WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc v. Christa Ehret
Case No. D2012-1706
1. The Parties
The Complainant is National Westminster Bank plc, London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Melbourne IT DBS Inc., Sweden.
The Respondent is Christa Ehret, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <natwestfinancegroup.net> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2012. On August 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2012, 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.
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 September 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2012.
The Center appointed Anna Carabelli as the sole panelist in this matter on October 11, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a public limited company founded in 1968 as a result of the merger between National Provincial Bank (est. 1833) and Westminster Bank (est. 1836) (annex 1 to the Complaint). The Complainant offers financial services worldwide under the trademark NATWEST.
The NATWEST trademark is protected as a registered trademark in many countries, including the United Kingdom and the United States of America; annexed to the Complaint are extracts of several trade mark registrations for NATWEST owned by the Complainant (annex 7 to the Complaint).
The Complainant also owns various domain names, including <natwest.com> and <natwest.co.uk> incorporating the NATWEST trademark and pointing to the Complainant’s official websites (annex 8 to the Complaint).
The disputed domain name <natwestcare.com> was registered on August 26, 2011.
On September 8, 2011 the Complainant sent a cease and desist letter to the Respondent and requested a voluntary transfer of the domain name (annex 11 to the Complaint) but the Respondent failed to respond.
At present, the disputed domain name does not resolve to a website, as the Panel has personally verified.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar with its registered trademark NATWEST since it incorporates the Complainant’s well-known mark in its entirety. The Complainant argues that the addition of the generic terms “finance group” and of the generic TLD “.net” does not eliminate the similarity.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the domain name. The Complainant has no relationship with the Respondent and has not authorized it to use the NATWEST mark. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods neither is making a legitimate noncommercial or fair use of the domain name.
The Complainant states that the disputed domain name was registered and is being used in bad faith. The Respondent cannot have ignored the existence of the Complainant when the disputed domain name was registered given the strong reputation and the distinctive character of the Complainant’s mark NATWEST worldwide and considering that the disputed domain name used to directed Internet users to a website that imitates the Complainant’s billing website and was used to fraudulently acquire personal information from the Complainant’s client. The Respondent used the disputed domain name with the intent to mislead consumers for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations for the mark NATWEST in several countries including the United States of America.
The disputed domain name is confusingly similar to the Complainant’s trademarks, as it entirely incorporates NATWEST. The addition of the generic terms “finance group” does not create a different trademark in which the respondent has right, and cannot be considered sufficient to avoid confusion between the domain name and the Complainant's trademark (Goyard St-Honoré v. Domain ID Shield Service / Arif Cahyono, WIPO Case No. D2012-1158; Sanof- Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464).
On this issue the Panel further notes that the terms “finance group” can likely be associated with the Complainant's business, therefore the combination with NATWEST clearly is confusing (Hermes International v. BAG12, Nick Kim, WIPO Case No. D2010-2290; Christian Dior Couture v. Carl Lim, WIPO Case No. D2008 1038; Hermes International SCA v. Cui Zhenhua WIPO Case No. D2010-1743; Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428).
In the light of the above and of the fact that the addition of the generic TLD “.net” may be disregarded when comparing the domain name and the Complainant's trademark, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark NATWEST.
The Complainant asserts that the Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name, particularly because the Respondent was using the disputed domain name to redirect Internet users to a website imitating the Complainant’s billing website in an attempt to pass itself as the Complainant and fraudulently acquire financial information from the Complainant’s customers.
The Complainant has established prima facie use that none of the three circumstances establishing rights and legitimate interests mentioned above applies. As stressed by many WIPO UDRP decisions, in such a case the burden shifts to the Respondent to rebut the prime facie case (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Respondent failed to submit an answer to the Complaint and did not exercise its right to respond.
The Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided evidence that its NATWEST mark is widely known in connection with financial services. The reputation of the NATWEST mark has been established in previous WIPO UDRP decisions; WIPO Case No. D2002-0994; The Royal Bank of Scotland Group plc, National Westminster Bank plcc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166.
Given the international reputation of the NATWEST mark and the fact that the disputed domain name directed Internet users to a website with content related to Complainant’s activity, the Panel finds that the Respondent must have been aware of the Complainant’s trade mark at the time it registered the disputed domain name. The Panel therefore concludes that the disputed domain name was registered in bad faith (see Revlon Consumer Product Corp v. Domain Manager, WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc., WIPO Case No. D2004-0071; Revlon Consumer Product Corp. v. Easy Weight Loss Info, WIPO Case No. D2010-0936; Hermes International SCA v. Cui Zhenhua, WIPO Case No. D2010-1743).
The evidence shows that the website at the disputed domain name used to imitate the Complainant’s billing website and was likely used to “phish” for financial information from the Complainant’s customers. By doing this the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likihood of confusion with the Complainant’s trademark NATWEST.
The fact that at present the disputed domain name does not resolve to a website and does not appear to be used online otherwise does not affect the grounds for the Complaint. According to Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which was followed by several consistent WIPO UDRP decisions, “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”.
The Panel finds that the Respondent’s present passive holding of the disputed domain name also meets the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent based on the following circumstances:
(i) the Complainant’s trademark is widely known and firmly associated with the Complainant;
(ii) the Respondent has failed to submit a Response to rebut the evidence submitted by the Complainant;
(iii) the use of the domain name previously made by the Respondent shows the Respondent’s intent to deceive the Complainant’s customers and attract, for commercial gain, Internet users to the Respondent’s website;
(iv) the Respondent has no rights or legitimate interests in the domain name, as established under paragraph 6(b) above and as a consequence, the Respondent could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate.
Accordingly, the Panel finds that the Complainant has established element 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <natwestfinancegroup.net> be transferred to the Complainant.
Dated: October 25, 2012