WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc v. Dr David Wainwright
Case No. D2012-1710
1. The Parties
The Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”), represented by Melbourne IT Digital Brand Services, U.K.
The Respondent is Dr David Wainwright of London U.K.
2. The Domain Name And Registrar
The disputed domain name <natwest-investment.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 26, 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 28, 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 for the disputed domain name.
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 August 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2012.
The Center appointed David H. Tatham as the sole panelist in this matter on October 3, 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 disputed domain name was registered with the Registrar on February 15, 2012.
The Complainant is a long and well established company offering its financial services on a worldwide scale. It was created in 1968 as the result of a merger between two banks – National Provincial Bank which had been established since 1833, and Westminster Bank which had been established since 1836. However both banks can trace their history through a lineage of prestigious constituents dating back to the 1650s. The Complainant was incorporated as a public limited company in the U.K. in 1982 and was acquired by The Royal Bank of Scotland Group in 2000.
The Complainant is the owner of an international portfolio of registered trademarks for the mark NATWEST, as well as a number of domain names which include this mark, and copies of lengthy lists of both trademarks and domain names were annexed to the Complaint.
The Respondent, an individual, failed to respond to the Complaint, nor did he respond to a cease-and-desist letter from the Complainant, so nothing is known about him other than his website at the disputed domain name.
5. Parties’ Contentions
The Complainant offers its financial services worldwide under the trademark NATWEST and states that it has spent a significant sum of money promoting and developing this mark. It owns numerous registrations of the NATWEST trademark, copies of which were annexed to the Complaint.
The Complainant operates websites at its domain names <natwest.com> and <natwest.co.uk>. However the Complainant also annexed a list of the many domain names which it owns. The Complainant also referred to five domain name disputes which it had won in relation to this mark.
The Complainant further contended that its trademark NATWEST is a well-known mark and therefore it has the right, under the Paris Convention and the TRIPS Agreement, to prevent any use of it in connection with any goods or services.
The Complainant contends that the dominant part of the disputed domain name is the word “Natwest” and that this is identical to its trademark. Furthermore, the suffix “investment” and the TLD “.com” in the disputed domain name have no impact upon the overall impression of the dominant name NATWEST which, it maintains, would be instantly recognizable as its world famous mark. The likelihood of confusion includes an obvious association with the Complainant’s trademark NATWEST and there is a considerable risk that the general public will believe that the disputed domain name either belongs to the Complainant, or that there is a commercial relationship between the Respondent and the Complainant. An Internet user seeing the disputed domain name is likely to mistake it for a name related to the Complainant and this is compounded by the fact that the Complainant is a major company within the banking and investment industry, so that coupling the word “investment” with its NATWEST trademark only strengthens this impression.
Under the heading of rights or legitimate interests, the Complainant contends that it has not found that the Respondent has any trademarks corresponding to the disputed domain name or anything to suggest that it has been using the word “Natwest” in any way that could confer legitimate rights in the name.
The Complainant maintains, furthermore, that the Respondent has used the disputed domain name to pass itself off as the Complainant and to thereby defraud the Complainant’s customers. In fact, the Complainant accuses the Respondent of using the disputed domain name in order to “phish” for financial information which, it alleges, is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use pursuant to the Policy.
In connection with bad faith, the Complainant contends that the disputed domain name must have been registered only because of the considerable value and goodwill of its trademark NATWEST and because of its own substantial and widespread reputation throughout the world in the financial or investment industry. In the opinion of the Complainant, this constitutes bad faith.
The Complainant further contends that the Respondent has been using the disputed domain name to deceive its customers and to manipulate them into divulging sensitive financial information. This also constitutes bad faith.
Also, the Complainant states that it has been held, for example, that the passive holding of an inactive website could constitute bad faith. There is no suggestion that the Respondent had any intention of making any legitimate use of the disputed domain name, or that there is any conceivable good faith use of it.
The Complainant states that it attempted to contact the Respondent by writing a cease-and-desist letter to ask for the cancellation of the disputed domain name. This was not replied to and, despite sending reminders, there was still no response of any kind from the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(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.
Paragraph 5(b)(i) of the Rules specifies that a respondent may “respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name[.]”
In this case, the Center forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has thereby been given an opportunity to present his case, but he has failed to do so.
Paragraph 14(b) of the Rules specifies that, in the event of a default, “…the Panel shall draw such inferences therefrom as it considers appropriate.” For example, the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443, stated that “[s]ince the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this present proceeding, since the Respondent has chosen not to submit a Response, his default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the Complainant’s assertions, and to take its Decision on the basis of the statements and documents before it, always in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable.
A. Identical or Confusingly Similar
The Complainant claims to have numerous registrations of the trademark NATWEST either alone or in combination with other terms. It supplied details of over 300 of these. The earliest of which is U.K. Registration No. 1,021,601 dated December 3, 1973, for goods in Class 16.
It is by now well established that, when comparing a disputed domain name with a trademark, a gTLD such as – in this case – “.com” should be disregarded. See, for example Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429, in which the panel found that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. Therefore, the comparison here is between the trademark NATWEST and the phrase “natwest-investment”.
The Complainant’s trademark NATWEST is extremely well-known throughout the world and, not surprisingly, it has attracted a number of attempts by cybersquatters to incorporate it into various domain names and the Complainant referred to several cases, all of which were decided by UDRP panels in its favour.
In the present case, the disputed domain name has merely added the generic word “investment” as a suffix to the trademark NATWEST and there is little doubt that the average Internet user would assume that the term “natwest-investment” referred to the Complainant and that the disputed domain name belonged to the Complainant.
In Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033, it was held that “[i]t is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion.” It was also held in Merrell Pharmaceuticals Inv., Aventis Pharma SA v. Filips Kostins, WIPO Case No. D2004-0943 that “[t]he Domain Name is confusingly similar to the trademark ALLEGRA, as the prefixes “buy” and “generic” are generic terms, which do not influence significantly the overall impression of the Domain Name which is dominated by the word ALLEGRA.” This Panel has also decided a number of similar cases in favour of the Complainant. See, for example, Wacoal Corp., Wacoal America Inc. v. Uri Shevchenko, WIPO Case No. D2010-1587; F. Hoffmann-La Roche AG v. Contactprivacy.com/Mike Kazaros, WIPO Case No. D2010-2212; F. Hoffmann-La Roche v. Hristo Ibouchev, WIPO Case No. D2010-2259; Johnson & Johnson v. Ryan Rupke, WIPO Case No. D2011-1196; Barclays Bank PLC v. Bar WIPO Case No. D2011-1240; E. Remy Martin & Co v. Giammario Villa, WIPO Case No. D2012-0735.
In these circumstances, and in the light of the above-mentioned cases, the Panel has little hesitation in finding that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii), namely that the Respondent has no rights or legitimate interests in the disputed domain name, and it is well established that once a complainant has made out a prima facie case that a respondent has no rights or legitimate interests in a domain name, then the burden shifts to the Respondent to prove otherwise. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA 741828, in which it was held that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in a disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.
In the present case, the Respondent has chosen not to file anything in his defence despite the burden and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using the disputed domain name, he could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed in any other circumstance, are in his favour.
The only information available about the Respondent is the WhoIs information provided by the Registrar. This contains no evidence of any rights or legitimate interests of the Respondent in the disputed domain name, which, as found above, is confusingly similar to the Complainant’s well-known name and trademark NATWEST. There is also the website at the disputed domain name, but this makes no mention of the Respondent but it gives every appearance of being a genuine NatWest website. It is headed with the Complainant’s logo and name and there are pages for “Personal Banking”, “Private Banking”, “Business Banking”, and “Commercial Banking”. It is illustrated with the smiling face of a lady wearing the Complainant’s livery and has sections for online banking and credit cards.
The Respondent makes no claims for having rights or legitimate interests in respect of the disputed domain name, and provides no explanation whatsoever for its registration and use.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, so that paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which are evidence that the Respondent has registered and is using the disputed domain name in bad faith. In this case, the Panel believes that the Respondent is in contravention of two of the provisions under paragraph 4(b) of the Policy.
The registration of the disputed domain names does appear to have been made “primarily for the purpose of disrupting” the Complainant’s business and it is, in this Panel’s opinion, an intentional attempt “to attract, for commercial gain, Internet users to” the Respondent’s website. These fall squarely within paragraphs 4(b)(iii) and (iv) of the Policy.
Additionally, the Respondent must have been aware of the Complainant’s name and trademark at the time of registration of the disputed domain name. Not only is the name NATWEST known and recognised throughout the world, but the Respondent’s address appears to be the same street on which the Complainant is located. The Panel finds that this cannot be a coincidence.
This suggests opportunistic bad faith on the part of the Respondent. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the word “pokémon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith. See also BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because of the widespread and long-standing advertising and marketing of goods and services under the trademarks in question, because of the inclusion of the entire trademark in the disputed domain name, and because of the similarity of products implied by addition of the “telecommunications services” suffix, all of which suggest a knowledge of the complainant’s rights in the trademarks.
In addition, the Complainant accuses the Respondent of “phishing”. This is the practice of sending an email to a user falsely claiming to be and established legitimate enterprise, in an attempt to scam the unsuspecting user into surrendering private information such as user names, passwords, and credit card details. However, very little evidence of this was filed by the Complainant.
Once again it is worth pointing out that the Respondent has filed no response so it has not attempted to rebut the Complainant’s arguments on this point.
The Panel concludes that paragraph 4(a)(iii) has been satisfied.
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 <natwest-investment.com> be transferred to the Complainant.
David H. Tatham
Dated: October 16, 2012