WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group plc and
National Westminster Bank plc A/K/A NatWest Bank
v. Alberto Rodriguez / A&A System Solutions
Case No. D2003-00251
1. The Parties
Complainants are The Royal Bank of Scotland Group plc, and National National Westminster Westminster Bank plc, London, United Kingdom of Great Britain and Northern Northern Ireland, represented by Cogent IPC Ltd. also of London, United Kingdom of Great Great Britain and Northern Ireland.
Respondents are Alberto Rodriguez / A&A System Solutions of Weston, Florida, United States of America. Administrative contact for the domain names is Pedro Pedro Lopez of Apure , Venezuela. Technical contact for <nationalwestminster.biz> and billing contact for <nationalwestminster.info> is Alberto Rodriguez, A&A System Solutions, Weston, Florida, United States of America. Contact details provided in Complaint include, Pedro Lopez of Malaga, Spain.
2. The Domain Names and Registrar
The disputed domain names are <nationalwestminster.biz> and <nationalwestminster.info> which are registered with BulkRegister.com, Inc. of Baltimore, Maryland, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on January 24, 2003. On January 24, 2003, the Center transmitted by email to BulkRegister.com a Request for Registrar Verification in connection with the domain names at issue. On January 27, 2003, BulkRegister.com transmitted by email to the Center its Verification Response. In that Response, BulkRegister.com confirmed
- a copy of the Complaint was received on January 27, 2003;
- the domain names at issue are registered with it;
- the contact details for Respondents;
- the Uniform Domain Name Dispute Resolution Policy applies to the domain names;
- the domain names are currently locked;
- the language of the Registration Agreement is English; and
- the Agreement states: "This Agreement and all rights hereunder shall be governed by the internal laws of the State of Maryland, without regard to such State’s policies relating to conflict of laws…."
The Center verified, on January 31, 2003, that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 31, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2003.
The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ Default on February 24, 2003.
The Center appointed Henry Olsson as the sole Panelist in this matter on March 3, 2003. 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. The projected decision date was March 17, 2003.
4. Factual Background
According to the Complaint the Royal Bank of Scotland Group (RBS) was founded in 1727, and is one of Europe’s leading financial services groups. It is now the seventh largest company in the United Kingdom, the second largest bank in that country and in Europe and the sixth in the world.
The Royal Bank of Scotland Group is a public limited company incorporated under the laws of the United Kingdom. The other Complainant, National Westminster Bank plc, A/K/A NatWest Bank, is also a public limited company incorporated under the laws of England and Wales. It is an autonomous publicly-held company still trading under the NATWEST, NATIONAL WESTMINSTER and NATIONAL WESTMINSTER BANK marks but is now a fully-owned subsidiary of the Royal Bank of Scotland Group. According to the Complaint some of the marks are still owned by NatWest NatWest Bank but many have now been assigned to the Royal Bank of Scotland in accordance with the centralised trademark holding policies.
The Royal Bank of Scotland operates a full range of banking services under the Royal Royal Bank of Scotland, National Westminster and NatWest brands but the Group includes also a number of other major financial service brands.
According to the Complaint, the Royal Bank of Scotland Group enjoys a leading position in the United Kingdom in a number of different areas, such as corporate and commercial banking, offshore and private banking.
Nothing is known about Respondents’ activities in addition to what is stated in the Complaint and briefly referred to below.
5. Parties’ Contentions
Complainants first mention that they sought and obtained protection both by way of company registrations and, since 1973, trademark protection of various brands. The Complaint is based in particular on the marks NATIONAL WESTMINSTER, registered in the United Kingdom in 1990 for Class 36, and NATIONAL NATIONAL WESTMINSTER BANK, (two registrations in 1986, in Classes 35 and 36 respectively). In the United States NATIONAL WESTMINSTER BANK was registered in 1990 in Class 36. Complainants have submitted trademark certificates to support their contentions in this respect.
In addition, Complainants allege that, even before they sought trademark protection, NatWest NatWest Bank used the notions NATIONAL WESTMINSTER and NATIONAL NATIONAL WESTMINSTER BANK in commerce in connection with banking and financial services so that the use of those names had become sufficiently distinctive for NatWest NatWest Bank to have acquired unregistered common law trademark rights in the names.
As regards Respondents’ different activities, Complainants first state that Respondents registered the domain names <nationalwestminster.info>, <nationalwestminster.biz> and <nationalwestminsterbank.com> on April 19, 2002, and the domain names <natwestbank.org> and <nationalwestminster.org> on May 22, 2002. According to the Complaint, at some time after the registration all the five domain names were resolved to a website featuring the front page (in fact the only page) "nationalwestminsterbank.com." It stated on the top and the bottom: "This is not an official NATWEST site". The text on the webpage said: "A Website for those victims who have suffered and had their lives destroyed as a result of the reprehensible behavior of Natwest, its executives, management and its "Associated Professionals." In Memory of those NATWEST victims who took their lives as a direct result of the reprehensible attitude of this atrocious Bank." The webpage furthermore stated. "E-mail Us with your comments and suggestions" and "Please Contact US about Your Case. We will not publish/release any information without Your Written Permission."
Complainants stress that those are highly damaging and unsubstantiated assertions against Complainants; their author gives no evidence to support them nor do the Respondents make any case for themselves nor any attempt whatsoever to set their side of the claims.
Complainants allege that they tried to contact the Registrant by telephone and mail but discovered that the telephone numbers and land addresses were false. When Complainants had not succeeded to have the contact details corrected through the Registrar, Complainants filed a Complaint relating to the three last-mentioned domain names but not the two that are at issue in this present case, the reason being that Complainants were not aware of those registrations. Sometime around September 23, 2002, Complainants’ representative became aware of those registrations and sought to amend the Complaint already filed, citing exceptional circumstances. The Panel in that case rejected, however, Complainants’ Supplemental Filing. The Complaint relating to the first three domain names was decided in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823 (December 3, 2002). The Complaint now filed thus relates to the remaining two domain names. Complainants plead that the present Complaint be decided by reference to the earlier decision and adopts the findings in that case.
Identity or Confusing Similarity
According to Complainants, the relevant part of both domain names is "nationalwestminster" and Complainants assert that the domain names are textually identical to the NATIONAL WESTMINSTER trademarks and are confusingly similar to the NATIONAL WESTMINSTER BANK trademarks. Furthermore, according to Complainants, the domain names are identical to Complainants’ common law rights in the NATIONAL WESTMINSTER name and, finally, that they are confusingly similar to Complainants’ common law rights in the name NATIONAL NATIONAL WESTMINSTER WESTMINSTER BANK.
Rights or Legitimate Interests
In this respect, Complainants first allege that at no time were Respondents known as NATIONAL WESTMINSTER or NATIONAL WESTMINSTER BANK and that Respondents never, whether as a business or as an individual, used the names or has been referred to or commonly known, under those, even as nicknames. Furthermore, Respondents have no trademark rights or any other rights in the NATIONAL NATIONAL WESTMINSTER or NATIONAL WESTMINSTER BANK names, nor are Respondents licensees or other authorized users of any of Complainants’ marks.
Complainants further allege that before any notice of the dispute to the domain name Registrant, there was no evidence of Respondents’ use or demonstrable preparations to use the domain names or a name corresponding to the domain names in connection with any bona fide offering of goods or services. In fact, according to Complainants, the use that Respondents have made of the domain names is bad faith use and as such not legitimate use (as found in WIPO Case No. D2002-0823).
Complainants add that Respondents are not making a legitimate non-commercial or fair use of the domain names without commercial gain misleadingly to divert consumers or to tarnish the trademarks or service marks at issue. Complainants submit that the use made by Respondents is clearly with intention to tarnish the trademark of Complainants.
In this context Complainants mention the possibility that Respondents could use the free speech or fair comment defense but reject this for three main reasons. The first one is that the names at issue are all registered trademarks and, despite the disclaimer on the website, Respondents are using the domain names in such a way that Complainants’ reputation and goodwill will suffer whereas Respondents have not made their own case or substantiated any claims made on the website. Secondly, according to Complainants, Respondents would not need five domain names to exercise any rights to free speech that it might have; for that purpose one domain name alone that did not use Complainants’ trademark would suffice. Thirdly, Respondents’ use goes beyond parody or criticism and in the absence of any attempt by Respondents to substantiate their case, the only conclusion can be that such statements as contained in the website are defamatory to Complainants; that defamation and damage to Complainants’ goodwill is occurring via use of Complainants’ registered trademarks. In conclusion, Complainants submit that Respondents fail to demonstrate that their use of the domain names is legitimate by their failure to allege any basis for their criticisms on the website and that such conduct is quasi-commercial as it can only result in tarnishing Complainants’ reputation and in a disruption of their business with possible commercial losses.
Registration and Use in Bad Faith
Complainants first assert that Respondents were well aware of Complainants and that Respondents’ intention at the time of registration of the domain names at issue in this case was to cause damage to Complainants through the use of websites whose domain names are identical with Complainants’ marks for the dissemination of harmful information aiming at tarnishing Complainants’ reputation and Complainants’ marks.
Complainants furthermore assert that Respondents’ pattern of behavior in constantly providing false address information for the purposes of domain name registration is in breach of Respondents’ warranty under paragraph 2(a) of the Policy. Complainants submit that this was done in an attempt to evade detection by Complainants as long as possible and thus prolong the period during which the damaging material would remain on the website. According to Complainants such behavior is consistent with cybersquatting and demonstrates bad faith registration and use.
Moreover, according to Complainants, Respondents registered the domain names in order to prevent Complainants from reflecting their trademarks in a corresponding domain name. Also, the registration of five domain names demonstrates a pattern of such behavior. Complainants mention in this context that Respondents "pounced" on the <nationalwestminsterbank.com> domain name immediately after it became available for registration due to an omission by Complainants to renew the domain name upon expiration.
In relation to the issue of free speech, Complainants argue that at issue in this case is the choice and the number of domain names used. Complainants refer to Compagnie de Saint Gobain v. com-union Corp, WIPO Case No. D2000-0020 (March 14, 2000), where the Panel, while recognizing the freedom of speech and expression, found bad faith registration and use to exist because respondent "knowingly chose a domain name which is identical and limited to the trade mark of Complainant" when respondent "could have chosen a name more adequately reflecting both the object and independent nature of its site, as evidenced to-day in thousands of domain names."
Finally, Complainants add that they cannot make the claim that Respondents, being competitors, have registered the domain names in order to disrupt Complainants’ business as Respondents have chosen to conceal its true identity and Complainants consequently have no way of knowing whether they are competitors or not. The claim is, however, made that Respondents’ true purpose in registering the domain names is "to disrupt Complainants’ business by publishing malicious, damaging, untruthful and unsupported information aimed at tarnishing Complainants’ trademarks and destroying their goodwill and reputation among their customers and amongst the general public who will surely access the website." This constitutes, in the view of Complainants, bad faith registration.
In accordance with pParagraph 4(i) of the Policy and for the reasons described, Complainants request the contested domain names to be transferred to Complainants.
Respondents did not reply to the Complainants’ contentions and are consequently in default.
6. Discussion and Findings
The Panel first notes that the Registrar Verification indicates "Alberto Alberto Rodriguez A&A A System Solutions" as the Registrant of the domain names. That Registrant is consequently the proper Respondent in this case against whom the legal effects of the decision are to be directed.
The Panel furthermore notes that the Notification of Complaint and Commencement of Administrative Proceeding was communicated to the addresses indicated above by post/courier (with enclosures) and by e-mail (without enclosures) to Alberto Rodriguez and to the administrative contacts and technical contacts as well as the contact details provided in the Complaint. Some of the delivery attempts failed but most of the e-mail communications were at least not returned. The Panel therefore concludes that all reasonable efforts have been made to communicate the Complaint to Respondent and that there is from this point of view no obstacle to considering the case.
Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
In the case of Default by a Party, paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case, no Response has been submitted and none of the contentions by Complainants have been contested, despite the opportunity given to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
From the Registrar Verification follows that the Policy is applicable in this case. Consequently, there is an obligation for Respondent to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain names at issue.
Paragraph 4(a) of the Policy directs that Complainant has to prove each of the following:
- that the domain name registered by Respondent is identical with, or confusingly similar to a trademark or a service mark in which Complainant has rights;
- that Respondent has no rights or legitimate interests in the domain name; and
- that the domain name has been registered and is being used in bad faith.
In the following parts of this Decision the Panel discusses each of those elements.
A. Identical or Confusingly Similar
In this respect, Complainants have, according to paragraph 4(a)(i) of the Policy, to prove that the domain names at issue are identical with, or confusingly similar to, a trademark or a service mark in which Complainants have rights.
The domain names at issue in this case are <nationalwestminster.info> and <nationalwestminster.biz>
Complainants have claimed that they have registered trademark rights in the United United Kingdom in the marks NATIONAL WESTMINSTER and NATIONAL NATIONAL WESTMINSTER BANK and, in addition, common law trademark rights in those marks even before registration was sought in 1986, and 1990 respectively. Complainants have submitted registration certificates relating to the registrations in the United United Kingdom and also to the registration in the United States of the mark NATIONAL WESTMINSTER BANK.
The Panel is satisfied that Complainants have registered trademark rights in those two marks and is also satisfied that the names NATIONAL WESTMINSTER and NATIONAL NATIONAL WESTMINSTER BANK have been used in connection with banking and financial services and have become sufficiently distinctive for NatWest Bank to have acquired common law trademark rights. Those marks are consequently to be considered, for the purposes of this case, as protected marks in accordance with Complainants’ claim.
Complainants assert that the relevant part of both domain names is "nationalwestminster" and that the domain names are textually identical to Complainants’ registered and common law trademark rights in the name NATIONAL NATIONAL WESTMINSTER and confusingly similar to the corresponding trademark rights in the mark NATIONAL WESTMINSTER BANK.
As regards the issue of identity or confusing similarity the Panel first notes that it has been found in many earlier panel decisions that the addition of a top-level domain does not change the likelihood of confusion with a trademark. The Panel agrees with that conclusion also for the purposes of this case. In addition, the Panel agrees with Complainants’ claims as regards the similarity between the trademarks and the domain names at issue. The Panel therefore finds it to be established that the domain names at issue are confusingly similar to Complainants’ trademarks. The fact that the trademarks are written in capital letters and the domain names are not does not change anything in this finding.
B. Rights or Legitimate Interests
In this respect, Complainants have, according to paragraph 4(a)(ii) of the Policy, to prove that Respondents have no rights or legitimate interests in the domain names at issue.
The Panel accepts Complainants’ allegations that Respondents are not known under, or have been using, whether as a business or as an individual, the notions NATIONAL NATIONAL WESTMINSTER or NATIONAL WESTMINSTER BANK, and that Respondents have no rights in those names neither as a licensee nor as an otherwise authorized user of Complainants’ marks. The Panel furthermore accepts that there is no evidence of Respondents’ use of, or demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services.
In relation to Complainants’ reasoning about the free speech and fair comment/fair use defenses, the Panel first notes that this defense has not been invoked by Respondents who have chosen not to comment on Complainants’ allegations. As regards this possible defense, the Panel attaches a particular importance to the fact that Respondents have established websites not only under the domain names at issue in this case but also under domain names at issue in an earlier case but that Respondents have not in any way substantiated the basis for their criticisms and comments on Complainants. The Panel can find no evidence of any legitimate non-commercial or fair use of the domain names.
These considerations lead the Panel to the conclusion that Respondents have no rights or legitimate interests in the domain names at issue.
C. Registered and Used in Bad Faith
In this respect, Complainants have, according to paragraph 4(a)(iii) of the Policy, to prove that the domain names have been registered and are being used in bad faith. Furthermore, paragraph 4(b) of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.
The Panel notes that Respondents must have been aware of Complainants at the time of the registration of the domain names at issue. In view of the use that Respondents have made of the domain names the Panel concludes that Respondents’ purpose has been to disseminate harmful information about Complainants in order to tarnish Complainants’ reputation and Complainants’ trademarks.
Complainants claim that Respondents’ pattern of behavior is to constantly provide false address information for the purpose of domain name registrations. The information available in the case and the absence of any observations from Respondents indicate that this could well be the case, and the Panel agrees with Complainants in the sense that this was probably done in an attempt to avoid detection as long as possible. The Panel considers that such changing of contact details and providing untrue information is itself an abuse of the registration process and can be considered as a use of the domain name in bad faith.
These considerations lead the Panel to the conclusion that Respondents’ registration and use of the domain names at issue amounts to registration and use in bad faith in the sense of the Policy. When coming to this conclusion the Panel also takes into account the fact that Respondents have used domain names confusingly similar to Complainants’ trademarks for a purpose that seems to have been to damage Complainants and their trademarks.
On the basis of these considerations, the Panel finds it to be established that the domain names at issue are confusingly similar to Complainants’ trademarks, that Respondents have no rights or legitimate interests in the domain names and that the domain names have been registered and are being used in bad faith. Complainants’ request for a transfer of the domain names shall consequently be approved.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <nationalwestminster.info> and <nationalwestminster.biz> be transferred to Complainants.
Dated: March 10, 2003