The Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Renedine Bikay of Jackson, New Jersey, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2012. On October 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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.
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 November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.
The Center appointed Simon Minahan as the sole panelist in this matter on December 6, 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 incorporated in London and is the proprietor of the NATWEST trademark which it and its predecessors have used internationally since 1970 in connection with banking services and in respect of which it holds numerous trade mark registrations, including in the USA. It has over 7.5 million individual account holders and services more than 850,000 small businesses.
As part of its operations the Complainant holds registrations for a number of domain names incorporating the NATWEST trade mark including and which it uses to operate commercial websites.
The NATWEST trade mark has been held to be a famous or “well known” mark in previous WIPO UDRP decisions such as National Westminster Bank plc v. Faisal Ilyas,WIPO Case No. D2002-0998 and The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez,WIPO Case No. D2003-0166.
There is no evidence that the Respondent has any reputation or interest in the NATWEST trade mark or any variant of it.
The disputed domain name was registered on June 17, 2012.
Since its registration, the disputed domain name has been applied in the operation of a sham website passing itself off as a website of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its own NATWEST trademark.
In furtherance of this contention the Complainant argues 4 points:
a) the disputed domain name is comprised of the dominant “Ntwest” element which is confusingly similar with its NATWEST trade mark;
b) that the inclusion of the “co-uk” suffix element in the disputed domain name, before the “.com” generic top level domain (gTLD), does not operate to distinguish an otherwise deceptively similar mark which takes as its main element an established trademark and cites Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488 as authority in support of the contention that generic suffixes or prefixes used in conjunction with a trade mark do not distinguish the resulting sign from original the trade mark;
c) that the “co-uk” element in fact furthers the confusing similarity with its NATWEST trade mark since it is generally associated with UK business;
d) that it is well established that the “.com” gTLD is to be disregarded in considering the question of confusing similarity.
In the absence of evidence of the Respondent having any reputation or interest the Complainant contends that it has none. It further contends that whatever interests the Respondent may have acquired in the trade mark by its registration and use since July 2012 the application of the disputed domain name in the operation of a sham website does not give rise to a legitimate interest.
The Complainant further contends that the said use of the website and the registration of the disputed domain name in circumstances where the Respondent had no prior reputation and must have known of the Complainant’s mark and deliberately set out to misdirect traffic intended for the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel accepts the Complainant’s contentions concerning the various elements of the disputed domain name and its confusing similarity with the Complainant’s NATWEST trade mark. In particular the Panel accepts that:
a) the principal element in the disputed domain name is the “ntwest” component which is closely similar to the Complainant’s mark NETWEST and notes the many instances where such features in “typosquatting” cases considered under the UDRP have been found to be confusingly similar;
b) the “co-uk” element and the “.com” gTLD are to be read down or disregarded in the analysis. See e.g, Telecom Personal S.A. v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; Nokia Corporation v. Private Case,WIPO Case No. D2000-1271.
The Panel further considers that the disputed domain name has been deliberately designed to be confusingly similar to the NATWEST mark and is of the view that where a Respondent sets out to deliberately confuse the Panel should be ready to find that the Respondent knew what it was about and succeeded in creating the desired confusion. B. Rights or Legitimate Interests
The Panel notes that the evidence of the Complainant is that it has exclusive rights in the trade mark and it has not licensed or otherwise authorized the Respondent to make any use of it. Under paragraph 4(a)(ii) of the Policy this set of circumstances shifts the burden of production to establish any rights or legitimate interests in the disputed domain name to the Respondent (See, e.g Do the Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317).
The Respondent did not reply to the Complainant’s contentions and so the Panel finds it has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s contention that, because of its fame, the Respondent knew of the NATWEST trade mark when it registered the disputed domain name and considers that this militates against the Respondent having registered the disputed domain name in bad faith.
Further, in the circumstances where, as here, the Respondent has registered a domain name which is deliberately confusingly similar to a famous trade mark and then uses the domain name in connection with a website which is a sham passing itself off as a website of the Complainant in order to misappropriate custom and potentially engage in “phishing” activity; in the present case, it is clear to this Panel that the registration and use of the disputed domain name are both done for illegitimate commercial gain and in bad faith. 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.
Simon Minahan
Sole Panelist
Date: December 23, 2012
Full & Egal Universal Law Academy