WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Westminster Bank plc v. Cole Melinda

Case No. D2013-0120

1. The Parties

Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.

Respondent is Cole Melinda of Stem, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nwolb-online.com> is registered with Online SAS (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 28, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On January 28, 2013, the Center also informed the parties that the Complaint had been submitted in English and that according to information received from the Registrar, the language of the Registration Agreement for the disputed domain name is French.

On the same date, the Complainant requested English to be the language of the proceeding and filed an amendment to the Complaint.

The Respondent did not reply to the Center’s notification.

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 February 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013.

On February 7, February 11 and February 27, 2013, the Respondent sent several informal email communications in English to the Center stating, among others, that she did not own a domain name. The Center informed the Respondent about the proceeding, insisting that the Center was not in a position to make a substantive assessment on the merits and that such claim would be forwarded to the Panel (once appointed) who would consider it and address the issue in its Decision.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 6, 2013. 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, National Westminster Bank plc, is a public company incorporated in London. Complainant offers financial services under its NATWEST trademark, in which Complainant holds registered rights in various jurisdictions.

The disputed domain name <nwolb-online.com> is registered by the Respondent. No website is linked to the disputed domain name. The disputed domain name used to refer to a webpage containing the NATWEST trademark and on which Internet users were invited to provide online banking details.

5. Parties’ Contentions

A. Complainant

Complainant considers the disputed domain names to be confusingly similar to its NATWEST trademark in which it claims to have rights. According to Complainant, “nwolb” is an abbreviation for “Natwest Online Bank” and the addition of a hyphen and the term “online” does not alleviate the confusing similarity between Complainant’s trademark and the disputed domain name. Complainant argues that Respondent has not constructed an active website under the disputed domain name and that Respondent has used the disputed domain name to make phishing attempts. Finally, Complainant considers that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not submit any formal Response. However, in its several informal email communications, Respondent contended that it did not own the disputed domain name.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.

Thus for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3. The disputed domain name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements in turn.

The Panel is aware that Cole Melinda has indicated to have been victim of identity theft. The Panel does not question such assertions in this regard but notes that the Registrar in this case has confirmed that Cole Melinda is the registrant of record of the disputed domain name. Therefore, in accordance with the Policy and the Rules, the Panel has to issue its decision in relation to the registrant of the disputed domain name, that is, Cole Melinda.

A. Language of the Proceedings

As the Complaint was not filed in the language of the Registration Agreement and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Panel is satisfied that both parties speak and write English. Respondent’s informal reply to the Complaint was in English, showing that Respondent understood the language of the Complaint. Therefore, the Panel finds that these elements show that Respondent has a sufficient understanding of English.

Accordingly, the use of the English language in the proceedings would not be prejudicial to the interests of Respondent, whereas it would be a disadvantage for Complainant to be forced to translate the Complaint. Therefore, the Panel decides to use the English language in the present proceedings (See e.g., The Dow Chemical Company v. Hwang Yiyi, WIPO Case No. D2008-1276, decision according to which, “where [a] respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even it is different to the language of the registration agreement”).

B. Identical or Confusingly Similar

Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the registered NATWEST trademark which it uses in connection to its financial services, it is clearly established that there is a trademark in which Complainant has rights.

Complainant argues that “nwolb” is an abbreviation of “Natwest Online Bank”. However, the Panel finds that Complainant fails to show that it has any (unregistered) trademark rights in the “nwolb” sign¹. According to the Panel, the “nwolb” sign cannot be seen as confusingly similar to the NATWEST trademark. Complainant’s NATWEST trademark and the “nwolb” sign only share i) two characters, the letter “n” and the letter “w” and ii) the front position of the letter “n”. According to the Panel, Complainant’s NATWEST trademark and the “nwolb” sign expression are clearly distinct from each other. As a result the disputed domain name does not contain any distinctive element in which the Complainant shows to have rights. (See Viacom International, Inc. (“Viacom”) v. na, Max Crossan and Max Fret, WIPO Case No. D2008-2003)

For these reasons, the Panel finds that Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy. Because this is an essential element of the claim, it is not necessary to resolve the remaining factual disputes on the other elements. See Pet Warehouse v. Pets.com, Inc., WIPO Case No. D2000-0105 (the panel needs not consider elements of legitimate interests or bad faith if complainant fails to establish enforceable rights in mark).

7. Decision

For the foregoing reasons, the Complaint is denied.

Flip Jan Claude Petillion
Sole Panelist
Date: March 20, 2013

¹ The Complainant submits that they operate a website at “www.nwolb.com”, and that the <nwolb.com> domain name was registered in 1998 by the Complainant. However, the Complainant does not invoke in the Complaint that they are using the term “nwolb” in a trademark sense. Hence, the Panel refrains making a finding in relation to this term.