national
arbitration forum
DECISION
National Westminster Bank plc v. Gill Arum
Claim Number: FA0704000953944
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 <natwestbk-international.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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On April 4, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <natwestbk-international.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@natwestbk-international.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.
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 <natwestbk-international.com> domain name is confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <natwestbk-international.com> domain name.
3. Respondent registered and used the <natwestbk-international.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, National Westminster Bank plc, holds
registrations for 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 ar
Respondent registered the <natwestbk-international.com>
domain name on
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 predate
Respondent’s registration of the disputed domain name by many years. Under the Policy, registration of a mark with
an appropriate governmental authority confers right in that mark. Thus, the Panel finds that Complainant has
established rights in the NATWEST 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 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.”).
Respondent’s <natwestbk-international.com> domain name is
confusingly similar to Complainant’s NATWEST mark. Respondent’s domain name includes
Complainant’s mark in its entirety and adds the letters “bk,” a hyphen, the
term “international” and the top-level domain “.com”. The letters “bk,” which appears to be an
abbreviation for the term “bank,” and the term “international” are descriptive
terms with a relationship to Complainant’s business. These additions suggest that the disputed
domain name leads to the international version of Complainant’s website. The addition of a hyphen and the top-level
domain “.com” also do not distinguish the disputed domain name from
Complainant’s mark because a hyphen does not create a new or unique domain name
and a top-level domain is required for all domain names. Thus, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See
Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6,
2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity [sic] or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks.”); 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); 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); Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he
addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
According to 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, however, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests in connection with 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”). 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 redirect Internet users to Respondent’s website which copies the content of Complainant’s genuine website. Respondent’s website displays Complainant’s mark and is formatted to look like Complainant’s genuine website. Respondent’s website appears to attempt to pass itself off as Complainant’s website in order to gain sensitive proprietary information, such as account numbers and passwords, from Complainant’s customers. The Panel finds that such use 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 American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (the respondent’s attempts to pass itself off as the complainant online is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers 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.”).
There is no available evidence indicating that Respondent is
commonly known by the <natwestbk-international.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “Dmitry Semenov,” a name with no obvious
relationship to the disputed domain name.
Further, Complainant asserts without contradiction that Respondent is
not affiliated with Complainant and does not have permission from Complainant
to reflect Complainant’s NATWEST mark in a domain name. The Panel finds that Respondent is not
commonly known by the disputed domain name as contemplated by Policy ¶ 4(c)(ii) and thus lacks rights or legitimate interests in the
disputed domain name. See
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s <natwestbk-international.com>
domain name is confusingly similar to Complainant’s NATWEST mark. Internet users seeking Complainant’s genuine
websites may become misdirected to Respondent’s website and because of the
combination of the confusingly similar domain name with the content of
Respondent’s website, which copies Complainant’s genuine website, may believe
that Respondent’s website is sponsored by or affiliated with Complainant. Respondent appears to be capitalizing on this
confusion by using the website to acquire the proprietary information of
Complainant’s customers, presumably to steal their identities for commercial
gain. The Panel finds that such use is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also America 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).
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 <natwestbk-international.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 15, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum