The Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Natwest, Nick Warren of London United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name And Registrar
The disputed domain name is registered with Cloud Group Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 26, 2012. On August 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2012.
The Center appointed David H. Tatham as the sole panelist in this matter on October 9, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The disputed domain name was registered on May 2, 2012
The Complainant is a long and well established company offering its financial services on a worldwide scale. It was created in 1968 as the result of a merger between two banks – National Provincial Bank which had been established since 1833, and Westminster Bank which had been established since 1836. However both banks can trace their history through a lineage of prestigious constituents dating back to the 1650s. The Complainant was incorporated as a public limited company in the United Kingdom in 1982 and acquired by The Royal Bank of Scotland Group in 2000.
The Complainant is the owner of an international portfolio of registered trademarks for the mark NATWEST, as well as a number of domain names which include this mark and copies of lengthy lists of both trademarks and domain names were annexed to the Complaint.
The Respondent, an individual, failed to respond to the Complaint, nor to a cease-and-desist letter from the Complainant, so nothing is known about him other than his website at the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant offers its financial services worldwide under the trademark NATWEST and states that it has spent a significant sum of money promoting and developing this mark. It owns numerous registrations of the NATWEST trademark, copies of which were annexed to the Complaint.
Complainant operates websites at its domain names and . However Complainant also annexed a list of the many domain names which it owns. Complainant also referred to five domain name disputes which it had won protecting this mark.
The Complainant further contended that its trademark NATWEST is a well-known mark and therefore it has the right, under the Paris Convention and the TRIPS Agreement, to prevent any use of it in connection with any goods or services.
The Complainant contends that the dominant part of the disputed domain name is the word NATWEST and that this is identical to its trademark. Furthermore, the addition of the letters “bk” and “plc” to this name add nothing as it is generally recognised that there is confusing similarity when a well-known trademark is paired with different kinds of generic prefixes or suffixes. The overall impression of the disputed domain name is of the dominant name “natwest” which, the Complainant maintains, would be instantly recognizable as its world famous mark. The likelihood of confusion includes an obvious association with the Complainant’s trademark NATWEST and there is a considerable risk that the general public will believe that the disputed domain name either belongs to the Complainant, or that there is a commercial relationship between the Respondent and Complainant. Anyone seeing the disputed domain name is bound to mistake it for a name related to the Complainant.
Under the heading of “Rights or Legitimate Interests”, the Complainant contends that it has not found that the Respondent has any trademarks corresponding to the disputed domain name or anything to suggest that it has been using the word NATWEST in any way that could confer legitimate rights in the name. Furthermore, the Respondent is not commonly known by the disputed domain name.
The Complainant maintains, furthermore, that the Respondent has used the disputed domain name to pass itself off as the Complainant and to thereby defraud the Complainant’s customers. In fact, the Complainant accuses the Respondent of using the disputed domain name in order to “phish” for financial information which, it alleges, is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use pursuant to the Policy.
In connection with bad faith, the Complainant contends that the disputed domain name must have been registered only because of the considerable value and goodwill of its trademark NATWEST and because of its own substantial and widespread reputation throughout the world in the financial or investment industry. In the opinion of the Complainant, this constitutes bad faith.
The Complainant further contends that the Respondent has been using the disputed domain name to deceive its customers and to manipulate them into divulging sensitive financial information. This also constitutes bad faith.
Also, the Complainant states that it has been held, for example, that the passive holding of an inactive website could constitute bad faith. There is no suggestion that the Respondent had any intention of making any legitimate use of the disputed domain name, or that there is any conceivable good faith use of it.
The Complainant states that it attempted to contact Respondent by writing a cease-and-desist letter to ask for the cancellation of the disputed domain name. This was not replied to and, despite sending reminders, there was still no response of any kind from the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. Preliminary Remarks
Paragraph 5(b)(i) of the Rules specifies that a respondent is expected to “Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has thereby been given an opportunity to present his case, but he has failed to do so.
Paragraph 14(b) of the Rules specifies that, in the event of a default, “…the Panel shall draw such inferences therefrom as it considers appropriate.” For example, it was said in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443 that “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this present proceeding, since the Respondent has chosen not to submit a Response, his default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the Complainant’s assertions, and to take its decision on the basis of the statements and documents before it, in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable. A. Identical or Confusingly Similar
The Complainant claims to have numerous registrations of the trademark NATWEST either alone or in combination with other matters. It supplied details of over 300 of these. The earliest of which is United Kingdom Registration No. 1,021,601 dated December 3, 1973 for goods in class 16.
It is by now well established that, when comparing a disputed domain name with a trademark, then a generic top-level domain (gTLD) such as, in this case, “.com”, may be disregarded. See, for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, in which it was found that the gTLD of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the comparison here is between the trademark NATWEST and the phrase “natwestbk-plc”.
The Complainant’s trademark NATWEST is extremely well-known throughout the world and, not surprisingly, it has attracted a number of attempts by cybersquatters to incorporate it into various domain names and Complainant referred to several cases, all of which were decided by WIPO or NAF panels in its favour.
In the present case, the Respondent has merely added the initials “bk” and “plc”’ to the trademark NATWEST. These additions do not prevent a finding of confusing similarity. Thereover, there is little doubt that the average consumer would assume that the term “natwestbk-plc” refers to Complainant and that the disputed domain name belongs to the Complainant.
In Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033, it was held that “it is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion.” It was also held in Merrell Pharmaceuticals Inc., Aventis Pharma SA v. Filips Kostins,WIPO Case No. D2004-0943 that “the Domain Name is confusingly similar to the trademark ALLEGRA, as the prefixes ‘buy’ and ‘generic’ are generic terms, which do not influence significantly the overall impression of the Domain Name which is dominated by the term ALLEGRA.” This Panel has also decided a number of similar cases in favour of different complainants. See, for example, Wacoal Corp., Wacoal America Inc. v. Uri Shevchenko,WIPO Case No. D2010-1587 ; F. Hoffmann-La Roche AG v. C/Mike Kazaros,WIPO Case No. D2010-2212 (); F. Hoffmann-La Roche AG v. Hristo Ibouchev,WIPO Case No. D2010-2259 (, , and ); Johnson & Johnson v. Ruan Rupke,WIPO Case No. D2011-1196 (, , , , and ); Barclays Bank PLC v. Bar, WIPO Case No. D2011-1240 (); E. Remy Martin & Co v. Giammario Villa,WIPO Case No. D2012-0735 ( and ).
In these circumstances, and in the light of these clear precedents, the Panel has little hesitation in finding that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is therefore proved. B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name, and it is well established that once a complainant has made out a prima facie case that a respondent has no rights or legitimate interests in a domain name, then the burden shifts to the Respondent to prove otherwise. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828 in which it was held that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in the disputed domain name.
In the present case, the Respondent has chosen not to file anything in his defence despite the burden and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using the disputed domain name, he could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed in any other circumstance, are in his favour.
The only information available about the Respondent is the WhoIs information provided by the Registrar. This contains no evidence of any rights or legitimate interests of the Respondent in the disputed domain name, which, as found above, is confusingly similar to the Complainant’s well-known name and trademark NATWEST. The website at the disputed domain name makes no mention of the Respondent but it does give every appearance of being a genuine website belonging to the Complainant. It is headed with the Complainant’s logo and name and, just as on the Complainant’s genuine website, there are pages for “Personal Banking”, “Private Banking”, “Business Banking”, and “Commercial Banking” as well as links to such matters as “Current accounts”, “Savings”, “Investments”, “Credit Cards” etc.
The Respondent makes no claims to have any rights or legitimate interests in respect of the disputed domain name, and provides no explanation whatsoever for its registration and use of it.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, so that paragraph 4(a)(ii) of the Policy is also proved in respect of it. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which are evidence that a respondent has registered and is using the disputed domain name in bad faith. In this case, the Panel believes that the Respondent is in contravention of at least one of the provisions under this paragraph of the Policy.
The registration of the disputed domain name does appear to have been made with an intentional attempt “to attract, for commercial gain, Internet users to” Respondent’s website. In the view of the Panel, this falls squarely within paragraphs 4(b)(iv) of the Policy. The Panel also finds that the Respondent is attempting to disrupt the Complainant’s business.
Additionally, the Respondent was clearly aware of the Complainants’ name and trade mark at the time of registration of the disputed domain name. Not only is the name NATWEST known and recognised the world over, but the Respondent has actually used this name for himself and, furthermore, has claimed “135 Bishopsgate” as his address when it is actually the address of the Complainant.
In the Panel’s view, this is a very clear indication of opportunistic bad faith on the part of the respondent. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the word “pokémon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith. See also BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because of the widespread and long-standing advertising and marketing of goods and services under the trademarks in question, because of the inclusion of the entire trademark in the disputed domain name, and because of the similarity of products implied by addition of telecommunications services suffix. All of which suggested a knowledge of the complainant’s rights in the trade marks.
In addition, the Complainant accuses the Respondent of phishing. This is the practice of sending an e-mail to a user falsely claiming to be and established legitimate enterprise, in an attempt to scam the unsuspecting user into surrendering private information such as user names, passwords, and credit card details. Although very little clear evidence of this actually happening was filed by the Complainant, it is an extremely plausible and likely explanation as to why the disputed domain name was registered.
Once again it is worth pointing out that the Respondent has filed no response so it has not attempted to rebut any of the Complainant’s arguments on this point.
The Panel concludes that the Respondent has acted in bad faith and that paragraph 4(a)(iii) of the Policy has been proved. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
David H. Tatham
Sole Panelist
Dated: October 19, 2012
Full & Egal Universal Law Academy