National Westminster Bank plc v. John O Adeyemi
Claim Number: FA0703000936905
Complainant is National Westminster Bank plc (“Complainant”), represented by Ashley
L. Ellis, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <nation-west.com> and <uk-nationwest.com>, registered with Netfirms, Inc.
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.
Honorable
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 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@nation-west.com and postmaster@uk-nationwest.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nation-west.com> and <uk-nationwest.com> domain names are confusingly similar to Complainant’s NATIONAL WESTMINSTER mark.
2. Respondent does not have any rights or legitimate interests in the <nation-west.com> and <uk-nationwest.com> domain names.
3. Respondent registered and used the <nation-west.com> and <uk-nationwest.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Westminster Bank plc, is a leading
financial institution based in the
Respondent registered the <nation-west.com> domain name on July 26, 2006. Respondent registered the <uk-nationwest.com> domain name on August 2, 2006. The disputed domain names resolve to websites that purport to be banking services websites. This websites imitate Complainant’s website and attempts to extract personal financial information from Internet users.
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 asserts rights in the NATIONAL WESTMINSTER mark through registration with the UKPO. The Panel finds that Complainant’s timely registration and subsequent use of the mark sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See 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 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).
Respondent’s <nation-west.com> domain name contains an
abbreviated version of Complainant’s mark, a hyphen, and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that an abbreviated version of a protected mark, combined with the addition of
a hyphen and gTLD fails to avoid a finding of confusing similarity pursuant to
Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO
Respondent’s <uk-nationwest.com> domain name contains the
geographic identifier “
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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 on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Complainant contends that Respondent’s disputed domain names
resolve to websites that attempt to defraud unwitting Internet users by giving
the impression that they are affiliated with Complainant’s business. The Panel finds that Respondent’s use of the
disputed domain names as part of a possible phishing scheme 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 Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It 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) when
the holder of a domain name, confusingly similar to a registered mark, attempts
to profit by passing itself off as Complainant . . . .”).
Complainant further asserts that
Respondent is not commonly known by the disputed domain names since its WHOIS
registration information lists the registrant of the disputed domain names as “John
O Adeyami.” The Panel finds, in lieu of
evidence to suggest otherwise, that Respondent is not commonly known by the
disputed domain names in accordance with Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
It is likely that unsuspecting Internet users will become confused when arriving at Respondent’s websites. Because of the nature of the resultant websites, it is safe to presume that an unsuspecting Internet user would confuse Respondent’s websites with those of Complainant. The Panel finds that Respondent’s use constitutes an attraction for commercial gain and evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Moreover, the Panel finds bad faith registration and use
under Policy ¶ 4(a)(iii), as Respondent’s disputed
domain names resolve to websites that attempt to acquire personal, financial
information from Internet users by imitating Complainant’s legitimate
website. Such use of the <nation-west.com> and <uk-nationwest.com>
domain names 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
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 <nation-west.com> and <uk-nationwest.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable
Dated: April 27, 2007
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