WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc v. Hans Crews Jr., N/A
Case No. D2012-2365
1. The Parties
The Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT DBS AB, Sweden.
The Respondent is Hans Crews Jr., N/A of Teaneck, New Jersey, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <nat-west.net> is registered with PDR 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 November 29, 2012. On November 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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 December 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed John Terry as the sole panelist in this matter on January 18, 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
The Complainant is a public limited company incorporated in London and is the proprietor of the trademark NATWEST which, according to the certified Complaint, is stated to be a famous trademark. This statement is supported by Annexes which attest to extensive registrations and extensive international use over many years prior to registration of the disputed domain name.
In 1968 National Provincial Bank and Westminster Bank merged to be known as National Westminster Bank and began trading under this name in 1970.
The Complainant currently has 7.5 million personal customers and 850,000 small business accounts. In addition to an international portfolio of registered trademarks for the mark NATWEST, the Complainant operates Internet websites including “www.natwest.com“ and “www.natwest.co.uk”.
The Complaint attests to substantial inherent and acquired distinctiveness in the trademark NATWEST and to the significance of this trademark in the international community such that the trademark has become well-known or famous to the extent that the Complainant asserts rights to prevent any use of the trademark or a confusingly similar reproduction in connection with any products or services and thus protection for the trademark NATWEST is stated to go beyond goods and services related to the financial industry.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the registered trademark NATWEST. The disputed domain name has a difference by virtue of the insertion of a hyphen between the prefix “NAT” and the suffix “WEST”. The Complainant relies on long-established UDRP decisions that confusing similarity occurs when a well-known trademark is associated with different kinds of generic prefixes or suffixes or punctuation. Furthermore, the addition of the generic top-level domain “.net" does not distinguish the disputed domain name from Complainant's trademark.
The Complaint states that the Respondent has not obtained any registered trademarks corresponding to the disputed domain name and there has been no use by the Respondent in any other way that would give him any rights or legitimate interests. Furthermore, the Complaint contends that the Respondent is not commonly known by the disputed domain name.
Moreover, the Complaint contends that the mere registration of a domain name does not give the owner a right or legitimate interest in respect of the domain name.
The Complaint significantly asserts that the Respondent has used the disputed domain name to pass itself off as the Complainant in order to defraud the Complainant's customers through a fraudulent website identical to that of the Complainant and the Respondent has used the disputed domain name for obtaining financial information on Complainant's customers in an attempt to conduct fraud and this is neither a bona fide offering of goods and services nor legitimate noncommercial or fair use pursuant to the Policy.
The disputed domain name was registered October 22, 2012. On October 23, 2012, the Complainant tried to contact the Respondent by email with a cease-and-desist letter. No response was received. The Complainant relies on such prior UDRP decisions as News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 for the proposition that failure to respond to such a cease-and-desist letter is relevant to a finding of bad faith.
The Complaint asserts that the Respondent has used the disputed domain name to deceive the Complainant's customers and to manipulate them into divulging sensitive financial information and thus Respondent’s use of the disputed domain name constitutes bad faith registration and use.
The Complainant notes that the website of the Respondent is currently inactive but contends that such passive holding could still constitute an act of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is satisfied that the Complainant and the Center have taken all possible steps to serve on the Respondent copies all relevant documents and given the Respondent a reasonable opportunity to respond under the Policy and the Rules. Despite this, there has been no Response. The Panel finds that the Complaint can proceed based on the certified content of the Complaint and documents submitted in accordance with the Policy and the Rules.
The Rules require that the Panel decide a complaint on the basis of the documents submitted, and the Complainant must establish each element of paragraph 4(a) of the Policy, 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 in respect of 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
The disputed domain name consists of the Complainant’s NATWEST mark, and merely adds a hyphen between the “nat”and “west”elements, with the addition of the gTLD “.net”. The Panel accepts the contentions in the Complaint and finds that the disputed domain name is confusingly similar to a widely-known trademark in which the Complainant has rights and thus the requirements under the Policy paragraph 4(a)(i) are met.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case which has not been rebuted by the Respondent that it lacks rights or legitimate interests in the disputed domain name, and provided evidence that it has been using the disputed domain name in fraudulent schemes. The Panel accordingly finds that the Respondent has had no rights or legitimate interests in respect of the disputed domain name and accepts the contentions of the Complainant, and thus the requirements to establish no rights or legitimate interests are met in terms of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel accepts that the Complainant as established such extensive trademark usage on an international basis prior to the date of registration of the disputed domain name namely October 22, 2012 that the registration of the Respondent and the limited but fraudulent usage thereof by the Respondent clearly establishes the disputed domain name was registered and is being used in bad faith. The Panel finds this to be the case notwithstanding apparently current inactivity of the website associated with the disputed domain name and follows prior decisions which have found such a passive holding is in bad faith where any actual use would constitute passing off; see for example Koç Holding A.S. v. KEEP B.T., WIPO Case No. D2009-0938 where the Panel stated “There is no evidence or suggestion that the Respondent has any intention of using the domain name for any purpose or legitimate activity consistent with good faith use”.
The Panel concludes that the requirements of paragraph 4(b)(iii) of the Policy are met.
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 <nat-west.net> be transferred to the Complainant.
Date: February 3, 2013