WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminister Bank Plc v. World Connection Web Works
Case No. D2012-2097
1. The Parties
Complainant is National Westminister Bank Plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is World Connect Web Works of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <natwesteurope.com> is registered with eNom (the “Registrar”).
3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2012. On October 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 Respondent of the Complaint, and the proceedings commenced on October 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 13, 2012.
The Center appointed Barbara A. Solomon as the Sole Panelist in this matter on November 28, 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
Complainant is a public limited company founded in 1968 as a result of a merger between National Provincial Bank (est. 1833) and Westminister (est. 1836)(Annex 1 to the Complaint). The Complainant offers financial services worldwide under the trademark NATWEST. According to the Complaint, Complainant has been using the NATWEST mark in connection with its financial services since prior to the registration of the disputed domain name. The NATWEST trademark is registered in dozens of countries including Canada. Complainant’s registrations for NATWEST date back to the 1970s. Three Canadian registrations for NATWEST or marks that include NATWEST, issued prior to the registration of the disputed domain name (Annex 7a and 7b to the Complaint). Complainant also has been doing business under the NATWEST mark on the Internet at the websites “www.natwest.com” and “www.natwestonline.com” prior to the registration of the disputed domain name.
Respondent registered the disputed domain name <natwesteurope.com> on August 4, 2012. At some point in time the disputed domain name directed to a website designed to copy Complainant’s site (Annex 10 to the Complaint) and which appears to have been used for a phishing scam (Annex 12 to the Complaint). At the time of this decision, the disputed domain name reverted to a page hosted by Yahoo! that contained sponsored links. Many of the sponsored links referred to Complainant or its banking services.
On August 7, 2012, Complainant sent a cease and desist letter to the Respondent requesting a voluntary transfer of the disputed domain name (Annex 11 to the Complaint). A follow up reminder was sent August 16, 2012 (Id.). Respondent did not offer any response to the letter, including providing any justification for registering the disputed domain name.
5. Parties’ Contentions
With respect to the specific elements that Complainant must prove under the Policy, Complainant makes the following claims:
1. Complainant alleges that it has trademark rights in the NATWEST mark by virtue of its use of the mark and its ownership of numerous registrations for the mark.
2. Complainant contends that the disputed domain name <natwesteurope.com> is confusingly similar to Complainant’s registered trademark NATWEST noting that the addition of the term “europe” to the NATWEST trademark does not dispel a connection between Complainant’s mark and the disputed domain name. Complainant further alleges that the addition of the term “europe” to Complainant’s registered trademark exacerbates confusion by strengthening the connection between the disputed domain name and Complainant.
3. Complainant contends that Respondent has no rights or legitimate interest with respect to the disputed domain name noting among other facts that Respondent does not own any registered marks or trade names containing the term NATWEST, Respondent has not made any legitimate use of the disputed domain name, Respondent is not commonly known by the disputed domain name, and Respondent is not affiliated with Complainant. Complainant further contends that Respondent has previously used the disputed domain name to pass itself off as Complainant (Annex 10 to the Complaint) for purposes of phishing for personal data from Internet users.
4. Complainant contends that the disputed domain name was registered and is being used in bad faith. As evidence of bad faith, Complainant points to the prior use of the disputed domain name to engage in a phishing scam (Annexes 10, 12 to the Complaint), the failure to respond to Complainant’s demand letter, the fame of Complainant’s mark, and the impossibility of any good faith use of the disputed domain name.
Respondent did not reply to Complainant’s contentions. Accordingly, the Panel must decide the dispute based on the Complaint. All factual allegations are accepted as true, and the Panel may draw appropriate inferences from Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As a preliminary matter, the Panel finds that Complainant has established rights in the mark NATWEST sufficient for these proceedings. Complainant has provided numerous registrations on the United States Principal Register for the NATWEST mark. Given Complainant’s trademark registrations which precede the date on which the disputed domain name was registered, Complainant has established rights in its NATWEST mark pursuant to the Policy, paragraph 4(a)(i). Crunch IP Holdings, LLC v. Paydues Inc., WIPO Case No. D2012-1033.
The disputed domain name <natwesteurope.com> incorporates in its entirety the NATWEST trademark of Complainant. Respondent has added to Complainant’s mark the geographical designation “Europe.” It is well established that adding a geographic term to another’s trademark does not avoid a finding of confusing similarity. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), the addition of “geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.” See, e.g. Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 (addition of “Turkey” to PLAYBOY mark created a confusingly similar domain name); KMPG International v. H S Youn, WIPO Case No. D2008-0037 (noting that the domain name <kpmgeurope.com> is confusingly similar to Complainant’s KPMG trademark and that the addition of the geographical term “Europe” does not prevent a finding of confusing similarity). Moreover, given that Complainant is based and does business in Europe, the addition of the geographic modifier “Europe” in Complainant’s very mark is likely to only further the association between the disputed domain name and Complainant. See Revlon Consumer Products Corporation v. Ye Genrong et al., WIPO Case No. D2010-1586 (noting that the addition of the geographic designation “Europe” to Complainant’s trademark REVLON could add to possible confusion especially when the Complainant has subsidiaries or businesses in these geographic areas).
The Panel therefore finds that Complainant has proven the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although Respondent has defaulted, the burden of proof remains on Complainant to establish the absence of rights or legitimate interests in the disputed domain name.
To the extent that Respondent had been using the disputed domain name to engage in phishing as alleged by Complainant (and unrefuted by Respondent) this demonstrates Respondent’s lack of any legitimate rights in or to the disputed domain name. Apple Computer, Inc. v. PrivacyProtect.org / Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-0879 (noting that a phishing website cannot constitute a bona fide use of a domain name under the Policy).
As of the date the matter was forwarded to the Panel such phishing use had ceased. Looking at what appears when one types in the disputed domain name it is not clear what the true purpose is for Respondent’s registration of the disputed domain name. While the Panel could engage in speculation, the question is not necessarily what Respondent’s intent is but whether or not the evidence submitted in the proceeding shows the absence of rights or a legitimate interest in the disputed domain name. According to the Complaint, Respondent has no connection with Complainant; Respondent has not been commonly known by the disputed domain name; and Respondent has not been making a legitimate non-commercial or fair use of the disputed domain name.
By failing to respond, Respondent does not challenge any of these assertions. Respondent also has not put in any facts or evidence to show that it is generally known by the disputed domain name or that it has acquired trademark or service mark rights in the disputed domain name. In addition, the disputed domain name was registered years after Complainant’s NATWEST trademark had been adopted and extensively used including in Canada. Complainant has made out a prima facie case that Respondent lacks legitimate interests in the disputed domain name shifting the burden of production to Respondent. In the absence of any evidence on the part of Respondent showing that it was using or intends to use the disputed domain name with a bona fide offering of goods or services, that it has been known by the disputed domain name, or that it is making legitimate non-commercial or fair use of the disputed domain name, the Panel finds that Respondent has not established any rights or a legitimate interest in the disputed domain name. See Dr. Ing h.c.F. Porsche AG v. Stuart McKay Prestige Cars et al., WIPO Case No. D2012-0394. Accordingly, the Complainant is deemed to have satisfied this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth various circumstances that can give rise to and otherwise constitute evidence of registration and use of a domain name in bad faith. Although the Policy identifies activities that constitute bad faith use and registration, the list set forth in paragraph 4(b) of the Policy is not exhaustive. United Feature Syndicate, Inc. v. Takeshi Komaba, WIPO Case No. D2002-0901.
Complainant has submitted evidence that its NATWEST mark is widely known in connection with financial services. At the time Respondent registered the disputed domain name, Complainant had been using the NATWEST mark for more than three decades, and had obtained registrations in dozens of countries including Canada.
There is some question as to whether Respondent itself is actively using the disputed domain name in connection with an ad farm and whether Respondent, or anyone else, is deriving revenue or benefit from the sponsored links appearing on the website accessed from the disputed domain name. If it is, then this would establish that Respondent is exploiting Complainant’s trademark in violation of the Policy and is seeking to benefit from the NATWEST mark in violation of the Policy. See Volvo Trademark Holding AB v. Unasi, WIPO Case No. D2005-0556.
Assuming that the disputed domain name currently does not resolve to an active website or is not being used or exploited by Respondent, that does not effect the outcome of this matter. As was made clear in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, inaction fits within the concept of bad faith use of a domain name. Indeed, the consensus view as set forth in the WIPO Overview 2.0 states that the lack of any active use of a domain name including any active attempt to sell or contact the trademark holder does not prevent a finding of bad faith. Circumstances indicative of bad faith include the Complainant having a well-known trademark and no response being provided to the Complaint, both of which are found here. Further, whether or not Respondent authorized use, there is no question that the disputed domain name resolves, at the time of this decision, to what effectively is a parking website which presents visitors with lists of sponsored links that redirect them to other websites of a commercial nature. It would defy logic to think that a purchased and registered disputed domain name was being hosted as a parking page website with sponsored links without some purpose which could include a financial benefit. See Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. Further, as evidenced by the email from DHL to the Center dated October 29, 2012, the street address and phone number provided by Respondent are false. This too contributes to the circumstantial evidence of bad faith. Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886 (finding bad faith based on facts that the domain name had fleetingly been used for domain name parking and that Respondent gave false contact information). Other evidence of bad faith includes the failure to respond to Complainant’s demand letter, its failure to provide any plausible explanation for registering the disputed domain name, and most significant of all the original use of the disputed domain name for a phishing website. Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO DLC2009-0001. The totality of the evidence is sufficient to allow the Panel to find that the disputed domain name has been registered and used in bad faith.
Based on the specific circumstances presented in this case, the Panel finds that the Complainant has established the requirements of 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 <natwesteurope.com> be transferred to the Complainant.
Barbara A. Solomon
Date: December 6, 2012