The Complainant is National Westminster Bank plc, London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT DBS Inc., Sweden.
The Respondent is Domain-Private-R Westcom, Czech Republic /CECIL MOOLOO,
San Fernando, Trinidad and Tobago. 2. The Domain Name and Registrar
The disputed domain name is registered with Realtime Register B.V. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2012. On November 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 5, 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 November 6, 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 November 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2012
The Center appointed Ross Wilson 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 was formed by the merger in 1968 of the National Provincial Bank (established in 1833) and the Westminster bank (established in 1836). In 1982 it became a public limited company incorporated in London. The Complainant was acquired by The Royal Bank of Scotland Group in 2000. It offers financial services worldwide to 7.5 million personal customers and 850.000 small businesses under the mark NATWEST.
The Complainant owns an international portfolio of registered trademarks and provided evidence of a 1997 NATWEST registration in the Czech Republic.
The Respondent registered the disputed domain name on September 22, 2012.
The Complainant sent a cease and desist letter to the Respondent on September 26, 2012 requesting the disputed domain name be transferred to The Royal Bank of Scotland Group. Two reminders were sent on October 3, 2012 and October 31, 2012. No responses were received. 5. Parties’ Contentions A. Complainant
The Complainant contents that the disputed domain name is confusingly similar to the Complainant’s registered trademark. It considers that the suffixes “bank” and “-co-uk” do not detract from the overall impression of association with the Complainant but rather strengthen that impression.
The Complainant advises that there is no connection between the Respondent and the Complainant and states that the Respondent may not claim any rights established by common usage as it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Also, it has not found anything that would suggest that the Respondent has been using the mark in any other way that would give it any legitimate rights in the name.
The Complainant contends that the Respondent’s action is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair. It points out that the Respondent has used the disputed domain name to pass itself off as the Complainant in order to defraud the Complainant’s customers through a fraudulent website identical to the Complainant’s. According to the Complainant the Respondent used the disputed domain name to “phish” for financial information in an attempt to defraud the Complainant’s customers.
The Complainant considers that at the time of registering the disputed domain name the Respondent was aware of the rights the Complainant has in the trademark and is value because its trademark is famous worldwide clearly indicating that it was registered in bad faith. Similarly, the initial “phishing” and subsequent passive use demonstrates bad faith usage. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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. A. Identical or Confusingly Similar
The Complainant provided evidence demonstrating that it has had registered rights in the NATWEST trademark since 1997.
The disputed domain name consists of the Complainant’s trademark in its entirety together with the suffixes “bank”, “-co-uk” and the extension “.com”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The key differences between the Complainant’s trademark and the disputed domain name are the addition of the descriptive/generic word and the hyphenated letters neither of which in the Panel’s opinion can be considered distinctive. As found in Revlon Consumer Products Corporation v. Amar Fazil,WIPO Case No. D2011-0014 and Tag Heuer S.A. v. JBlumers Inc./Jerald Blume,WIPO Case No. D2004-0871, the addition of a descriptive term does not typically serve to distinguish a disputed domain name but, may serve to accentuate rather than to diminish the confusing similarity. In fact, the additional word “bank” refers to a generic business sector in which the Complainant operates and the hyphenated letters suggesting a valid domain extension, both of which increase the likelihood of confusion to Internet users (see Guccio Gucci S.p.A. v. Bravia Stoli,WIPO Case No. D2009-1170).
Finally, as noted by the panel in Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056, the additional words are too tenuous and insubstantial to detract from the conclusion that the disputed domain name is confusingly similar to the complainant’s trademark where the latter is included in its entirety in the disputed domain name.
The Panel finds that the Complainant’s trademark is readily recognizable within the disputed domain name. Therefore, the Complainant has proven under the circumstances that the disputed domain name is confusingly similar to the trademark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the domain name; or
- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has chosen to use the disputed domain name that reflects the Complainant’s trademark in its entirety without authorisation by the Complainant. Based on the evidence provided by the Complainant the disputed domain name was initially set up for “phishing” but has more recently become inactive. No rights or legitimate interests derive from such use of the disputed domain name incorporating the Complainant’s trademark.
In addition, the Complainant has denied having any connection with the Respondent. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
The Panel considers the lack of rights or legitimate interests in this case is similar to the circumstances in Areva v. Domains by Proxy, Inc./ Sheng Xiang,WIPO Case No. D2011-0061 where the panel concluded that when the respondent registered the disputed domain name, it must have known that it was a trade mark of the complainant and deliberately registered the disputed domain name precisely because it would be recognised as such. As stated by the panel in Hertz System, Inc. v. D/Compsys Domain Solutions Private Limited,WIPO Case No. D2009-0615 “Manifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.
Despite the opportunity provided through this administrative procedure (and through the Complainant’s cease and desist communications) the Respondent has chosen not to rebut the Complainant’s case or assert any rights or legitimate interests in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith may be evidenced.
Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location”.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith. In the Panel’s view the Respondent’s registration of the disputed domain name represents a deliberate disregard of the Complainant’s trademark rights. Clearly the Respondent knew of the Complainant’s well-known trademark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name. As stated in Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100 “It is inconceivable […] that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641, where the selection of the disputed domain names is so obviously connected to the complainant’s trademark their very use by someone with no connection with the company suggests opportunistic bad faith.
The Complainant provided evidence that the disputed domain name was initially a replica of the Complainant’s website and used for obtaining customer details. The Panel finds it most likely that the domain name was created, registered and used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainant’s trademark for financial gain. In similar circumstances the panel in Grupo Financiero Inbursa, S.A. de C.V. v. Inbuirsa, WIPO Case No. D2006-0614 found that “[phishing] is a compelling indication both of bad faith registration and of use under paragraph 4(b)(iv)”. See also CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251, where the panel considered that the respondent’s motive “must be to somehow cash in on the personal data thus obtained. This is a violation of the bad faith registration and use provisions of the Policy at paragraph 4(b)(iv).”
In the current circumstances, the Respondent is passively holding the disputed domain name. Such inactive used does not prevent a finding of bad faith especially when the circumstances include the Respondent’s use of a well-know mark and its lack of response to the Complaint (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Noting that the Respondent has not rebutted any of the Complainant’s contentions, and the fact that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used 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.
Ross Wilson
Sole Panelist
Date: December 21, 2012
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