WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc v. Nat West
Case No. D2013-2167
1. The Parties
The Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Nat West of Ers, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <nattwest-online.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2013. On December 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 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 the Respondent of the Complaint, and the proceedings commenced on December 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2014.
The Center appointed Jane Lambert as the sole panelist in this matter on January 20, 2014. 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 one of four clearing banks in England and Wales with many millions of private customers and hundreds of thousands of business customers in the United Kingdom and around the world. As such it is one of the largest financial institutions in the word. It was formed by the merger of the National Provincial and the Westminster Banks in 1968 which were themselves substantial clearing banks. From the announcement of the merger, journalists, politicians and members of the general public in the British Isles began to refer to the merged group by the abbreviation NatWest.
The name stuck and was adopted by the Complainant’s management which first registered the sign NATWEST (“the Sign”) as a word mark for various goods with effect from December 3, 1973 under registration number 1021601 (“the Trade Mark”). At that time it was not possible to register trade marks for services in the UK but after the law changed to permit such registrations the Complainant registered the Sign in that country for a vast range of financial services. The Complainant also registered the Sign as a trade mark in many other countries. It now has a vast portfolio of trade mark registrations in many countries for the Sign or variants such as NAT WEST either simpliciter or in combination with other words.
The Complainant is now a wholly owned subsidiary of the Royal Bank of Scotland which was rescued from financial difficulty by the British government at the start of the banking crisis. The vast majority of its shares are now in public ownership.
When it registered the disputed domain name the Respondent provided the address mentioned in paragraph 1 above. This is unlikely to be a genuine address as no post town has been provided and the post code is not in a format used by the Royal Mail. The Respondent is said to be in Great Britain but the only evidence that that is so is the address provided upon registration. Nothing else is known of the Respondent.
Because of the size of the Complainant, the wide range of services now offered by financial institutions and its expenditure on advertising and marketing those services over 40 years, consumers in the UK are likely to associate the Sign or any similar sign in relation to any kind of business with the Complainant and none other. Moreover, it is also likely that the Mark has a reputation in the UK within the meaning of s.10 (3) of the Trade Marks Act 1994 and that any kind of business in the UK under the Sign or similar sign would be detrimental to, or take unfair advantage of, the distinctive character and repute of the Mark. It is therefore unlikely that any kind of business activity could lawfully be carried on in the UK under the sign NAT WEST without the Complainant’s license.
5. Parties’ Contentions
The Complainant claims the transfer of the disputed domain name on the following grounds:
(i) The disputed domain name is identical or confusingly similar to a vast portfolio of trade marks and service marks 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.
As to the first ground, the Complainant has produced a vast portfolio of registrations of the Sign and variants of the Sign as trade marks for a wide range of goods and services in the UK and around the world.
As to the second, it has searched for trade mark registrations by the Respondent and other evidence that the Respondent carries on business under, or by reference to, a sign similar to the disputed domain name and has found none.
As to the third, the Complainant says that the Respondent has used the disputed domain name as a URL for phishing, that is to say tricking the Complainant’s customers into revealing information about their banking accounts with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4 of the Policy provides for the transfer of a domain to a Complainant if, and only if, all the following conditions are satisfied:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the first condition is satisfied.
The disputed domain name differs from the Trade Mark only by the addition of the letter “t” after the particle “nat”, the word “online” and the suffix “.com”. The extra letter could easily be mistyped or overlooked. The word ONLINE would lead members of the public to suppose that the domain name is the URL for an electronic banking service. The suffix “.com” indicates that the domain name is used by a business and possibly one that trades in more than one country which is of course true of the Complainant.
Upon seeing the disputed domain name at least some members of the public are likely to conclude that it is the URL for an online banking or other financial service operated by the Complainant.
B. Rights or Legitimate Interests
The Panel finds that the second condition is satisfied.
In reaching this conclusion, the Panel is assisted by paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") which states:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant has fulfilled the requirement of making out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is carrying on any kind of business or registered any trade marks under a sign similar to the disputed domain name. For the reasons given by the Panel in the last paragraph of the Factual Background it is unlikely that any kind of business could lawfully be conducted under such a sign. As the Respondent has produced no evidence or made any representations to rebut the prima facie case the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel holds that the third condition is satisfied.
Paragraph 4(b) of the Policy which if found to be present shall be evidence of registration and use in bad faith. One of those circumstances is set out in subparagraph (iv):
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
By finding that the disputed domain name is confusingly similar to the Trade Mark the Panel has already found that the Respondent has created “a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [its] web site or location.” According to the Complainant the disputed domain name has been or is intended to be used for obtaining information about its customers from which the recipient will derive financial gain. It follows that the Respondent’s use of the disputed domain name falls within paragraph 4(b)(iv) of the Policy. Accordingly, the disputed domain name has been registered and used 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 disputed domain name <nattwest-online.com> be transferred to the Complainant.
Date: February 3, 2014