World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Westminster Bank plc v. natwestcare / Domains By Proxy, LLC., DomainsByProxy.com

Case No. D2012-1739

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 Digital Brand Services, United Kingdom.

The Respondent is natwestcare, Brooklyn, New York, United States of America / Domains By Proxy, LLC, DomainsByProxy.com, Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <natwestcare.com> is registered with Wild West Domains, LLC (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 30, 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.

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 September 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2012.

The Center appointed Anna Carabelli as the sole panelist in this matter on October 10, 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) (see 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 (see annex 7 to the Complaint).

The Complainant also owns various domain names, including <natwest.com> incorporating the NATWEST trademark and pointing to the Complainant’s official website (annex 8 to the Complaint).

The Respondent registered the disputed domain name <natwestcare.com> on July 22, 2011.

5. Parties’ Contentions

A. Complainant

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 “care” and of the generic TLD “.com” does not eliminate the similarity.

In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed 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 disputed 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 directs Internet users to a website related to the Complainant’s business and offering for private banking manager service. The Respondent is using 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.

B. Respondent

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 disputed 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. On the other hand the addition of the generic term “care” 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; Sanofi- 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 notices that the term “care” is plainly descriptive and generic, particularly if used, like in the case in hand, for a website that functions as a private banking manager service (Deutsche Telekom AG v. Timmy Comeau, WIPO Case No. D 2003-0377; Casio Computer Co v. Jongchan kim, WIPO Case No. D2003-0400); on the other hand, the above word 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 “.com” has no legal significance when comparing the disputed domain name and the Complainant's trademark, the Panel finds that the Complainant has established the requirements of paragraph 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. This Panel notes that the Respondent offer NATWEST branded private banking manager service on the website at the disputed domain name. This Panel further notes that the website does not disclose the Respondent’s relationship with the Complainant. In any case, in this Panel view without express authority of the relevant trademark holder, a right to resell or distribute that trademark holders products does not create a right to use a domain name that wholly incorporates the relevant trademark.

The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned under paragraph 4(c) of the Policy applies. As decide in WIPO UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (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).

Because the Respondent failed to submit a response to the Complaint, and given that the allegations of the Complainant prima facie do not raise substantial doubts, the Panel accepts as true all allegations set forth in the Complaint and holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Accordingly the Panel finds that the Complainant has established the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has provided substantial evidence that its NATWEST mark is widely known in connection with financial services. The reputation of the NATWEST mark has also been established in previous WIPO UDRP decision 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 directs Internet users to a website related to the Complainant’s activity, the Panel finds that the Respondent was fully aware of the Complainant’s trade mark at the time it registered the disputed domain name. Such fact shows 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. 2010-0936; Hermes International SCA v. Cui Zhenhua, WIPO Case No. D2010-1743).

The evidence shows that the website at the disputed domain name is identical to the Complainant’s website and is being used to offer NATWEST branded private banking manager service.

The Panel finds that by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Accordingly the Panel finds that the Complainant has established the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <natwestcare.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Dated: October 24, 2012

 

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