National Westminster Bank
plc v. PC Controllers Ltd
Claim Number: FA0703000944501
PARTIES
Complainant is National Westminster Bank plc (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <natwestsecurities.net>, registered
with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 22, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 23, 2007.
On March 22, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <natwestsecurities.net>
domain name is registered with Melbourne It,
Ltd. d/b/a Internet Names Worldwide and that Respondent is the current
registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide
has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide 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 March 26, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 16, 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@natwestsecurities.net by e-mail.
A timely electronic Response was received on April 16, 2007. However, the
Response was deemed deficient under ICANN Rule 5(a) as the hard copy was
received after the response deadline, and was thus late.
On April 24, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The trademark on which the Complaint is based is NATWEST. Complainant National Westminster Bank plc
(NATWEST) founded in 1968, is a leading financial institution based in the
United Kingdom that offers a full range of financial services, including
personal and business banking services and credit cards, to more than 7.5
million personal customers and 850,000 small business accounts. Owned by the Royal Bank of Scotland Group,
Complainant has 3,600 branches and is part of the fifth largest financial
services group in the world.
Complainant holds numerous trademark registrations for its NATWEST
mark. Complainant has registered NATWEST
with the United Kingdom Patent Office in 1973 and with the United States Patent
and Trademark Office in 1983.
On October 13, 2006, Respondent registered the domain name <natwestsecurities.net>.
The disputed domain name is confusingly similar to Complainant’s mark
because it fully incorporates Complainant’s registered trademark, NATWEST, with
the addition of a term describing Complainant’s business.
Respondent has no rights or legitimate interests in respect of the
domain name that is subject of this Complaint.
The domain name was registered and is being used in bad faith.
B. Respondent
Respondent’s electronic submission was received in a timely
manner. Respondent failed to submit a
hard copy as required by ICANN Rule 5.
Respondent’s submission fails to contest any of Complainant’s
allegations, nor is the submission certified as required by ICAAN Rule 5. Notwithstanding these serious deficiencies
the Panel shall consider the responsive submission because it is the Panel’s
intent to have claims decided on the merits and not by default. Complainant has not been prejudiced in the
presentation of the case. The Panel
finds that it is necessary to consider the deficient submission to resolve this
case in a proper manner. See Galam, Inc. v. Nielsen, FA112469 (Nat. Arb. Forum
July 2, 2002)
In the Response, Respondent asserts that while it did register the <natwestsecurities.net>
domain name, it maintains that it did so for a third party. Respondent also states “we fully agree with
you that the use of this domain name should be cancelled without any prejudice
or cost to our very self.”
FINDINGS
1.
Complainant
has rights in the NATWEST mark through its registered trademarks.
2.
Respondent’s
<natwestsecurities> is confusingly similar to Complainant’s
NATWEST mark.
3.
The
Panel finds that Respondent’s stipulation that the <natwestsecurities.net>
be cancelled constitutes an admission that the domain name be transferred
to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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.
Since Respondent has no objection to the
transfer of the disputed domain name to Complainant, no traditional UDRP analysis
is necessary. See Boehringer
Ingelheim Int’l GmbH v. Modern Ltd-Cayman Web Dev., FA 1333625 (Nat. Arb. Forum Jan. 9, 2003) in which the
traditional UDRP analysis was found not to be necessary and transfer ordered
where Respondent stipulated to the transfer.
See also Malev Hungarian Airlines, Ltd. v. Vertical Axis, Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) where it was held that where both parties have
asked for the domain name to be transferred to the Complainant, the following
method should be applied. “Since
the requests of the parties are identical, the Panel has no scope to do
anything other than to recognize the common request, and it has no mandate to
make findings of fact or of compliance (or not) with the Policy.” See also Disney Enters., v. Morales, FA 475191 (Nat. Arb. Forum
June 24, 2005) holding “[U]nder
such circumstances, where Respondent has agreed to comply with Complainant’s
request, the Panel felt it to be expedient and judicial to forego the traditional
UDRP analysis and order the transfer of the domain names.”
The Panel finds that the submissions of
Complainant and Respondent require the Panel to transfer the domain name to
Complainant.
DECISION
The submissions of the parties having established a sufficient case under
the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <natwestsecurities.net> domain name
be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 1, 2007
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