national arbitration forum

 

DECISION

 

National Westminster Bank plc v. James Morgan c/o Natwest Creditors

Claim Number: FA0701000882188

 

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 James Morgan c/o Natwest Creditors (“Respondent”), Switzerland, Fribourg, Fribourg CH 1007.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <natwest-creditors.com>, registered with Onlinenic, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 8, 2007.

 

On January 10, 2007, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <natwest-creditors.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name.  Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 January 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 31, 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-creditors.com by e-mail.

 

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

 

On February 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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-creditors.com> domain name is confusingly similar to Complainant’s NATWEST mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, National Westminster Bank plc, holds several trademark registrations both with the United Kingdom Patent Office and with the United States Patent and Trademark Office (“USPTO”) for the NATWEST mark (i.e. Reg. No. 1,021,601 registered on March 12, 1973 and Reg. No. 1,241,454 issued on June 7, 1983 respectively).  Complainant has used the NATWEST mark for a range of personal and business banking and financial services with more that 7.5 million personal customers and 850,000 small business accounts worldwide.  Complainant has registered the domain names <natwest.com>, <natwest-bank.com and <natwestcreditcard.com>, which it uses in connection with its financial services.

 

Respondent registered the <natwest-creditors.com> domain name on July 26, 2006.  Respondent is using the disputed domain name to redirect Internet users to Respondent’s website offering goods and services in competition with Complainant’s good and services under the NATWEST mark.  Respondent is also using the <natwest-creditors.com>  domain name to obtain consumers’ personal information including their names, passport numbers, and passwords.

 

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 has established rights in the NATWEST mark through registration of the mark with the USPTO.  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 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.").

 

Respondent’s <natwest-creditors.com> domain name is confusingly similar to Complainant’s NATWEST mark because Respondent’s domain name uses Complainant’s mark in its entirety and merely adds the term “creditors.”  The Panel finds that this minor addition does not alter Complainant’s mark sufficiently to negate the confusingly similar aspects of Respondent’s domain name under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); 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); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

 

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 <natwest-creditors.com> domain name.  Complainant must make a prima facie case and then the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name here because Respondent has failed to respond to the Complaint.  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 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”).  The Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to policy ¶ 4(c).

 

Complainant alleges that Respondent is using the <natwest-creditors.com> domain name to redirect Internet users to Respondent’s website offering competing goods and services.  Respondent’s use of the domain name to sell competing goods is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

In addition, Complainant alleges that Respondent is using the <natwest-creditors.com> domain name to redirect Internet users to Respondent’s website in order to obtain consumers’ personal information. The Panel finds that Respondent’s use of the <natwest-creditors.com> domain name constitutes phishing, which is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 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).

 

Finally, Respondent has offered no evidence and no evidence is present in the record suggesting that Respondent is commonly known by the <natwest-creditors.com> domain name.  Respondent’s WHOIS information identifies Respondent as “James Morgan c/o Natwest Creditors.”  Therefore, Respondent has failed to establish rights or legitimate interests in the <natwest-creditors.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 Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”).

 

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

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the <natwest-creditors.com> domain name, which is confusingly similar to Complainant’s NATWEST mark, in order to redirect Internet users to Respondent’s website offering similar goods and services.  The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See 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)); see also 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).

 

Respondent is using the <natwest-creditors.com> domain name to redirect Internet users to Respondent’s website that offers competing goods and services for the assumed profit of Respondent.  The Panel finds that because Respondent’s domain name is confusingly similar to Complaint’s NATWEST mark, Internet users may become confused as to Complainant’s affiliation with the website.  Presumably, Respondent is profiting from this confusion.  As such, Respondent’s use of the <natwest-creditors.com> domain name to offer competing goods and services constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Finally, Respondent is using the <natwest-creditors.com> domain name to redirect Internet users to Respondent’s website in order to obtain consumers’ personal information.  The Panel finds that such use constitutes phishing and is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See 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.”); 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) 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-creditors.com> domain name be TRANSFERRED from Respondent to Complainant.

 

                                                                                   

                                                           

                                                                        John J. Upchurch, Panelist

                                                                        Dated:  February 20, 2007