, Lagos, Lagos 2341, NG.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <national-west.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.

 

PANEL

The undersigned certifies that he as acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 18, 2006.

 

On December 15, 2006, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <national-west.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name.  Direct Information Pvt Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.com 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 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 10, 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@national-west.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 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <national-west.com> domain name is confusingly similar to Complainant’s NATIONAL WESTMINISTER mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, National Westminster Bank plc, is a leading international financial institution based in the United Kingdom.  Complainant has been using the NATIONAL WESTMINISTER mark throughout the United Kingdom and abroad since 1968 in association with promoting and providing personal as well as business-related financial services, including banking, financial planning, and insurance services.  Complainant has registered its NATIONAL WESTMINISTER mark with the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,444,866 issued March 2, 1994).  Complainant, through its parent company, The Royal Bank of Scotland Group, has also registered the domain name <national-westminister.com>, which reroutes Internet users to its homepage that provides Complainant’s online banking and financial services.

 

Respondent, Olatunji, is based in Lagos, Nigeria.  Respondent registered the <national-west.com> domain name on November 23, 2006.  Respondent is using the disputed domain name to operate a website that closely resembles Complainant’s website and asks for customers’ personal information.

 

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.  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.

 

Identical and/or Confusingly Similar

 

Complainant’s registration of its NATIONAL WESTMINISTER mark with the UKPO predates Respondent’s registration of the <national-west.com> domain name.  Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to a complainant.  Complainant’s registration of its mark with the UKPO is sufficient for these purposes regardless of the fact that Respondent operates from Nigeria.  Therefore, the Panel finds that Complainant has established rights in the NATIONAL WESTMINISTER 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Compared to Complainant’s NATIONAL WESTMINISTER mark, Respondent’s <national-west.com> domain name abbreviates the word “westminister” to “west,” and inserts a hyphen as well as the generic top-level domain “.com.”  These slight modifications do not avoid a finding of confusing similarity under Policy ¶ 4(a)(i).  Therefore, the Panel finds that Respondent’s <national-west.com> domain name is confusingly similar to Complainant’s NATIONAL WESTMINISTER mark under Policy ¶ 4(a)(i).  See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY registered mark); 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).   

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <national-west.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Because of Respondent’s failure to respond to the Complaint, the panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO, Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant has alleged that Respondent has never been commonly known by the <national-west.com> domain name.  The WHOIS information identifies Respondent as “Olatunji c/o Agboola,” and the Panel can find no other evidence in the record suggesting that Respondent is commonly known by the name.  Therefore, the Panel concludes that Respondent is not commonly known by the <national-west.com> domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Respondent uses the <national-west.com> domain name as an attempt to “pass itself off” as Complainant in order to defraud Complainant’s customers.  Respondent’s domain name resolves to a website that imitated Complainant’s genuine online banking and financial services website and asked for personal and financial information of Internet users interested in Complainant’s services.  Complainant has alleged that Respondent was using this website to “phish” for confidential financial information in an attempt to defraud Complainant’s customers.  Respondent’s attempt to pass itself off as Complainant and phish for customers’ private information 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 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”); 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 finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Respondent uses the <national-west.com> domain name to divert Internet users seeking Complainant’s financial services to Respondent’s own website which appeared to offer the same services.  Respondent is attempting to profit from the goodwill associated with Complainant’s NATIONAL WESTMINISTER mark, which is confusingly similar to Respondent’s <national-west.com> domain name.  Such use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); 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).

 

Respondent uses the <national-west.com> domain name to engage in a phishing scam, misdirecting Internet users seeking Complainant’s genuine website to Respondent’s misleading website.  By imitating Complainant’s genuine website, Respondent is deceiving Complainant’s Internet customers and manipulating them into divulging sensitive personal information.  Thus, Respondent’s use of the <national-west.com> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also 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).

 

The Panel finds that Policy ¶ 4(a)(iii) is 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 <national-west.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  January 28, 2007

 

 

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