The Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Melbourne IT Digital Brand Services, United Kingdom.
The Respondent is Contact Privacy Inc. Costumer 0128322737 of Toronto, Canada; David B Smith of Syracuse, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 18, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 18, 2012.
The Center verified that the Complaint together with the amendment to 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 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2012.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on October 18, 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 Complainant is the holder of a large number of registered NATWEST trademarks worldwide, inter alia:
- CTM trademark No. 4319067 in classes 9, 16, 35, 36, 38, 41, 42, registered on April 18, 2006.
- UK trademark No. 1438083 in class 9, registered on August 17, 1990.
The disputed domain name was registered on July 20, 2011. 5. Parties’ Contentions A. Complainant
The Complainant offers financial services world wide under the trademark NATWEST and is the proprietor of an international portfolio of registered NATWEST trademarks and several domain names containing the NATWEST trademark.
The disputed domain name is confusingly similar to the Complainant’s registered trademark NATWEST. The suffix “banking” does not detract from the overall impression but rather strengthens the association between the Respondent and the Complainant.
The Respondent has not established any rights to the disputed domain name by common usage or by the mere registration of the domain name. The Respondent is not commonly known by the disputed domain name. There is no connection between the Respondent and the Complainant. The disputed domain name has been used by the Respondent to defraud the Complainant’s customers through a fraudulent website linked to the disputed domain name, which is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to the Policy.
The Complainant has contacted the Respondent through a cease and desist letter asking for a voluntary transfer of the disputed domain name. No response to the letter was received.
The NATWEST trademark is famous worldwide and it is obvious that the Respondent was aware of the Complainant’s rights in the trademark at the point of the registration. By using the disputed domain name for fraudulent purposes (deceiving the Complainant’s customers and manipulating them into divulging sensitive financial information) the Respondent is not making a noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its commercial gain. Consequently, the Respondent has registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has inter alia relied on the registrations of the NATWEST trademarks. By the registrations submitted by the Complainant, the Panel finds that the Complainant holds rights to the NATWEST trademark.
In accordance with the consensus view, the Panel does not regard the top-level suffix “.org” when deciding if the disputed domain name is identical or confusingly similar to the Complainant’s trademark. In accordance with this, the disputed domain name and the registered trademark NATWEST only differ by the generic, and of Complainant’s business descriptive, word “banking”. The Panel finds that the registered NATWEST trademark constitutes the most distinctive element of the disputed domain name and that the addition of the word “banking” to the trademark is insufficient to avoid a finding of confusing similarity under the first element of the Policy (See Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168; see also SAP AG v. Hugo Hector Ferreyra,WIPO Case No. D2011-0073).
In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s registered NATWEST trademark in the meaning of the paragraph 4(a)(i) of the Policy and the first element of the Policy is thus fulfilled. B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden of production shifts to the Respondent to prove its rights or legitimate interests.
The Complainant has stated that there are no connections between the Complainant and the Respondent or any other circumstances at hand that gives the Respondent rights or legitimate interests in the disputed domain name. The Panel finds, based on the evidence provided on the record, that the Respondent is not commonly known by the disputed domain name. The Complainant has submitted printouts from the website linked to the disputed domain name as well as printouts from its own website. The printouts submitted prove that on the website linked to the disputed domain name the Respondent has been presenting a webpage highly similar to the Complainant’s and offering the same or similar services using the Complainant’s trademark. The Panel finds this as proof of the fact that the Respondent’s use of the disputed domain name is not a bona fide offering of goods or services.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
The UDRP Policy 4(b)(iv) states that if by using the domain name someone has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on someone’s web site or location, that shall be evidence of the registration and use of a domain name in bad faith.
The Complainant has stated that the Respondent has registered the disputed domain name in bad faith and has been using it for fraudulent purposes. The Panel finds the fact that the registration of the disputed domain name was made after the Complainant’s trademark registrations and the Complainant’s non-contested statement on extensive use of the NATWEST trademarks as an indication of bad faith. Further, the Panel finds it highly improbable that the Respondent has selected arbitrarily the disputed domain name’s word combination “natwestbanking” without having prior knowledge of the Complainant’s rights and business. By the printouts from the website linked to the disputed domain name it is proven that the Respondent is using the disputed domain name to present content similar to the Complainant’s webpage as well as the Complainant’s trademark. The fact that the Respondent is using a domain name including the Complainant’s trademark with a generic word closely related to the Complainant’s business, together with the Respondent’s use of material similar to the content of the Complainant’s webpage and its trademark, is sufficient to indicate both registration and use in bad faith. It is the Panel’s firm view that the Respondent has registered the disputed domain name in awareness of the Complainant with the clear aim of taking advantage of the confusion between the disputed domain name and the Complainant rights. Therefore, the Panel finds that the Respondent’s registration and use of the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to inter alia the source of its website.
The third element of the paragraph 4(a) of the Policy is thus fulfilled. 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.
Jonas Gulliksson
Sole Panelist
Dated: October 31, 2012
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