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 PrivacyP / Michael Switalski of Nobby Beach, Queensland, Australia and New Braunfels, Texas, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Cloud Group Limited (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 28, 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 registrant named in the Complaint. The Center sent an email communication to the Complainant on September 5, 2012 providing the registrant and contact information disclosed by the Registrar and on the same date the Complainant filed an amendment to the Complaint. The Complaint and the amended Complaint are hereinafter collectively referred to as the Complaint.
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 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2012.
The Center appointed Anna Carabelli as the sole panelist in this matter on October 12, 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 a public limited company founded in 1968 as a result of the merger between National Provincial Bank (est. 1833) and Westminster Bank (est. 1836) (see annex 1 to the Complaint). The Complainant offers financial services worldwide under the trademark NATWEST.
The NATWEST trademark is protected as a registered trademark in many countries, including the United Kingdom, Australia and the United States; annexed to the Complaint are extracts of several trademark registrations for NATWEST owned by the Complainant.
The Complainant also owns various domain names, including and incorporating the NATWEST trademark and pointing to the Complainant’s official websites (annex 8 to the Complaint).
The Respondent registered the domain name on February 13, 2012.
On June 11, 2012 the Complainant sent a cease and desist letter to the Respondent and requested a voluntary transfer of the domain name but the Respondent failed to respond.
At present, the disputed domain name does not resolve to a website, as the Panel has personally verified. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar with its registered trademark NATWEST since it incorporates the Complainant’s well-known mark in its entirety with addition of the suffix “plc” and of the generic term “online”. The Complainant argues that the above does not eliminate the similarity.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the domain name. The Complainant has no relationship with the Respondent and has not authorized it to use the NATWEST mark. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods neither is making a legitimate non-commercial or fair use of the domain name.
The Complainant states that the domain name was registered and is being used in bad faith since:
- the Respondent cannot have ignored the existence of the Complainant when the domain name was registered given the strong reputation and the distinctive character of the Complainant’s mark NATWEST worldwide;
- the domain name was directing internet users to a web site identical to the Complainant’s;
- the Respondent used the domain name to pass itself off as the Complainant and to “phish” for financial information in an attempt to defraud the Complainant’s customers. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15.a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4.a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4.b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4.a.iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4.c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4.a.ii) above. A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations for NATWEST in several countries including the Australia and the USA.
The disputed domain name is confusingly similar to the Complainant’s trademarks, as it entirely incorporates Complainant’s trademark NATWEST. On the other hand the addition of the generic term “online” and of the suffix “plc” does not create a different trademark in which the Respondent has right, and cannot be considered sufficient to avoid confusion between the domain name and the Complainant's trademark (Goyard St-Honoré v. Domain ID Shield Service / Arif Cahyono WIPO Case No. D2012-1158; Sanofi- Aventis v. CWIPO Case No. D2005-0660; GA Modefine SA v. Riccardo Bin Kara-MatWIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc,WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).
On this issue, the Panel further notices that the term “online” is plainly descriptive and generic if used for a web site and can likely be associated with the Complainant considering that the Complaint is very active on line. In addition the suffix “plc” strengthens the impression that the disputed domain name belongs to or is affiliated with the Complainant. Therefore the combination with the word “natwest” clearly is confusing (See Hermes International v. BAG12, Nick Kim WIPO Case No. D2010-2290; Christian Dior Couture v. Carl LimWIPO Case No. D2008 1038; Hermes International, SCA v. cui zhenhua WIPO Case No. D2010-1743; Yahoo! Inc. v. Jorge O. Kirovsky WIPO Case No. D2000-0428).
In the light of the above and since the addition of the generic TLD.com has no significance for the purposes of this proceeding when comparing the disputed domain name and the Complainant's trademark, the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark NATWEST.
The Complainant asserts that the Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate non-commercial or fair use of the disputed domain name, particularly because the Respondent was using the disputed domain name to redirect Internet users to a website imitating the Complainant’s website in an attempt to pass itself as the Complainant and fraudulently acquire financial information from the Complainant’s customers.
The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many UDRP decisions, in such a case the burden of proof shifts to the Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683).
The Respondent failed to submit an answer to the Complaint and did not exercise its right to respond.
The Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has provided evidence that its NATWEST trademark is widely known in connection with financial services. The reputation of the NATWEST trademark has been established in previous WIPO decisions (e.g.: The Royal Bank of Scotland Group plc, National Westminster Bank plcc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166).
Given the international reputation of the NATWEST trademark and the fact that the disputed domain name directed internet users to a website imitating the Complainant’s website, the Panel finds that the Respondent was fully aware of the Complainant’s trademark at the time it registered the disputed domain name. Such fact shows that the disputed domain name was registered in bad faith (see Revlon Consumer Product Corp v. Domain Manager WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc. WIPO Case No. D2004-0071; Revlon Consumer Product Corporation v. Easy Weight Loss Info, Agustinus Terry Yonatan, WIPO Case No. D2010-0936; Hermes International, SCA v. cui zhenhua, Supra).
The evidence shows that the website at the disputed domain name imitated the Complainant’s website and was used to “phish” for financial information from the Complainant’s customers. By doing this, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website and tarnished the Complainant’s trademark NATWEST.
The fact that at present the disputed domain name does not resolve to a web site and does not appear to be used online otherwise does not affect the grounds for the Complaint. According to Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which was followed by several consistent WIPO UDRP decisions, “the concept of a domain name “being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
The Panel finds that the Respondent’s present passive holding of the disputed domain name meets the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent based on the following circumstances:
(i) the Complainant’s trademark is well known and firmly associated with the Complainant;
(ii) the Respondent has failed to submit an answer to rebut the evidence submitted by the Complainant;
(iii) the use of the disputed domain name previously made by the Respondent shows the Respondent’s intent to deceive the Complainant’s customers and attract, for commercial gain, Internet users to the Respondent’s website;
(iv) the Respondent has no rights or legitimate interests in the disputed domain name, as established under paragraph 6(B) above and as a consequence, the Respondent could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate.
Accordingly the Panel finds that the Complainant has established element 4(a)(iii) of the Policy. 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.
Anna Carabelli
Sole Panelist
Date: October 26, 2012
Full & Egal Universal Law Academy