national
arbitration forum
DECISION
National Westminster Bank plc v. Natwest Trust Bank
Claim Number: FA0704000953932
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 <natwesttrustbank.com>, registered with Tucows Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 4, 2007.
On April 4, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <natwesttrustbank.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 April 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 25, 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@natwesttrustbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
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 <natwesttrustbank.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwesttrustbank.com> domain name.
3. Respondent registered and used the <natwesttrustbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, National Westminster Bank plc, has registered the NATWEST mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983) and with the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,021,601 filed December 3, 1973), as well as in numerous other international jurisdictions. Complainant is a leading international financial institution and utilizes the NATWEST mark in connection with offering an array of financial services, including credit cards and personal and business banking services. Complainant’s customers use personal information, such as names and passwords, to gain access to online banking services, including account information.
Respondent registered the <natwesttrustbank.com> domain name on July 13, 2006. Respondent is using the disputed domain name to operate a website that copies the content of Complainant’s genuine website, implies that it is the genuine website of Complainant, and solicits Internet users to enter their personal information such as bank account numbers and pin numbers.
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 registrations of the NATWEST mark with the USPTO and the UKPO are sufficient to establish rights in the mark. 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.”).
The Panel finds that Respondent’s <natwesttrustbank.com> domain name is confusingly similar
to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The disputed domain name contains
Complainant’s entire NATWEST mark and adds the terms “trust” and “bank,” which
describe aspects of Complainant’s business.
Additionally, the domain name adds the generic top-level domain
“.com.” Such additions are insignificant
under Policy ¶ 4(a)(i) and thus, Respondent has not distinguished its domain
name from Complainant’s mark for purposes of the Policy. See Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to the complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which the complainant is engaged, does not take the
disputed domain name out of the realm of confusing similarity); 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); see also Isleworth Land Co. v. Lost
in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Under 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, the burden shifts to
Respondent to demonstrate that it has rights or legitimate interests in 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).
Respondent is using the disputed domain name to operate a website that copies the content of Complainant’s genuine website. By passing itself off as Complainant, Respondent has attempted to gain personal information from Internet users 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) . . . .” The Panel finds that in the case at hand, Respondent is not using the <natwesttrustbank.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).
Based upon the evidence in the record, the Panel finds that Respondent is not commonly known by the <natwesttrustbank.com> domain name pursuant to Policy ¶ 4(c)(ii). Respondent is not associated with Complainant, and is not authorized by Complainant to use the NATWEST mark. Moreover, based on Respondent’s WHOIS information, it does not appear that Respondent is commonly known by the disputed domain name. Consequently, the Panel finds a lack of evidence to demonstrate that Respondent is commonly known by the <natwesttrustbank.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)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is using the <natwesttrustbank.com> domain name to operate a website that copies Complainant’s genuine 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 <natwesttrustbank.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).
Additionally, the Panel finds that Respondent’s use is likely to cause confusion as to Complainant’s sponsorship of and affiliation with the <natwesttrustbank.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.
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 <natwesttrustbank.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.) , Panelist
Dated: May 15, 2007
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