WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc v. Sites / Michael Vetter
Case No. D2013-0870
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, Sweden.
The Respondent is Sites / Michael Vetter of Micco, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pbnatwest.net> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2013. On May 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Sites 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 May 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2013. On May 20 and May 30, 2013, Mr. Michael Vetter sent two email communications to the Center stating that it did not own the disputed domain name. The Respondent has not submitted any further formal Response to the Center.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on June 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. Preliminary Issue
Mr. Vetter, who is indicated as the administrative, billing and technical contact for the disputed domain name in the public WhoIs database, in his email of May 30, 2013, stated that he did not own it. However, he did not provide any indication of who according to him is the holder of the disputed domain name. Mr. Vetter, having been reminded by the Center of the official deadline for the Respondent to file defense, did not produce any further communication.
The Respondent indicated in the Complaint is Michael Vetter, Sites; namely the Complaint has been brought against the both of them, presumably assuming they are in fact the same entity. The WhoIs database for the disputed domain name indeed shows that the only information provided for Sites, i.e. the mail address, is the same as the one provided for Michael Vetter.
Given that Michael Vetter is listed as the administrative contact for the disputed domain name, on receipt of the Complaint and following communications from the Center, in the event he does not own the disputed domain name, it would have been his duty either to inform Sites of the Complaint (and eventually respond on its behalf) or to respond to the Center providing the (different) contact data for Sites.
In any event as Michael Vetter is listed as the administrative contact, the Complaint results to have been correctly notified to the Respondent at the address listed in the WhoIs database of the disputed domain name.
Considering the Complainant’s claim that “the disputed domain name has been used to ‘phish’ for financial information in an attempt to defraud the Complainant’s customers” i.e. for an activity which likely carries criminal liability, it becomes relevant that Sites (should it be a different entity from Michael Vetter), has not filed any official Response to the Complaint nor informed the Center about it being a different entity from Mr. Vetter.
Due to the above, the Panel considers that the Respondent has been duly notified of the Complaint and that (for the purpose of this proceeding) there are sufficient elements to treat both Sites and Michael Vetter as the Respondent.
5. Factual Background
The Complainant National Westminster Bank plc (hereinafter the Complainant), is a public limited company incorporated in London and is the proprietor of the NATWEST trademark. 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. The Complainant offers its financial services worldwide under the NATWEST trademark. The Complainant also owns an international portfolio of registered trademarks for the term “Natwest”. The Complainant operates websites such as “www.natwest.com”, “www.natwestgroup.com” and “www.natwest.co.uk”.
The Complainant’s trademark registrations for the trademark NATWEST, registered for decades, long predate the disputed domain name registration. Its domain names <natwest.com>, <natwestgroup.com> and <natwest.co.uk> also predate the disputed domain name registration.
The disputed domain name <pbnatwest.net> was registered on January 24, 2013 and resolves - at the time of this decision - to a page containing a message of error, namely: “404 – File Not Found”. From the evidence submitted by the Complainant, it appears that the Respondent has previously used the disputed domain name to present to the public a website similar to the one of the Complainant.
6. Parties’ Contentions
The Complainant claims that:
The disputed domain name <pbnatwest.net> is confusingly similar to its NATWEST trademark because it fully incorporates the NATWEST trademark. Also, the disputed domain name <pbnatwest.net> is confusingly similar to the NATWEST trademark because it consists of the NATWEST trademark, with only the inclusion of the prefix “pb” and the generic top-level domain “.net”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. Before the dispute, the Respondent had not been using the disputed domain name in connection with a bona fide offering of goods and services. There is no evidence in the record suggesting that the Respondent is commonly known by the disputed domain name. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using the NATWEST mark in any other way that would give it any legitimate rights in the name.
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 the Complainant’s.
The Respondent used the disputed domain name to “phish” for financial information in an attempt to defraud the Complainant’s customers. The Respondent’s attempt to pass itself off as the 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 and Davidson & Associates, Inc. v. Ronald A. Ballard, NAF Claim No. 0146621. The Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for the registration of the disputed domain name.
The trademark NATWEST in respect of financial services belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole European Community and throughout the world.
The Complainant sent a cease and desist letter requesting the Respondent a voluntary transfer of the disputed domain name. Despite reminders, no response was received. The Complainant claims 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.
The Respondent used the disputed domain name to engage in a phishing scam. By utilizing the Complainant’s registered trademark, the Respondent was using the disputed domain name to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information.
Thus, the Respondent’s use of the disputed domain name constitutes bad faith registration and use under the Policy.
The website is currently inactive, however such passive holding can still constitute an act of bad faith and in this Panel’s view any realistic use of the disputed domain name by the Respondent would constitute “passing off” and/or trademark infringement.
Therefore, the disputed domain name <pbnatwest.net> has been registered and is being used by the Respondent in bad faith.
The Respondent Michael Vetter on receipt of the Center’s Notification of Complaint, on May 30, 2013, sent an email to the Center stating:
“Hello, I have read your complaint and the information you have is incorrect. You have my correct
mailing address, however I do not own that domain name (pbnatwest.net) […] Sincerely, Michael T. Vetter….”
However, the Respondent has not put in any formal Response in this proceeding to rebut the allegations in the Complaint.
Accordingly, the Panel finds that the Respondent is formally in default.
7. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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 Complainant has established that it has rights in the NATWEST trademarks and has stated that the disputed domain name is confusingly similar to those trademarks.
In order to substantiate this claim, the Complainant has argued that the addition of the generic term “pb” to the NATWEST Marks, does not avoid the confusing similarity between the disputed domain name and the Complainant’s marks.
This Panel agrees with the Complainant’s view that “natwest” is the distinctive part of the disputed domain name <pbnatwest.net> and that the addition of the generic term “pb” is not sufficient to avoid confusing similarity between the disputed domain name and the Complainant’s NATWEST trademarks.
Indeed, it is now well established by many previous UDRP decisions that the addition of a generic term to a trademark is generally not sufficient to avoid confusing similarity.
In addition, the Panel notes that the letters PB added to the NATWEST trademark (renowned in the bank field) can also be seen as the initials of (or acronym for) Private Banking and/or Personal Banking. In this event the result would be an increased confusion between the disputed domain name and the Complainant’s trademark, used amongst other for Private Banking services.
This Panel is therefore of the opinion that the addition of the letters “pb”, is not sufficient to avoid confusing similarity between the disputed domain name and the Complainant’s trademarks.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 7.C below. In addition, the Respondent does not appear to be commonly known by the name “natwest” or by a similar name. Finally, the Respondent has not alleged any facts to justify any rights or legitimate interests in the disputed domain name.
Indeed, the Respondent has not formally replied to the Complainant’s contentions, proving or at least alleging in any other way any rights or legitimate interests in the disputed domain name. As well, the Respondent has not denied any of the Complainant’s claims.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the use of the disputed domain name described in section 6.A above constitutes bad faith use. Besides, the Panel notes that the above-described use of the disputed domain name confirms that the Respondent knew of the Complainant’s trademark, products and services when registering the disputed domain name and intentionally intended to create an association with the Complainant and its business.
Indeed, in this Panel’s view, the use by the Respondent on its websites of contents as well as graphic designs, emulative of those used by the Complainant on its official website, must have been intentional.
The above, together with the fact that the disputed domain name was registered long after the Complainant had established valuable rights and goodwill in its NATWEST trademarks, is further evidence that the Respondent was aware of the NATWEST trademarks when it registered the disputed domain name.
In addition, the Complainant claimed that the Respondent used the disputed domain name for phishing. This is a practice of sending an email to a user falsely claiming to be an established legitimate enterprise, in an attempt to scam the unsuspecting user into giving private information (e.g. user names, passwords, credit card details and so on). Although the Complainant did not file clear evidence in support of this claim, the Panel considers that the above constitutes a plausible and likely reason as to why the disputed domain name was registered.
This Panel finds appropriate and fitting to the present case the conclusion given by the panel in National Westminster Bank plc v. natrest bkss WIPO Case No. D2012-1708, where it was affirmed that: “Given the Respondent’s use of the domain name as the vehicle through which it attempted to extract, i.e., ‘phish’, confidential personal banking information from the Complainant’s customers, there can be no doubt that the Respondent, at the time it registered the disputed domain name, was well aware of the Complainant, its reputation and its trademark rights and had already formed an intention to perpetrate a fraud on the Complainant’s customers ultimately for the Respondent’s own financial benefit. Based on the facts of record, the Panel sees no other reason why the Respondent, which has absolutely no connection with the Respondent, would have chosen to register and use the disputed domain name if it did not intend to use it as it has. Such use, which likely carries criminal liability, clearly constitutes bad faith use under the Policy.”
Also, the fact that the Respondent did not respond to the Complainant’s cease and desist letter may support additional evidence that the Respondent acted in bad faith when registering and using the disputed domain name.
Finally, it appears from the case record that before the Complaint was filed the Respondent, presumably in order to conceal his identity, made use of a privacy service.
Accordingly, the Panel finds on the basis of the evidence presented that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied paragraph 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 disputed domain name <pbnatwest.net> be transferred to the Complainant.
Date: June 25, 2013