WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Westminster Bank plc. v. Chengbin Liu

Case No. D2012-1738

1. The Parties

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

The Respondent is Chengbin Liu, ShanXi, China.

2. The Domain Name and Registrar

The disputed domain name <natwst.com> is registered with Hangzhou E-Business Services Co., Ltd. (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 29, 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.

On August 29, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On August 29, the Respondent requested that Chinese be the language of proceeding. On August 30, 2012, the Complainant confirmed its request that English be the language of the proceeding.

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 proceeding commenced on September 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2012. An informal email Response was filed with the Center on September 23, 2012.

The Center appointed Sebastian M.W. Hughes 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

A. Complainant

The Complainant is a company incorporated in the United Kingdom and the owner of registrations in numerous jurisdictions worldwide for the trade mark NATWEST (the “Trade Mark”), the earliest (United Kingdom) registration dating from 1973. The Trade Mark is a well-known trade mark in the financial services industry.

B. Respondent

The Respondent is an individual based in China.

C. The Disputed Domain Name

The disputed domain name was registered on January 22, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The Complainant is one of the United Kingdom’s most well-known banks and has been trading under the Trade Mark in the United Kingdom since 1970. The Complainant offers its financial services worldwide under the Trade Mark and has spent a significant amount of money promoting and developing the Trade Mark. The Complainant currently has 7.5 million personal customers and 850,000 small business accounts.

The Complainant owns numerous domain names comprising the Trade Mark and operates several websites linked to its domain names, including, for example “www.natwest.com” and “www.natwest.co.uk”.

The disputed domain name is confusingly similar to the Trade Mark. It contains a misspelling of the Trade Mark. The only difference between the disputed domain name and the Trade Mark is that the disputed domain name is missing the letter “e” between the letters “w” and “s”. Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the Trade Mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Complainant is not making a legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name was until November 2011 linked to a “phishing” website which closely resembled the Complainant’s official websites and was set up in order to “phish” for financial information in order to defraud the Complainant’s customers (the “Website”). The Website features prominently the Trade Mark.

After the Complainant was able to have the Website shut down, the Complainant’s representatives wrote to the Respondent in November 2011 asking for immediate transfer of the disputed domain name. The Respondent responded that the Respondent was merely an agent of the real owner of the disputed domain name. To date the Respondent has refused to transfer the disputed domain name to the Complainant.

For all of these reasons, the disputed domain name has been registered and used in bad faith.

B. Respondent

The Respondent made the following submissions in the Respondent’s informal email Response:

(1) The Respondent has not made any commercial use of the disputed domain name and has not infringed the Trade Mark;

(2) The Respondent registered the disputed domain name to be used to design a website in future, and in no way with the intention to sell the disputed domain name to the Complainant. At the time of receipt of the request to transfer the disputed domain name to the Complainant, the Respondent had already made it clear the Respondent had no intention of selling the disputed domain name;

(3) Although the Respondent does not have a trade mark in respect of the disputed domain name, the Respondent’s use of the disputed domain name is reasonable and the Respondent has never intended to cause any confusion with the Complainant’s website. The Respondent is willing to guarantee that the website it intends designing in future will not have any connection with the Complainant’s business at all.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese.

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding for the following reasons:

(1) It would be cumbersome and to the Complainant’s disadvantage to be forced to translate the Complaint and annexes into Chinese;

(2) The Respondent was able to respond to the Complainant’s representatives’ letter, which shows the Respondent understands English;

(3) The Website was an English language website.

The Respondent has requested that Chinese be the language of the proceeding for the following reasons:

(1) The Respondent has always lived in China;

(2) The Respondent is unable to submit a Response in English.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

It is clear from the content of the Website that the Respondent is proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047). The Website was a sophisticated website using flawless English. The Panel also notes the Respondent was able to submit an informal email Response, notwithstanding the fact the Complaint was filed and served in English.

The Panel therefore finds that sufficient evidence has been adduced by the Complainant to show that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Decision

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over 40 years.

This is a clear-cut case of “typosquatting”. The disputed domain name is identical with the Trade Mark, save that the letter “e” is missing. The Panel also notes the Website featured prominently the Trade Mark in its correct spelling. The likelihood of confusion between the disputed domain name and the Trade Mark is high.

The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, despite the bald assertions of the Respondent to the contrary, the disputed domain name has clearly been used in respect of the Website in order to defraud customers of the Complainant. This cannot possibly give rise to any rights or legitimate interests in the disputed domain name.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.”

The Panel has no hesitation in rejecting the submissions of the Respondent and in concluding the Respondent has registered the disputed domain and set up the Website as a phishing site in order to defraud the Complainant’s customers. There can be no question that the disputed domain name has been registered and used in bad faith.

Accordingly, the Panel finds that the third condition of paragraph 4(a) of the Policy has been satisfied.

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 disputed domain name <natwst.com> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: October 15, 2012