WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc. v. Ransome Johnson
Case No. D2013-0736
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 Ransome Johnson of Ghana.
2. The Domain Name and Registrar
The disputed domain name <natwestbankltd.com> is registered with LiquidNet Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2013. On April 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2013, 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 April 26, 2013. In accordance with the Rules, Paragraph 5(a), the due date for Response was May 16, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 21 2013.
The Center appointed John E. Kidd as the sole panelist in this matter on June 4, 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.
Having reviewed the communication records, the Panel finds that the Center has discharged its responsibilities under paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice of Respondent.” In the view of the Panel, the proper procedures have been followed and it may issue its decision based upon the documents submitted in accordance with the Policy, the Rules and Supplemental Rules without the benefit of a response from the Respondent.
In light of Respondent’s failure to submit a response, the Panel, pursuant to the Rules may draw such inference, including adverse inferences, as it considers appropriate. See William H. Cosby, Jr. v. Sterling Davenport, WIPO Case No. D2005-0756.
4. Factual Background
The following facts asserted by Complainant have not been challenged or otherwise contested by Respondent. The Panel has carefully reviewed Complainant’s evidence and by Respondent’s default, the evidence is held to be true.
National Westminster Bank plc (hereinafter referred to as Complainant), is public limited company incorporated in London and is the proprietor of the NATWEST trademark, and all other trademarks used in connection with the famous NATWEST brand.
In 1968 National Provincial Bank (est. 1833) and Westminster Bank (est. 1836) merged as National Westminster Bank, which began trading under the new name in 1970. Together these banks could trace their history back down the centuries through a lineage of prestigious constituents, dating back to the 1650s. It was incorporated as a public limited company in the United Kindgom in 1982, and acquired by The Royal Bank of Scotland Group in 2000.
Complainant offers its financial services worldwide under the mark NATWEST and has spent a significant amount of money promoting and developing this mark. Complainant currently has 7.5 million personal customers and 850,000 small business accounts. Complainant also owns an international portfolio of registered trademarks for the term NATWEST.
Complainant operates websites such as “www.natwest.com”, “www.natwestgroup.com” and “www.natwest.co.uk”. It is the strict policy of Complainant that all domain names containing the word NATWEST should be owned by Complainant.
5. Parties’ Contentions
The NATWEST mark is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark NATWEST is considered in the whole Community to be significant. According to the provisions of Article 6b of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for NATWEST goes far beyond the goods and services in the financial industry.
Complainant also contends that:
1. The disputed domain name is substantially identical and confusingly similar to a trademark or service mark in which Complainant has rights (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1);
2. Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2); and
3. The disputed domain name was registered and is being used in bad faith: (Policy, paragraphs 4(a) (iii), 4(b); Rules, paragraph 3(b) (ix) (3).
Respondent did not reply or otherwise object to Complainant’s contentions.
6. Discussion and Findings
A. The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The disputed domain name <natwestbankltd.com> (hereinafter referred to as the “Domain Name”) comprises the term “natwest”, which is identical to the registered trademark NATWEST, which has been registered by Complainant as trademarks and domain names in numerous countries all over the world.
The fame of the trademark has been confirmed in numerous previous UDRP decisions before WIPO and NAF. To name a few, The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, D2003-0166, National Westminster Bank plc v. Westbrom c/o Natalie, NAF Claim No. 1008190, National Westminster Banks plc v. Vivek Bhondve, NAF Claim No. 1241982, and National Westminster Bank plc v. john cars c/o city com, NAF Claim No.1247577.
The Domain Name combines the terms “natwest”, “bank” and the abbreviation “ltd”. The addition of a generic suffix to a trademark does not distinguish the Domain Name from the NATWEST mark. In the case, Porche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. See also Nutri/System IPHC Inc. v. Domain Listing Agent/Eric Hatcher, WIPO Case No. D2008-0425.
Furthermore, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the Domain Name from Complainant’s mark. This was stated in, among others, the case concerning the domain name <rbs-online-uk.com> in The Royal Bank of Scotland Group plc v. PrivacyProtect.org c/o Domain Admin, NAF Claim No. 1126039. (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2)).
Moreover, in the Panel’s opinion, anyone who sees the Domain Name is bound to mistake it for a name related to Complainant. The likelihood of confusion includes an obvious association with the trademark of Complainant. With reference to the reputation of the trademark NATWEST, it is the Panel’s further opinion that there is a considerable risk that the public will perceive Respondent’s Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation between Respondent and Complainant. The Panel accepts and agrees with Complainant’s assertion that considering that banking is Complainant’s main area of business, the addition of the suffix “bank” is rather fitted to strengthen the impression of association with Complainant.
Summarizing, the Panel finds that Complainant is the owner of the trademark NATWEST. The Domain Name in question is clearly confusingly similar to Complainant’s registered trademark NATWEST. The addition of a generic suffix does not detract from the overall impression of association with Complainant and the Domain Name must therefore be considered to be confusingly similar to Complainant’s trademark.
B. Respondent has no rights or legitimate interests in respect of the Domain Name
Respondent registered the Domain Name on April 1, 2013. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
Complainant has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Name. Complainant has also not found anything that would suggest that Respondent has been using NATWEST in any other way that would give them any rights or legitimate interests in the name. In view of the above, the Panel finds that Respondent may not claim any rights established by a common usage.
There is also no evidence in the record suggesting that Respondent is commonly known by the Domain Name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the Domain Name, see Braun Corp. v. Loney, NAF Claim No. 699652, where it was concluded that the respondent was not commonly known by the domain name where the WhoIs information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain name, and the complainant had not authorized the respondent to register a domain name containing its registered mark.
In fact, it appears to the Panel that Respondent has used the Domain Name to pass itself off as Complainant in order to defraud Complainant’s customers through a fraudulent website identical to Complainant’s. Respondent used the Domain Name to “phish” for financial information in an attempt to defraud Complainant’s customers. The Panel finds that Respondent’s attempt to pass itself off as Complainant and “phish” for customers’ financial information is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy, see Vivendi Universal Games v. Ballard, NAF Claim No. 146621 stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also Capital One Fin. Corp. v. Howel, NAF Claim No. 289304 (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.
C. The Domain Name was registered and is being used in bad faith
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
The Panel concludes that the trademark NATWEST in respect of financial services belonging to Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole banking community and throughout the world. The Panel further agrees with Complainant’s assertion that awareness of the trademark NATWEST is considered, in the whole Community in general, to be significant and substantial. The considerable value and goodwill of the mark NATWEST is most likely, a large contribution to this and also what made Respondent register the Domain Name at issue here.
The facts are not disputed that Complainant first tried to contact Respondent through a cease and desist letter, sent by email. Complainant advised Respondent that the unauthorized use of the NATWEST trademark within the Domain Name violated Complainant’s rights in said trademark. Complainant requested a voluntary transfer of the Domain Name. Despite reminders, no response was received. Since the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to file a Complaint according to the UDRP process.
It has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith, News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
As stated previously, Respondent used the Domain Name to engage in a phishing scam. By utilizing Complainant’s registered trademark, in the Panel’s opinion, Respondent was using the Domain Name to deceive Complainant’s customers and manipulate them into divulging sensitive financial information. Thus Respondent’s use of the Domain Name constitutes bad faith registration and use under Policy, see Juno Online Servs., Inc. v. Iza, NAF Claim No. 245960 (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).
While the facts clearly establish that the current website is not used, in the Panel’s opinion, even if the website is currently inactive, such passive holding could still constitute an act of bad faith and any realistic use of the Domain Name by Respondent would likely constitute “passing off’ and/or trademark infringement. In Koç Holding A.S. v. KEEP B.T, WIPO Case No. D2009-0938, where the website resolved to an inactive website, 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. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states the lack of active use of the domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Complainant’s well-known registered and unregistered trademark and the impossibility of conceiving a good faith use of the domain name are indicative of bad faith. The Panel infers bad faith use considering the circumstances surrounding registration. In the current case, surrounding circumstances would definitely be Respondent’s use of the Domain Name as a fraudulent site.
To summarize, the Panel finds that NATWEST is a famous trademark worldwide. It is obvious that Respondent was aware of the rights Complainant has in the trademark and the value of said trademark, at the point of registration. There is no connection between Respondent and Complainant. By using the Domain Name for fraudulent purposes, Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but is committing an illegitimate offence and misleadingly diverting consumers for its own commercial gain.
Consequently, the Panel further finds that Respondent should be considered to have registered and to be using the Domain Name in bad faith.
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 <natwestbankltd.com> be transferred to Complainant.
John E. Kidd
Date: June 18, 2013