WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc v. John P Odonohue
Case No. D2014-1527
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 John P Odonohue of California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <natwestsuk.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 5, 2014. On September 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2014, 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 September 17, 2014. On October 2, 2014, the Center received a Supplemental Filing from the Complainant. The Center acknowledged its receipt, and informed the parties that it would be forward to the Panel, once appointed, who would have the discretion to accept or reject it. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2014.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 8, 2014.
The Center appointed Andrea Dawson as the sole panelist in this matter on October 16, 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.
The Panel has decided not to consider the Complainant's Supplemental Filing. In any event, if the Panel had taken into account such filing that would not have affected the outcome of this Decision.
4. Factual Background
The Complainant, National Westminster Bank plc, is a public limited company incorporated in London and is the proprietor of the NATWEST trademark, and all other trademarks used in connection with the NATWEST brand.
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 has around 7.5 million personal customers and 850,000 small business accounts.
The Complainant also owns an international portfolio of registered trademarks for the term "NatWest".
The Complainant operates websites such as "www.natwest.com", registered in 1995, "www.natwestgroup.com", "www.natwestuk.com" and "www.natwest.co.uk".
The disputed domain name <natwestsuk.com> was registered on February 15, 2014.
5. Parties' Contentions
The Complainant states that it is the owner of the trademark NATWEST. The disputed domain name is clearly confusingly similar to the Complainant's registered trademark NATWEST. The addition of the suffixes "s" and "uk" does not detract from the overall impression of association with the Complainant, and the disputed domain name must therefore be considered to be confusingly similar to the Complainant's trademark.
The Complainant states that there is no evidence in the record suggesting that the Respondent is commonly known by the disputed domain name. The Complainant further adds that the Respondent's attempts 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 of the disputed domain name.
The Complainant indicates that the Respondent used the disputed domain name to engage in a phishing scam by utilizing Complainant's registered trademark. The Complainant asserts that 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 Policy.
The Complainant finally indicates that NATWEST is a famous trademark worldwide, in particular within the banking industry. 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 point of the registration. There is no connection between the Respondent and the Complainant. By using the disputed 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 reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 been able to demonstrate that it has rights to the trademark NATWEST (Annex 7 to the Complaint).
By mere comparison of the trademarks and the disputed domain name, one can say that the terms are not identical, since it contains additional letters such as "s", "u" and "k". Consequently, the Panel now has to determine if the disputed domain name is confusingly similar to the Complainant's trademark. This involves a comparison between the trademark and the disputed domain name itself to determine such similarity that would allow one to consider the possibility of likelihood of Internet user confusion.
In this particular case, the relevant trademark is recognizable as such within the disputed domain name, even with the addition of the letter "s" and the term "uk".
Moreover, this Panel considers that the risk that Internet users may actually believe there to be a real connection between the disputed domain name and the Complainant and/or its goods and services is absolutely plausible.
Furthermore, this Panel agrees with the general consensus view findings in that the addition of a generic term – and in this specific case a geographical term such as "uk" - to a well-known trademark is not sufficient to prevent the resulting domain name from being confusingly similar to the trademark.
For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent lacks rights or legitimate interests in the disputed domain name. Under paragraph 4(c) of the Policy, the Respondent may demonstrate that he has rights to and legitimate interests in the disputed domain name by proving that:
(i) before any notice of the dispute to the Respondent, the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.
The Respondent was given the possibility to demonstrate his rights to or legitimate interests in the disputed domain name but failed to prove any of the above-mentioned circumstances, as it did not reply to the Complaint.
The Panel therefore agrees with what has been stated by the generality of the UDRP panels, which is that the Complainant now needs only to make out a prima facie case and finds that it has met that standard.
The Panel will consider the arguments of the Complainant that the Respondent did not have any registered trademark, service mark or company name corresponding to the disputed domain name. That the Respondent is not commonly known by the name "NatWest", is not in any way affiliated with the Complainant, nor authorized or licensed to use the NATWEST trademark, nor authorized to seek registration of any domain name incorporating said mark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intentionally misleading consumers to his website by using a domain name confusingly similar to the Complainant's trademark, thus diverting them to his site.
Furthermore, the Complainant contacted the Respondent by sending a cease-and-desist letter, however the Respondent never replied. UDRP panels have repeatedly stated that when a respondent does not avail himself of his right to respond to a complainant, it can be assumed that the respondent has no rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel considers that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant's rights in the Complainant's trademarks and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name.
As mentioned by the Complainant, it is unlikely that the Respondent was unaware of the Complainant's rights in the NATWEST trademark when he registered the disputed domain name, since the Complainant owns numerous trademarks that are well-known throughout the world, therefore, it is difficult to conclude that the Respondent did not have this trademark in mind when registering the disputed domain name.
After reviewing the annexes provided as evidence by the Complainant, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith.
There is evidence to sustain that the Respondent has used the disputed domain name to pass itself off as the Complainant in order to confuse the Complainant's customers through a website identical to the Complainant's, as evidenced by annex 10 and annex 12, which contains images, colors and text very similar to those contained in the Complainant's website. Consequently, one can easily assume that the Respondent used the disputed domain name to "phish" for financial information in an attempt to confuse or obtain information from Internet users.
So as a conclusion this Panel accepts the arguments of the Complainant that the disputed domain name was registered and used in bad faith as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <natwestsuk.com> be transferred to the Complainant.
Date: October 23, 2014