The Complainants are Norton Financial Services Limited and Norton Finance and Mortgages Limited of Rotherham, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Adlex Solicitors, UK.
The Respondent is Norton Finance Group Limited which also purports to be in Rotherham, UK. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2013. On November 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2013, 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.
By an email dated November 11, 2013 the Center notified the Complainants’ solicitors of certain deficiencies in the Complaint in accordance with paragraph 4(b) of the Rules and required them to cure the deficiencies within five days. The Complainants corrected those deficiencies by filing an amended Complaint that same day.
The Center verified that the Complaint together with the amended 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 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2013. On December 11, 2013, the Center informed the parties that due to an administrative oversight and in the interests of due process, the Respondent was granted until December 16, 2013, to indicate to the Center whether it intends to participate in these proceedings or otherwise. The Respondent did not submit any response.
The Center appointed Jane Lambert as the sole panelist in this matter on January 3, 2014. 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 Complainants are part of the Norton Finance Group, which operates through a number of companies, including the first and second Complainants. The principal activities of the group are advancing secured loans and providing debt management services to customers within the UK. The first Complainant owns UK trade mark number 2374663 dated October 2, 2004, being a series of word marks for NORTON FINANCE and NORTON. Both the first and second Complainants trade under the name “Norton Finance”.
In an average month the group receives approximately 12,000 customer applications for loans totaling over £200 million and arranges loans totaling over £5 million for over 300 customers. Consolidated turnover for the years ended April 11, 2011 and 2012 were £11.14 million and £12.19 million respectively of which approximately £9.6 related to trading under the Norton Finance brand in 2011 and £10 million in 2012.
Many tens of millions of pounds have been spent marketing the “Norton Finance” name since 2004. Such marketing has included advertising in national and trade newspapers, magazines and directories, TV campaigns and internet advertising.
The Respondent is using the disputed domain name as a URL for a website that offers business loans and other financial services on behalf of “Norton Finance Group Ltd.” which purports to trade from the same building as the Complainants. The Complainants know nothing of the Respondent but fear that the site has been or will be used to defraud members of the public. 5. Parties’ Contentions A. Complainant
The Complainants claim the transfer of the disputed domain name on the grounds that:
(i) the disputed domain name is confusingly similar to a trade mark in which the Complainants have rights;
(ii) the Respondent has have 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.
As to the first ground, the Complainants rely on the registered trade mark mentioned above. They also claim rights under English law to bring an action for passing off to retrain others from using the signs NORTON and NORTON FINANCE or any colourably similar sign in relation to financial services. They say that the disputed domain name is confusingly similar to the trade mark and also to the signs in respect of which they could sue for passing off.
As to the second ground they rely on Paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which states:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainants address each of the circumstances in paragraph 4(c) of the Policy and say that none of them applies.
As to the third ground the Complainants rely on paragraph 4(b)(iii) of the Policy. They submit that the use of the disputed domain name as a URL for a site offering loans and financial services shows that the Respondent must have been intended to confuse, attract and profit from internet users who were searching for the Complainants business in search engines, web browsers and otherwise with a view to diverting them to the Respondent’s site for commercial gain. As further evidence of bad faith they point to the use of a false name and address. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed, a Complainant has to satisfy the Panel that
(i) the disputed domain name is confusingly similar to a trade mark in which the Complainants have rights;
(ii) the Respondent has have 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 Panel is satisfied that the first requirement is met.
The disputed domain name differs from the registered marks NORTON FINANCE and NORTON only in the suffix and the words “group” and “limited”. The Panel agrees that those differences fail to dispel the connection between the disputed domain name and the marks and if anything reinforce the link as the disputed domain name incorporates the corporate name of the Complainants’ holding company. Moreover, the Complainants’ trade mark is the dominant feature of the disputed domain name.
Even without their registered marks it is likely that the Complainants could have brought proceedings for passing off in England and Wales to restrain the use of any sign incorporating the words “norton” and “norton finance” in relation to financial services. B. Rights or Legitimate Interests
The Panel finds that the second requirement is met.
There is no evidence that the Respondent has any rights or legitimate in the disputed domain name.
Adopting and applying paragraph 2.1 of the WIPO Overview 2.0 the Panel holds that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name which the Respondent has failed to discharge. C. Registered and Used in Bad Faith
The Panel holds that the third requirement is satisfied.
Paragraph 4(b) lists a number of circumstances that shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is using the disputed domain name to attract (or attempt to attract) for commercial gain, Internet users to the Respondent’s 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 the web site or location or of a product or service on such web site or location.
The Panel has already found that the disputed domain name is confusingly similar to the Complainants’ trademarks. It is reasonable to infer that the use of confusingly similar domain name was intended to attract Internet users to the Respondent’s site where they would be offered financial services that at the very least compete with the Complainants’ Services from which the Respondent would hope to derive commercial gain. It follows that there is sufficient evidence of registration and use 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.
Jane Lambert
Sole Panelist
Date: January 17, 2014
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