WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc v. Abdelilah Jadron
Case No. D2013-2232
1. The Parties
The Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Abdelilah Jadron of Nador, Morocco.
2. The Domain Name and Registrar
The disputed domain name <onlinenatwest.com> (the “Domain Name”) 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 December 23, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 24, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 9, 2014.
The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 30, 2014. The Respondent filed an informal Response with the Center on January 28, 2014.
The Center appointed Alexandre Nappey as the sole panelist in this matter on February 12, 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 paragraph 7 of the Rules.
4. Factual Background
The National Westminster Bank Plc (the Complainant), is a public limited company incorporated in London, UK.
The Complainant offers its financial services worldwide under the mark NATWEST and has spent a significant amount of money promoting and developing this mark.
The Complainant also owns an international portfolio of registered trademarks for “NATWEST”, including:
- CTM trademark No. 4319067 dated April 18, 2006, and
- UK trademark No. 1438083 dated August 17, 1990.
Moreover the Complainant operates websites at e.g. “www.natwest.com” and “www.natwest.co.uk”. It is the strict policy of the Complainant that all domain names containing the word “natwest” should be owned by the Complainant.
The Domain Name <onlinenatwest.com> was registered on October 31, 2013. It is currently inactive.
5. Parties’ Contentions
The Complainant first asserts that it is the owner of the trademark NATWEST. The Domain Name in question is clearly confusingly similar to the Complainant’s registered trademark NATWEST. The addition of a said suffix does not detract from the overall impression of association with the Complainant and the Domain Name must therefore be considered to be confusingly similar to the Complainant’s trademark.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name and the Respondent may not claim any rights established by common usage. There is no evidence in the record suggesting that the Respondent is commonly known by the Domain Name. 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 the Policy.
At last, the Complainant claims that NATWEST is a famous trademark worldwide. It is obvious that NATWEST is a famous trademark worldwide. It is obvious that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the time of the Domain Name registration. There is no connection between the Respondent and the Complainant. By using the Domain Name for fraudulent purposes the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is committing a criminal offence and misleadingly diverting consumers for his own commercial gain.
The Respondent did not formally reply to the Complaint.
In an informal Response dated January 28, 2014, he merely stated the following: “I have received this email, I have no relation with the domain name, my iinformations was used without my permissions.”
6. Discussion and Findings
The Policy requires the Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant shows prior trademark rights in the trademark NATWEST. It owns hundreds of trademark registrations for the NATWEST mark throughout the world.
The Panel also notes that the Complainant holds numerous trademark registrations consisting of NATWEST and a word suffix, for example NATWEST ON LINE, United Kingdom trademark registration No. 1278427, dated October 1, 1986.
The Panel accepts the Complainant’s assertion that the Domain Name is confusingly similar to the Complainant’s trademark as the Domain Name <onlinenatwest.com> comprises the term “natwest”, which is identical to the registered trademark NATWEST.
The Domain Name combines the Complainant’s NATWEST mark with the prefix “online”; such a combination of a generic term with a mark does not prevent a domain name from being found confusingly similar.
Furthermore, the addition of the generic top-level domain “.com” does not distinguish the Domain Name from the Complainant’s mark.
For all the above cited reasons, the Panel concludes that Domain Name is confusingly similar to the Complainant’s trademark in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant states that despite various investigations it was not able to find that the Respondent has any trademark, trade name or any sort of right in “natwest”. The WhoIs database identifies the registrant as Abdelilah Jadron and therefore does not support any conclusion that the Respondent might be commonly known by the Domain Name.
There is no evidence that the Domain Name has ever been used in connection with a bona fide offering of goods or services. On the contrary, there is evidence that the Domain Name has been used as part of a “phishing” scheme directed at customers of the Complainant. In particular, at an earlier date the Domain Name resolved to a website which was a fraudulent imitation of the Complainant’s website. Such use could never establish a legitimate interest in the domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, and that the Respondent in failing to formally reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel’s view is that the NATWEST trademark belonging to the 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 Complainant first tried to contact Respondent through a cease and desist letter, sent by email. The Complainant advised the Respondent that the unauthorized use of the NATWEST trademark within the Domain Name violated the Complainant’s rights in said trademark. The 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, the Complainant chose to file a Complaint according to the UDRP process.
It has been mentioned in earlier UDRP 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 above, the Respondent previously used the Domain Name to engage in a phishing scam. By using the Complainant’s registered trademark, in the Panel’s opinion, the Respondent was using the Domain Name to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information. Thus, the Respondent’s use of the Domain Name constitutes bad faith registration and use under the Policy, see Juno Online Servs., Inc. v. Iza, NAF Claim No. 245960.
While the Domain Name is not currently used, the Panel considers that, even if the website is currently inactive, such passive holding could still constitute an act of bad faith considering its prior deceptive use.
As a matter of fact, the Panel finds that NATWEST is a famous trademark. It is obvious that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the time of registration. There is no connection between the Respondent and the Complainant. By using the Domain Name for fraudulent purposes, the 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 finds that the 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 disputed domain name <onlinenatwest.com> be transferred to the Complainant.
Date: February 27, 2014