WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group plc v. natwestfraud.com and Umang Malhotra
Case No. D2001-0212
1. The Parties
The Complainant is The Royal Bank of Scotland Group plc, a United Kingdom corporation with its principal place of business at Edinburgh, Scotland. The Complainant is represented by Mr. Robert S. Draper and Mr. James P. Jenal of OíMelveny & Myers, LLP of Los Angeles, California, U.S.A.
The Respondents are (i) natwestfraud.com and (ii) Umang Malhotra of San Diego, California, U.S.A. The Respondents are represented by Mr. Scott D. Buchholz of Dummit, Faber, Briegleb & Diamond, Attorneys of San Diego, California, U.S.A. Because <natwestfraud.com> is shown as the Registrant of the name, it is cited as a Respondent also. It is clear that Mr. Malhotra controls <natwestfraud.com>. It will be convenient to refer in the course of this decision to Ďthe Respondentí as including the interests of both of these parties.
2. The Domain Name and Registrar
The domain name at issue is <natwestfraud.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI").
3. Procedural History
The Complaint submitted by The Royal Bank of Scotland Group plc, was received on February 3, 2001, (electronic version) and February 12, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). The Complainant subsequently filed amendments to the Complaint prior to the commencement of the administrative proceedings.
On February 16, 2001, a request for Registrar verification was transmitted by the WIPO Center to NSI.
By email dated February 21, 2001, NSI advised the WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration <natwestfraud.com>.
<natwestfraud.com> of 1510 Trumansburg Rd, Ithaca, NY, U.S.A at the address shown for the Respondent is shown as the "current registrant" of the domain name.
Umang Malhotra is the billing, administrative and technical contact at the address of Box 127582, San Diego, CA, U.S.A.
NSIís 5.0 Policy applies to the registration.
The domain name registration is currently in "Active" status.
The NSI has currently incorporated in its agreements the Policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from NSI that the domain name in question is still "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the ICANN Policy and the Rules, the WIPO Center on February 28, 2001, transmitted by post-courier and by email a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint and Amendments was also emailed to NSI and ICANN. The Respondent filed a Response on March 13, 2001 (electronic) and April 2, 2001 (hard copy). The Respondent had been granted an extension of time for filing a Response by the WIPO Center.
The Respondent elected to have the Complaint resolved by a three-member panel. The parties have duly paid the amounts required of them to the WIPO Center.
The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It had previously invited Professor W.R. Cornish of the University of Cambridge, U.K. and Professor Jeffrey Samuels of the Law School, University of Akron, Ohio, U.S.A to be Panelists. All panelists have duly given a statement of acceptance and a declaration of impartiality and independence.
Without seeking leave from the Panel, the Complainant filed on May 11, 2001, a further affidavit. The Respondent opposed this filing and filed further submissions. The Panel has decided to consider both these documents. The Panel does not wish to encourage additional documents, especially where a Complainant presumes Ė wrongly Ė that there is a right to file a reply. However, justice to the parties in this case requires a consideration of all relevant documents by the Panel before it delivers its decision.
The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On May 25, 2001, the WIPO Center forwarded to the Panelists, by courier, the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by June 8, 2001. However, because of the delays caused by the late filings, the decision will now be given on or before June 22, 2001.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
Complainant is the parent of the wholly owned subsidiary National Westminster Bank plc, commonly referred to as "NatWest", which trades under the "NatWest" mark. NatWest, with its subsidiaries and affiliates provides an extensive range of banking and financial services. These include loans, mortgages, card services (credit cards, charge cards and debit cards), insurance services, equity finance, foreign exchange services, interest rate management products and independent financial advice. It also conducts trading and capital markets business including global interest rate derivatives trading, securitisation origination and trading, securities and credit rating, futures brokerage and structured trade finance organization.
NatWest currently has 2,400 branches worldwide with a presence in all of the major towns and cities of the United Kingdom. It has approximately 46,000 corporate customers and is the No. 1 credit and debit acquirer and No. 2 card issuer in the United Kingdom.
Complainantís subsidiary, NatWest, has spent large sums of money advertising its services on television and in the newspapers. All of these advertisements prominently feature the NATWEST mark. That mark is used orally, on promotional literature and stationery, on the Internet, in advertisements and as the name of its banks.
The Complainantís subsidiary, NatWest, has registered a number of trademarks in various countries which either include, or consist of, the word "NATWEST" in a variety of classes including:
Banking, spring construction, computer software, clocks, paper, traveling bags, lunch boxes, bath linen, badges, toys, office furniture, carpeting, compilation, telecommunications
NatWestís trademarks as collected in the Complaint appear to be U.K. registrations. Besides "NatWest" simpliciter there are numerous marks where "Natwest" has been combined with other words, e.g. "Natwest Advantage".
On February 22, 2000, Respondent through his U.S. counsel, Scott D. Buchholz, Esq. wrote to Complainantís solicitors, advising them of the existence of the website at "www.natwestfraud.com." On behalf of Respondent, Mr. Buchholz wrote:
"Mr. Malhotra is willing to include the rights to his website to your client in exchange for the following:
1) a statement by Natwest Bank that it will use its best efforts to improve its services to its customers;
2) that the individuals employed by Natwest who are involved in Mr. Malhotraís transactions be reprimanded and/or statements issued concerning the need to improve their service to bank customers; and
The Respondent had sued NatWest in the English courts in 1998 and had been unsuccessful in that litigation.
Respondent then sent a letter to Sir George Mathewson, Executive Deputy Chairman of the Royal Bank of Scotland wherein he offered Complainant "the same terms." Complainant responded through its solicitors, advising the Respondentís attorney that "the dispute between your client and NatWest Bank was dealt with by the English court, which is the competent court to adjudicate on the matter, and Judgment was given by the Court of Appeal in favour of the Bank. Accordingly this matter is now at an end." Respondent then called Complainantís solicitors directly. Once again, Complainantís solicitors contacted the Respondentís attorney to advise him that there would be no negotiations over a dispute already resolved by the courts.
Prior to filing this Complaint, Complainantís counsel contacted Respondentís counsel to advise him that his clientís conduct was in bad faith, that the website was a continuing libel of Complainant as well as a tarnishment of Complainantís trademarks, and that Complainant would not agree to pay anything to have the website taken down. Complainantís counsel advised the Respondentís attorney that if the website was not taken down voluntarily, Complainant would take other steps to protect its trademarks, business goodwill and reputation.
The domain name <natwestfraud.com> was registered by Dhruv Malhotra (nephew of Respondent) with NSI in August 1999. The website was designed by Dhruv Malhotra with material provided by the Respondent. The website has been on the Internet since August 10, 1999, with a few interruptions.
The genesis of the <natwestfraud.com> website began shortly after Natwest Bank was sued by the Respondent in March 1998. The case was still in court when <natwestfraud.com> went on-line on August 10, 1999. In summer of 1999, Respondent warned Justice Pumfrey (the presiding judge in the litigation) and top management of Natwest Bank that circumstances surrounding the case would be put on the Internet.
5. Partiesí Contentions:
The name is confusingly similar to the Complainantís marks. Respondentís website at "www.natwestfraud.com"contains a separately-hosted message board feature. The possibility that Respondentís use of the domain name <natwestfraud.com> might lead to confusion is demonstrated by some of the comments posted to Respondentís site. For example: "I found your website when I searched for ĎNatwestí." Similarly, "Looking for a service point Ė all I found is your site!"
Search engines are likely to turn up hits for Respondentís site based on searches for NatWest. This is evidenced by searches on both the Yahoo! and Lycos search engines that turned up Respondentís website among the top ten hits when given the search item "natwest". Two of the top ten hits from Lycos point to Respondentís site. These search results associate with the NATWEST mark allegations of "illegal and unethical practices."
This confusion is the intended consequence of Respondentís acts. Viewing the source to Respondentís splash page and index page reveal metatags purposely added to direct search engines to Respondentís site. Included among these metatag keywords are the following:
royal bank of scotland, natwest, natwest bank, rhbos, plc, wales, fraud, oxfordshire, business , information, education, london, england, corporate, banking, imro, investment, mortgage, home, insurance, securities, Gartmore, Marketing, Group, life, assurance, pensions, unit, trusts, loan, buyer, Ulster, Lombard, Coutts, Greenwich, Hawkpoint, Provincial, finance, banks
These metatag keywords are successful, not only in creating the confusion identified above, but also in associating the Complainant with such terms as "bank fraud." Indeed, a search on Yahoo! for the term "bank fraud" turned up a pointer to Respondentís website as the Number One hit.
Respondent has not engaged in any bona fide offering of goods or services through the use of the disputed domain name.
The bulk of Respondentís website is dedicated to defaming Complainant and its subsidiary, NatWest, over a dispute between Respondent and NatWest dating back to 1992 that has been litigated in the courts of the United Kingdom in which the Respondent was unsuccessful.
Respondentís use of the disputed domain name appears to be solely for the purpose of tarnishing the trademark of NatWest, destroying its business goodwill and driving business from the Complainant and its subsidiary, NatWest. The website associates these two financial institutions with, as Respondentís website declares, "Negligence, Incompetence, Deceit and Fraud."
Respondentís demand for a payment of TWO MILLION DOLLARS (US) in exchange for the relinquishment of a website full of libellous matter and located at a domain name that itself tarnishes the NATWEST mark is dramatic and compelling evidence of Respondentís bad faith registration of the disputed domain name.
Respondent has repeatedly demonstrated his bad faith in registering the disputed domain name, over and above using it to libel Complainant and its subsidiary.
The Internet provides a means for expression across national borders by individuals, groups, companies and governments about their ideas, experiences and observations and about marketing their products / services. The design and purpose of the website <natwestfraud.com> is to provide a "sounding board" of free speech regarding perceived iniquities of this bank as alleged by the Respondent.
The Respondent has received hundred of emails from all over the world complaining about Natwest service in one or another form. Not a single visitor had anything positive to say about Natwest Bank. No visitor to Respondentís <natwestfraud.com> site had displayed any evidence of confusion over the intent and purpose of the website. In many cases, visitors to the site asked for Respondentís assistance with regard to Natwest Bankís alleged mistakes and incompetence.
Public trustworthiness and goodwill can only be based on images projected by the Complainant. Respondent has a right to criticize the Bank and its top management if they do not "practice what they preach."
Complainant has tried to intimidate the Respondent by sending letters or emails or faxes to Respondentís hosting and other Internet companies, i.e. Yahoo!, AOL, Amazon and C I Host.
Complainant has made incomplete statements in its Complaint concerning postings on <natwestfraud.com>. The following statement "I found your website when I searched for ĎNatwestí." Similarly, "looking for a service point Ė all I found is your site!" A complete reading of the subject posting identified by Complainant indicates that the writer was well aware of the meaning and purpose of <natwestfraud.com> and not interested in developing a "business relationship" with Complainant. Visitors to Respondentís site are looking for a site where they can register their complaints concerning Natwest Bank.
Complainant exhibits a lack of understanding on how search engines work. Each search engine has criteria for placing the site on their engine which is dependent on several factors and not just on metatags. In case of Yahoo!, this task is undertaken by personnel. The search engines usually decide the language in placement of site. Sometimes scouts and guides find an interesting site and then put it on a particular search engine. <natwestfraud.com> is on almost all the leading search engines in the world because it is a popular site. Complainant has presented no evidence to indicate interest in the site as generated by persons searching for the "official site" of Complainant.
<natwestfraud.com> is one word and not a single visitor to this site has found it confusing with Natwest.
Respondent refers the Panel to the following decisions of WIPO / ICANN:
1. Lockheed Martin Corporation v. Dan Parisi Ė Case No. D2000-1015. The Panel found that "Lockheedsucks" or "Lockheedmartinsucks" were not confusingly similar to Lockheed or Lockheedmartin.
2. America Online, Inc v. Frank Albanese Ė Case No. D2000-1604. The Complainantís request for transfer of the domain name <aoltrader.com> was denied.
In re WIPO domain dispute National Westminster Bank PLC v. Purge I.T. and Purge I.T., Ltd., Case No. D2000-0636, the Administrative Panel held the domain name <natwestsucks.com> was "confusingly similar to the registered trade and service marks" of Natwest. In that matter, Respondent failed to respond to the Complaint, even though it was given additional time by the Panel. Further, this case is distinguishable from the present matter in that the website <natwestsucks.com> was never operational. The Panel found that "mere registration without more cannot amount to use." The Panel further found that the Respondent has registered other domain names contemporaneously with the domain name in question wherein "sucks" was associated with other well-known United Kingdom enterprises. It is submitted that this authority is easily distinguishable from the present.
Respondent submits for consideration Bally Total Fitness Holding Corporation v. Faber 29 F.Supp 2d 1161(C.D. Cal. 1998). In this case, the United States District Court dismissed Ballyís suit against a website designer who used Ballyís mark on its website in a derogatory manner on the grounds that the designerís use of the Ballyís mark did not infringe or dilute the mark. The Defendant used the "Bally" trademark in a website entitled "ballysucks". Although it was determined that Bally had a valid, protectable trademark, the Defendantís use of the mark was not held to create a likelihood of confusion or to otherwise constitute infringement. The Court found that no reasonable consumer comparing Ballyís official website with the Defendantís "ballysucks" website would assume that Defendantís website came from the same source, or was affiliated with, connected with, or sponsored by the trademarked owner. The Court found that if Ballyís argument was accepted, trademark protection would have eclipsed the United States Constitutionís First Amendment right of free speech.
It is clearly stated under "Contact Us" in the Respondentís website that "Note: this site is not affiliated with Natwest Bank." The Respondentís disclaimer supports a determination of "good faith." Anybody visiting the site cannot be confused, even a person of limited education.
Another purpose of the <natwestfraud.com> site is the free promotion of art and culture. "Please visit book banner part of this site. Respondent intends to provide Internet and business services (practical steps to improve services with your customers / clients) after legalities have been overcome."
The history of human civilization is full of cases where injustices had been done with the use of power, money and connections. Freedom of speech and the free exchange of information is the key to development and creativity of human beings and societies in a healthy way.
Respondent is not aware that any court and/or administrative body has ever decreed freedom of expression to be an act of "bad faith." The website is not in "business" to draw commercial traffic from Complainant and it subsidiary. Decisions by courts dealing with such scenarios are inapposite to the propositions set forth in the Complaint.
Respondent submits that an offer to transfer the website was made at the request of the Complainantís agents and representatives. Respondent was propositioned by the attorneys from the law firm representing Complainantís subsidiary. Hence, it is inequitable to now claim that Respondentís response to this request for transfer / sale of the website is in bad faith. It is submitted that Complainant had acts with "unclean hands" with regard to its approach in having this Panel transfer ownership of the domain name to the Complainant.
Respondent finds it remarkable that a commercial enterprise such as Complainant would describe an attempt arriving at an "arms length transaction" as an act of bad faith. It is clear from the record that the domain name was registered and the accompanying website in operation well before any discussions and/or correspondence between the parties with regard to transfer / sale of the domain name. Complainant has offered no evidence to show that at the time of registering the domain name, it was "registered Ö in bad faith," which is a required showing to be made by the Complaint under the Policy, Paragraph 4(a). The domain name and website were in operation and being used for several months prior to any written offer to transfer the domain name. Furthermore, the offer to convey the domain name was made in conjunction with and contingent upon other conditions described within the correspondence dated February 22, 2000. It is submitted that the conditions set forth within the letter in addition to the monetary demand are consistent with the non-commercial use / personal expression of Respondent and do not amount to bad faith.
Respondent submits that the March 1, 2000, reply of Complainant identified within Complainantís schedule of annexed evidentiary materials, was never received by the Respondent and/or Mr. Buchholz. Mr. Buchholzís correspondence of April 24, 2000, was sent after no response was received to the February 22, 2000 letter.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
The first question is whether the domain name <natwestfraud.com> is confusingly similar to the Complainantís marks which consist solely of or include the word "natwest". What follows under this heading is the view of two members of the Panel, Sir Ian Barker and Professor Cornish.
In some WIPO cases, a domain name which adds a pejorative term like Ďsucksí to a well-known mark has been ordered to be removed. In D2000-0583, Direct Line Group Ltd et al v. Purge I.T. and Purge I.T. Ltd, the Panel ordered the transfer to the Complainant of the domain name <directlinesucks.com>. The Panelist held the name confusingly similar to the mark Direct Line. The rationale of this decision was as follows:
"The Respondentís registration, consisting of the Complainantsí name with the suffix, "sucks" (plus ".com"), is not identical to the Complainantsí marks and the question arises whether the registration is confusingly similar to those marks.
Given the apparent mushrooming of complaints sites identified by reference to the targetís name, can it be said that the registration would be recognized as an address plainly dissociated from the Complainants? In the Panelís opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainantsí name and adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainants are connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainants; but equally, others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainants. The Complainants have accordingly made out the first element in its Complaint (see the rather similar conclusion on this element in Case D2000-0477 (<walmartcanadasucks.com>))."
This statement was cited with approval by WIPO Panels in ADT Services AG v. adtsucks.com (D2001-0213) (<adtsucks.com>) and in Koninklijke Philips Electronics v Kurapa Chunun Kang (<antiphilips.com>) (D2001-0163).
Other decisions by WIPO panelists have taken a similar approach. Yet other panelists have concluded that a derogatory word like "sucks", when added to a registered mark, does not render the resulting domain name confusingly similar. Unless and until there is some appellate tribunal, this difference of opinion will endure.
However, the Panel sees a difference where the additional word added to the mark is not slang or banter word like "sucks" which is free of trademark significance, but a standard English word like "fraud". The use of the word "fraud" does not necessarily imply anything derogatory of the Complainant. The site could be taken as one designed to publicise frauds committed upon Natwest. Of course, once the site is accessed, it is clear that it is about frauds allegedly committed by and not upon Natwest. The Panel has no jurisdiction to stop material defamatory of a Complainant. Such considerations could be relevant under the third criterion but cannot be relevant in assessing whether the first criterion has been proved by the Complainant.
"Freedom of speech" arguments may have had a bearing, were this case to be resolved under United States law, which is similar to the law in many jurisdictions where constitutional freedoms have been enshrined in a constitution. However, the Panel must decide cases under the Policy, which is independent of any national legislation or constitution.
In some of the "sucks" cases, there had been little or no development of the website, just the registration of the name. Here, the website is used to attract persons with a grudge against the Natwest Bank. Such persons are seen by the Respondent to assist him in his ongoing campaign against Natwest. Yet the Respondent also sees the website as a means of obtaining from Natwest or the Complainant the compensation he was unable to receive through the English court system. This tactic is shown by his demand for $US2 million as one of his conditions for transferring the name. Accordingly, the Respondent must see some monetary value in perpetuating the website. If he were acting merely as an altruistic collector of complaints from persons dissatisfied with Natwest, he would possibly not be seen as using the website commercially. But he has combined the complaint-gathering role with a possible method of recovering what he considers is his financial due. In so doing, in the opinion of a majority of the Panel, he has rendered the use of the site commercial and has transcended any free speech leeway.
However because all members of the Panel consider that the domain name is not confusingly similar to the Complainantís marks, it is not necessary for the Panel to consider the remaining criteria under the Policy. A majority of the Panel would have found for the Complainant on both the second and third criteria.
Professor Samuels has issued his concurring opinion and agrees with the other Panelists that the Complainant fails to establish that the domain name is confusingly similar to the marks.
The Panel accordingly decides that the Complaint be denied and that no order of transfer of the domain name <natwestfraud.com> be made.
Hon Sir Ian Barker, QC
Professor W.R. Cornish
I concur with the majority that the Complaint should be denied, but write separately to express my views on the issues of confusing similarity and on whether Respondent has legitimate interests or rights in respect of the domain name in dispute.
In my opinion, the disputed domain name <natwestfraud.com> is not identical or confusingly similar to Complainant's NATWEST marks. This is not a case where the domain name differs from that of Complainant's mark only in the addition of highly descriptive or generic terms that are devoid of trademark significance. In my opinion, the domain name <natwestfraud.com> does not look, sound, or, certainly, convey the same commercial impression as the NATWEST marks.
I also believe that Respondent is making a legitimate noncommercial use of the domain name. As noted by the majority, Respondent's website is used to attract persons with a grudge against Natwest Bank. This, in my view, clearly constitutes noncommercial use. The majority seems to believe, however, that such use is commercial because Respondent is demanding $2 million from Complainant as a condition for transfer of the domain name registration. I fail to see how Respondent's "demand" for payment for transfer of the domain name converts Respondent's use of the domain name from a noncommercial one to a commercial one. Given the noncommercial nature of the contents of Respondent's website, in my opinion, there is no attempt here, for commercial gain, to misleadingly divert consumers or to tarnish the Complainant's marks.
Jeffrey M. Samuels
Dated: June 18, 2001