WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez
Case No: D2002-0823
1. The Parties
The Complainants are The Royal Bank of Scotland Group plc a Public Limited Company, incorporated according to the laws of the United Kingdom, of Edinburgh, EH2 2YB Scotland, and National Westminster Bank plc A/K/A NatWest Bank, a Public Limited Company, incorporated according to the laws of England and Wales, whose registered office address is London, EC2M 3UR, United Kingdom.
The Respondents are Pedro Lopez, Palma Sola C.A., Apure 6001, Venezuela. Also of Edificio El Mirador, Malaga 29670, Espana, and/or A.k.a. A&A System Solutions, Weston FL 33326, United States of America, ("USA"), and/or A.K.A. Alberto Rodriguez at A&A System Solutions, Weston FL 33326, USA.
2. The Domain Names and Registrar
The domain names at issue are <nationalwestminsterbank.com>, <nationalwestminster.org> and <natwestbank.org> (hereinafter referred to as the Domain Names).
The Registrar for the Domain Names is BulkRegister.com, Inc. (hereinafter referred to as the Registrar).
3. Procedural History
On September 2, 2002, Complainants filed a complaint, drafted in the English language, with the WIPO Arbitration and Mediation Center (hereinafter referred to as the Center). The Complaint was received via e-mail on September 2, 2002. The hardcopy of the Complaint was received on September 6, 2002.
On September 4, 2002, the Acknowledgement of Receipt of Complaint by the Center was sent to the Complainant. On the same date, the Center sent the Request for Registrar Verification.
On September 5, 2002, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Names registrant and confirmed that:
- copy of the Complaint was sent to it by the Complainants on September 4, 2002
- it is the current Registrar of the Domain Namesí registration;
- the Respondents are the current registrants of the Domain Namesí registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Name.
- the Domain Names will remain locked during the pending administrative proceeding;
- the language of the Registration Agreement is English;
- the jurisdiction at the location of the principal office of the Registrar for court adjudication does apply;
The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Supplemental Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on September 9, 2002.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Supplemental Rules.
On September 9, 2002, the Center informed the Respondent of the commencement of the proceedings as of September 9, 2002, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being September 29, 2002.
In an email dated September 24, 2002, Respondents' representative requested an extension to file the Response to the Complaint. The following day, on September 25, 2002, Complainants sent their remarks on Respondents' request stating that the extension should not be no longer than five days. On the same day, the Center replied to Respondents' request and granted a seven day extension for the submission of the Response until and including October 6, 2002.
On October 7, 2002, Respondents submitted the Response by e-mail. On the same day, the Acknowledgement of Receipt of Response by the Center was sent to the Respondents and the Request for Candidates was sent to the Complainants.
On October 14, 2002, the hardcopy of the Response was received by the Center.
On October 15, 2002, Complainants replied to the Request for Candidates.
A Supplemental Complaint was sent by the Complainants on October 22, 2002, to which the Acknowledgement of Receipt was sent on the same day. Hard copy of the Supplemental Filing was received on October 25, 2002.
On October 25, 2002, the Center issued a Notification of Panelist Appointment and on November 7, 2002, issued the Notification of the Appointment of Administrative Panel and transmitted the Case File.
The Panel is satisfied that it was constituted in compliance with the ICANN Rules and the WIPO Supplemental Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received further submissions from Complainants seeking to file additional evidence but Panel has declined to do so in an interim order.
The Panel is obliged to issue a decision on or prior to December 3, 2002, in the English language.
4. Factual Background
The following uncontradicted and unchallenged facts appear from the Complaint, documents submitted with the Complaint in support thereof as well as routine verifications conducted by the Panel:
National Westminster Bank (A/K/A NatWest Bank) is a fully-owned subsidiary of the Royal Bank of Scotland Group, which in March 2000, completed the acquisition of NatWest Bank. Consequently, whilst ownership of many of the trademarks still rest with NatWest Bank, many have now been assigned to The Royal Bank of Scotland Group in accordance with the Groupís centralised trademark holding policies.
The Royal Bank of Scotland Group (RBS), founded in 1727, is one of Europeís leading financial services groups.
Complainants have obtained trademark protection in respect of the NATIONAL WESTMINSTER BANK, NATWEST and NATIONAL WESTMINSTER names in many jurisdictions (Annexes C and F).
On May 19, 2002, the Respondents registered the domain name <nationalwestminsterbank.com> and on May 22, 2002, they registered the domain names <natwestbank.org> and <nationalwestminster.org>.
As of June 13, 2002, the Domain Names resolved to a website featuring assertions against Complainants.
5. Partiesí Contentions
Over and above the uncontested and unchallenged factual background as noted above, which is hereby incorporated herein by reference, it has been respectively contended by:
- All three Respondents are one and the same person and that the names are all aliases used by the Respondent(s) to register the Domain Names.
- In the alternative, they submit that in the event that the Respondents are not one and same, that the Respondents have registered the domain names jointly for their illicit enterprise.
- When Respondent (a) (Pedro Lopez) was approached by the registrar, BulkRegister upon Complainantís urging to change his fictitious registration details for the domain name <nationalwestminsterbank.com>, the details were updated to a fictitious address in Spain.
- They made contact with Respondent (c) (Alberto Rodriguez) (who is listed as Technical contact in all three registrations) by telephone, and he appeared to know all information of Respondent (a) by heart, despite Respondent (c)ís claim to have thousands of clients and that Respondent (a) was merely such a client.
- The registrant contact details for "nationalwestminster.org" and "natwestbank.org" were the same as for Respondent (b) (A & A Systems Solutions) and the Administrative contact on both registrations is listed as Respondent (a) with the Venezuela address, whilst the Technical contact was Respondent (c) with the same address as Respondent (b).
- All three domain names point to the same site, leading to the conclusion that they are owned by one and the same person.
- Of all the addresses listed, only the Address and telephone number in Florida (Respondents (b) and (c)) has proved to be a correct addresses. All other addresses and telephone numbers supplied in the registrations have all been verified to be false and non-existent.
- By market capitalisation as at September 30, 2001, it is the UKís seventh largest company, the second largest bank in the UK and in Europe, and it ranks sixth in the world.
- They include major banking and financial services brands and they enjoy leading positions in the United Kingdom across a range of different areas.
- They have sought and obtained trademark protection in respect of the NATWEST and NATIONAL WESTMINSTER names in many jurisdictions.
- At some date after the registration of the Domain Names by Respondents, the Domain Names resolved to a website featuring highly damaging and unsubstantiated assertions against Complainants.
- They tried to contact Respondents, however the telephone numbers and addresses supplied in the registration are false.
- They notified the Registrar of the false registration details and the latter requested of Respondents to update these details.
- Respondents did update the details, only with non-existent information.
- They contacted Respondent (c) who claimed not to be the <nationalwestminsterbank.com> registrant, although the two other domain names were registered to Respondent (b), who was Respondent (c)'s company which served as technical contact on the registration of <nationalwestminsterbank.com>.
- On August 30, 2002, the website still remained.
- Even before they sought trademark protection, NatWest Bank has used THE NATWEST, NATIONAL WESTMINSTER and NATIONAL WESTMINSTER BANK names in commerce in connection with banking and financial services thus becoming sufficiently distinctive for Respondents to have acquired unregistered Common Law trademark rights in the names
- Respondents have no rights or legitimate interests in respect of the Domain Names.
- Despite Respondents' use of a disclaimer, the Respondents are using the Domain Names in a way that Complainants' reputation and goodwill will suffer.
- The Domain Names were registered and are being used in bad faith.
- Respondents registered the domain name in order to prevent the Complainants who are the trademark owners from reflecting the mark in a corresponding domain name and to disrupt their business.
B. Respondents, that:
- They claim to have been the victims of the inappropriate banking activities of Complainants.
- They claim to be exercising their rights to freedom of expression.
- The UDRP was established to permit the expedited disposition of clear abuses.
- The instant case is not a clear case of "cybersquatting" and "cyber piracy".
- Copies of certain trademark certificates are supposed to be attached as Annex F. However, the designated tab in the Annexes states that "ANNEX F TO FOLLOW SHORTLY." To the knowledge of Respondents, this Annex information has not been submitted.
- The ownership by one or both of the Complainants of the trademarks has not been proven.
- UDRP policies refer to "Complainant" and not "Complainants".
- In any "fair use" utilization of a domain name for "freedom of speech" criticism, there is, by definition some criticism or disclosure of information regarding the object of the criticism.
- Complainant has failed to sustain its burden of proving that Respondent did not have any legitimate interest in the Domain Names.
- They are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.
- The Domain Names are currently being used as a vehicle for directing criticism at a bank that has engaged in well-documented inappropriate activities.
- The bank has a long history of being dishonest, deceitful and evasive (exhibit B).
- In any "fair use" utilization of a domain name for "freedom of speech" criticism, there is, by definition some criticism or disclosure of information regarding the object of the criticism.
- Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark.
- They did not register and use the Domain Names in bad faith. There is no proof to the contrary.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainant to cumulatively show:
(i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
(i) Identity or Confusing Similarity between the Domain Names and Complainants' Trademarks
The Panel finds Complainants have rights in the trademarks having registered and used them in various jurisdictions in connection with various services, and given that people associate the marks as representing goods and services associated with the Complainants.
Moreover, the Domain Names <nationalwestminsterbank.com> and <nationalwestminster.org> are identical to Complainants' trademarks since they incorporate in whole the trademarks without any deviation whatsoever. As for the Domain Name <natwestbank.org>, it is confusingly similar to the Complainants' NATWEST and NATWEST BANK trademarks.
Pursuant to the above mentioned reasons, the Panel is therefore of the opinion that the Complainants have satisfactorily met their burden of proof as required by paragraph 4(a)(i) of the ICANN Policy.
(ii) Rights or Legitimate Interests in the Domain Names by Respondents
While the onus rests upon the Complainants to demonstrate that Respondents have no rights or legitimate interests, once some evidence has been adduced, as in the present case, it is incumbent upon Respondents to show otherwise. In the present case, the only explanation provided by Respondents is that they were exercising their right to freedom of speech.
The Panel finds the Respondents have no rights or legitimate interests in the Domain Names given there exists no relationship between Complainants and Respondents that would give rise to any license, permission or authorization by which Respondents could own or use the Domain Names. There is no evidence of any commercial relationship between the Complainants and the Respondents which would entitle the Respondents to the marks.
Additionally, the Respondents are not making a fair use of the Domain Names. According to the evidence submitted by the Complainants, all the Domain Names resolve to a site that invites viewers to share the misadventures they might have encountered with Complainants. The Panel took note that the decisions cited by the Respondents in their Response refer to the First Amendment and is of the opinion that the principle of the First Amendment cannot automatically be expanded world-wide to non-American citizens. Freedom of speech must be balanced with some degree of control, manner and regulation to avoid the arising of abuses; limits must be set. Moreover, Respondents neither specify nor explain Complainants' "reprehensible behaviour" on their website. Without support, this innuendo serves no purpose other than to potentially tarnish the reputations of Complainants and their trademarks.
While one must concede that criticism per se is not a commercial use and that a criticism site may well be entirely legitimate, an argument can be made that a non controlled use can be anti-commercial when it has the effect of driving regular customers away from one's business. Having said that, the Panel also noted that the Respondents have used domain names that are identical and substantially similar to Complainants' trademarks to exercise their freedom of expression and this has the direct consequence of tarnishing Complainants' trademarks. Respondents' can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainants' marks. Given the free nature of the media which is the Internet and the chaotic spamming that has become epidemic, it does not appear that one can be at full liberty to use someone else's trade name or trademark by simply claiming the right to exercise a right to freedom of expression. Surely, this right can be fully exercised otherwise than using someone else's identical or substantially similar trade name or trademark.
The Panel adopts the finding in Westminster Savings Credit Union v. Hart Industries inc, WIPO Case No. D2002-637:
However, as stated in Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen, WIPO Case No. D2001-1018, the forum for resolving the dispute between the parties to this Complaint as to the alleged wrongdoings of the Complainant is not the ICANN Policy. This being said, the Panel finds that the Respondents' frustration and concerns cannot confer on them a right or legitimate interest in the Domain Name.
The Panel adopts the finding in Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen, WIPO Case No. D2001-1018:
"For these reasons, whilst the Panel accepts that the Respondent may be free publicly to comment on the Complainantís workmanship on the Internet, the Panel does not consider that such freedom confers a right or legitimate interest in the use of a domain name which is identical to the Complainantís trade-mark."
In the circumstances of this case, the Panel concludes that, on a balance of probabilities, the Complainants have discharged their burden to show that the Respondents have no rights or legitimate interests in the Domain Names.
(iii) Bad faith in Registration and Use of the Domain Names by the Respondents
Most of the time it is quite difficult, if not impossible to actually show bad faith with concrete evidence, particularly given the limited scope of the inquiry in these proceedings; one should not expect to easily find "the smoking gun". While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be ascribed to bad faith. The Panelís understanding of the Policy is that although the initial burden to prove Respondentís bad faith in the registration or the use of the disputed Domain Name relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case, and once it has done so, as Panel finds it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Respondents are misplaced in relying on the defence of freedom of speech to prove a legitimate interest and lack of bad faith use and registration. In particular, the Panel finds that the Complainants have made a prima facie showing that the Respondents have no rights or legitimate interest in the Domain Names and that the Domain Names were registered or used in bad faith; and therefore the burden shifted to Respondents to prove the opposite. However, the Panel believes Respondents have not met their burden for the following reason.
Respondentsí website to which the Domain Names resolve accuse Complainants of "reprehensible behavior" which resulted in "victims who have suffered and had their lives destroyed" and who "took their lives as a resultÖ". Respondents neither specify nor explain this "reprehensible behavior" on their website. Without support, this innuendo serves no purpose other than to tarnish the reputations of Complainants and their trademarks. While Complainants need not know the identity of their accusers to respond to the accusations, Complainants cannot defend themselves against Respondentsí slurs without knowing the facts on which they are based.
It is here that Respondentsí free speech arguments fail. Respondents may have a valid basis to denigrate Complainants, but having failed to allege any basis for their slurs on their website, Respondents have not demonstrated that use of their Domain Names is legitimate. See Hunton & Williams v. American Distribution Systems, Inc. et al., Proceeding No. D200-0501. Respondents having failed to provide a better explanation (or any explanation) other than that they sought to tarnish Complainants and their trademarks, Panel finds that Respondents have not engaged in legitimate non-commercial or fair use of the Domain Names, nor have they shown a lack of bad faith sufficient to negate Complainantís showing of bad faith use and registration.
Respondents' argue that their registration of the Domain Names for the sole purpose of criticism is justified by their right to freedom of expression. Panel understands the importance of freedom of speech and does recognise in some instances the legitimacy of a criticism site however the Panel believes that Respondents can continue expressing themselves through the registration of a domain name other than one that may cause confusion or mislead the public. Respondents' actions are pointing to an intention to tarnish Complainants' trademarks or dilute their goodwill. Given the very nature of the Internet, the readily free access to a world-wide audience and the impossibility of Complainants to counteract or respond to inaccurate and/or incomplete statements or accusations made by Respondents, the Panel is of the view that the Respondents can achieve the goal of exercising their right to freedom of expression, by using another name. Consequently, the Panel finds that all of this points to bad faith on Respondents' part.
For the foregoing reasons, the Panel finds that:
- The Domain Names registered by the Respondents are confusingly similar to the trademarks to which the Complainants have rights; and
- The Respondents have no rights or legitimate interests in respect of the Domain Names; and
- The Domain Names have been registered and are being used by the Respondents in bad faith.
Accordingly, pursuant to Paragraphs 4(i) of the ICANN Policy and 15 of the ICANN Rules, the Panel orders that the registration of the Domain Names <nationalwestminsterbank.com>, <nationalwestminster.org> and <natwestbank.org> be transferred to the Complainants and directs the Registrar, BulkRegister.com, Inc., to do so forthwith.
Jacques A. Léger, Q.C.
Philip N. Argy
Jordan S. Weinstein
Dated: December 3, 2002