The Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Jhgjh J Jhg, Private Person of Republic of Moldova. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2014. On October 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2014, 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 October 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2014.
The Center appointed Mihaela Maravela as the sole panelist in this matter on November 27, 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.
As regards the language of the proceeding, pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. In its verification response of October 18, 2014, the Registrar confirmed that the language of the Registration Agreement for the disputed domain name was the English language. Consequently, the English language is the language of the proceeding. 4. Factual Background
The Complainant is a public limited company resulting from the merger between National Provincial Bank (est. 1833) and Westminster Bank (est. 1836), incorporated in London, UK. The Complainant has been trading under the name of National Westminster Bank since 1970. As of 2000, the Complainant is part of the Royal Bank of Scotland Group. The Complainant currently has 7.5 million personal customers and 850,000 small business accounts.
The Complainant offers its financial services worldwide under the trademark NATWEST, which is protected as a registered trademark in UK since 1973 (Annex 7.2 to the Complaint) and a number of jurisdictions worldwide (Annex 7.1 to the Complaint). In 2014, NATWEST ranked 39 in the Brand Finance ranking system of most valuable brands of British origin (Annex 14 to the Complaint).
The Complainant also owns a significant number of domain names incorporating the NATWEST trademark, including (registered and launched in 1995), , , .
The disputed domain name was registered by the Respondent on July 30, 2014. The Respondent is a private person, who identified himself as “Jhgjh J Jhg” and whose geographical contact details, other than the country (Republic of Moldova), do not seem to exist as real places.
The Complainant sent a cease and desist letter to the Respondent, requesting the voluntary transfer of the disputed domain name, first on September 21, 2014 and then a reminder on September 28, 2014 (Annexes 11.1 and 11.2 to the Complaint). The Respondent failed to respond.
Following an abuse complaint filed by the Complainant, the website to which the disputed domain name resolved was disabled on August 4, 2014 by the host (Annex 12 to the Complaint). At the date of takedown, according to the screenshot of the website to which the disputed name resolved, the disputed domain name resolved to a website imitating the Complainant’s credit card services website.
Currently, the disputed domain name resolves to a website apparently operated by Global Domains International, Inc (“GDI”), where a GDI affiliate program is advertised under what seems to be a pyramid scheme. It appears that affiliates are recruited to find buyers (referrals) for GDI services (mainly sale of internationalized domain names) and in exchange for a monthly affiliation fee, they are entitled to a commission from every purchase made one of their referrals. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the trademark NATWEST is distinctive and enjoys significant awareness particularly within the banking industry.
The Complainant makes the following contentions:
a. The disputed domain name is identical or confusingly similar to the NATWEST trademark in which the Complainant has rights (Policy, paragraph 4(a)(i)).
The Complainant is the owner of the trademark NATWEST, whose fame has been confirmed in numerous previous UDRP decisions. The disputed domain name is identical or at least clearly confusingly similar to the Complainant’s registered trademark NATWEST. The addition of the country code Top Level Domain (“ccTLD”) “.sw” for Samoa does not distinguish the disputed domain name from the Complainant’s trademark. The disputed domain name must therefore be considered to be confusingly similar to the Complainant’s trademark.
b. The Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii).
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name or anything that would suggest that the Respondent has been using NATWEST in any other ways that would give it any legitimate interests or rights in the name. The Respondent may not claim any rights established by common usage. There is no evidence in the record suggesting that the Respondent is commonly known by the disputed domain name. In fact, the Respondent used the disputed domain name in an attempt to pass itself off as the Complainant in order to defraud Complainant’s customers through a fraudulent website identical, or similar, to that of the Complainant’s (Annexes 10 and 12 to the Complaint). Such use is neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use pursuant to the Policy. Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
c. The disputed domain name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii) and 4(b)).
NATWEST is a famous trademark, in particular within the banking industry. There is no connection between the Respondent and the Complainant. It is obvious that the Respondent was aware of the Complainant’s trademark rights and the value of said trademark at the date of registration of the disputed domain name, i.e. July 30, 2014.
On September 21, 2014, the Complainant sent the Respondent a cease and desist letter, to which the latter failed to respond. Such failure is relevant to a finding of bad faith.
The Complainant claims that the Respondent had used the disputed domain name to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information. Although the screenshot of the website to which the disputed domain name resolved before being disabled (Annex 10 to the Complaint) and the takedown record (Annex 12 to the Complaint) do not fully explain the Respondent’s phishing scheme, the Complainant relies on previous UDRP decisions to argue that this is the only sensible conclusion to make (e.g. The Royal Bank of Scotland Group Plc v. Mike Steinbock,WIPO Case No. D2013-0121).
As regards the current status of the website to which the disputed domain name resolves, the Complainant further relies on previous UDRP decisions (i.e., Koç Holding A.S. v. KEEP B.T., WIPO Case No. D2009-0938) to argue that passive holding can still constitute an act of bad faith, as well on paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As shown above, Respondent is a private person, who identified himself as “Jhgjh J Jhg” and whose geographical contact details returned by the WhoIs domain name search enquiries, other than the country (Republic of Moldova), do not seem to exist as real places. An email address of the Respondent was however returned by the WhoIs domain name search enquiries, as was disclosed in the Registrar’s verification response of October 18, 2014. Consequently, having reviewed the record of communications, the Panel finds that the Complainant and the Center have employed all reasonably available means to achieve actual notice of the Respondent and to give the Respondent reasonable opportunity to respond in accordance with the Policy and the Rules. The Respondent nonetheless failed to submit a respond. Consequently, the Panel is directed to issue its decision on the basis of the complaint (paragraph 14(a) of the Rules), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (paragraph 15(a) of the Rules).
In accordance with paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark 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 has demonstrated prior trademark rights in the trademark NATWEST. The Complainant holds over one hundred and seventy trademark registrations for the NATWEST trademark throughout the world (Annex 7.1 to the Complaint).
The Panel finds that the Complainant has provided evidence in respect of its trademark NATWEST being widely known and enjoying the status of a well-known trademark, firmly associated with the financial services offered by the Complainant. The status of the trademark NATWEST as a well-known and reputed trademark has been established in previous UDRP decisions (inter alia, see National Westminster Bank plc. v. Ransome Johnson, WIPO Case No. D2013-0736; National Westminster Bank plc v. Abdelilah Jadron,WIPO Case No. D2013-2232; National Westminster Bank plc v. Hans Crews Jr., N/A,WIPO Case No. D2012-2365; National Westminster Bank plc v. Christa Ehret,WIPO Case No. D2012-1706 ).
The disputed domain name consists entirely of the term “natwest”, which is identical with the Complainant’s registered trademark NATWEST. The addition of the ccTLD “.ws” does not distinguish the disputed domain name from the Complainant’s trademark.
The Panel accepts the Complainant’s assertion that anyone who sees the disputed domain name would mistake it for a name related to Complainant. The likelihood of confusion includes an obvious association with the Complainant’s trademark. The Panel also accepts the Complainant’s assertion that, given the reputation of the NATWEST trademark, there is a considerable risk that the public would perceive the disputed domain name as a domain name owned by the Complainant or that there is some kind of commercial relation between the Respondent and the Complainant.
For the reasons above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
“(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Further, the consensus view of WIPO UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of the disputed domain name rests with the complainant in as far as making 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 (paragraph 2.1 of WIPO Overview 2.0).
The Panel is of the opinion that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. By not submitting a response, the Respondent has failed to overturn such prima facie case. The Panel notes that there is no evidence to indicate that the Respondent was commonly known by the disputed domain name. Nor is there evidence that the Complainant would have authorized the Respondent to register a domain name containing its registered trademark. The Panel also notes that the Respondent registered and began using the disputed domain name long after the Complainant had registered NATWEST as a trademark (i.e., on July 30, 2014 by contrast to Complainant’s earliest registration of the NATWEST trademark in UK in 1973 and most recent registrations dating from 2007 – Annex 7.1 to the Complaint).
Further, it is the Panel’s opinion based on the evidence submitted by the Complainant as Annex 10 and Annex 12 to its Complaint, that the Respondent used the disputed domain name to pass itself off as Complainant in order to defraud Complainant’s customers through a fraudulent website confusingly similar to that of Complainant’s. The Respondent used the disputed domain name to “phish” for financial information of the Complainant’s customers.
The Panel therefore concludes that the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to the Policy.
For the reasons above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore the condition of paragraph 4(a)(ii) of the Policy is fulfilled. C. Registered and Used in Bad Faith
The Panel finds that the Complainant established that the NATWEST trademark has the status of a well-known trademark with a substantial and widespread reputation throughout the whole banking community and throughout the world.
Such status had been acquired by the Complainant’s trademark before the date of registration of the disputed domain name by the Respondent (i.e., July 30, 2014).
Consequently, the fact of the registration of the disputed domain name, which consists entirely of the Complainant’s trademark, and the fact that the disputed domain name resolved to a website confusingly similar to that of the Complainant make it obvious that Respondent was aware of Complainant’s rights in the NATWEST trademark at the time he registered the disputed domain name.
Additionally, as described above, the Respondent used the disputed domain name to pass itself off as Complainant, in order to “phish” for financial information of the Complainant’s customers (Annexes 10 and 12 of the Complaint).
The evidence in the record further shows that Complainant sent a cease and desist letter to the Respondent, requesting the voluntary transfer of the disputed domain name, first on September 21, 2014 and then a reminder on September 28, 2014 (Annexes 11.1 and 11.2 to the Complaint). The Respondent failed to respond. Such failure has been considered relevant for further evidence of bad faith in previous UDRP decisions (e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
As concerns the fact that the disputed domain name is not currently in use by the Respondent, the Panel takes the view that passive holding of the disputed domain does not preclude a finding of bad faith (paragraph 3.2 of WIPO Overview 2.0), nor does it detract from the Respondent’s bad faith, as it has been established in prior UDRP decisions (e.g., Koç Holding A.S. v. KEEP B.T,WIPO Case No. D2009-0938).
Also, this Panel agrees with the opinions expressed by previous UDRP panels in the sense that “this is not changed by the fact that the website under the Domain Name has gone offline after the Complainant formally noticed its objections to the website operator, because it may be reactivated at any time and this threat continues to hang over the Complainant’s head” (see, e.g., Etablissement Public du Musée du Louvre v. D, WIPOCase No. D2014-1405).
Furthermore, it appears in this case, that currently, as prescribed under Section 4 of this decision, the disputed domain name resolves to a website where services related to buy and sell internationalized domain names are offered, and some links are redirecting to which is a further evidence of bad faith use.
Other factors which were considered by the Panel as indicative of bad faith registration and use of the disputed domain name are:
- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it,
- The apparent change of the content of the websites after the receipt of the Complaint. The change to the Respondent’s website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon,WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) and V&V Supremo Foods, Inc. v. pxlchk1@,WIPO Case No. D2006-1373,
- The Respondent has actively provided, and failed to correct, what seems to be false contact details, in breach of its registration agreement (see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ).
For the reasons above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and therefore the condition of paragraph 4(a)(iii) of the Policy is 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.
Mihaela Maravela
Sole Panelist
Date: December 11, 2014
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