WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc v. Bryan Smith
Case No. D2014-1883
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 Bryan Smith of Telford, Shropshire, UK.
2. The Domain Name and Registrar
The disputed domain name <natwest-antifraud.com> 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 October 27, 2014. On October 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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 October 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2014.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on December 2, 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 National Westminster Bank plc is a public limited company incorporated in London and is the proprietor of the NATWEST trademark. The Complainant operates websites such as “www.natwest.com” (registered and launched in 1995), “www.natwestgroup.com”, “www.natwestuk.com”, “www.natwestinternational.com” and “www.natwest.co.uk”.
The disputed domain name was registered in August 2014.
5. Parties’ Contentions
The Complainant says that it can trace its history back to the 1650s. It offers its financial services 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’s evidence, which is not disputed, is that NATWEST is a highly distinctive trademark: “when doing a Google search of NATWEST, all top results relate to the Complainant… The NATWEST brand was recently ranked number 39 in the list of the UK’s most valuable brands.”
The Complainant says that 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, or similar, 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 Complainant’s contentions are that:
- The disputed domain name is confusingly similar to its mark;
- The Respondent has no rights or legitimate interest in the disputed domain name;
- The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it is the owner of the well-known trademark NATWEST, and points out that the disputed domain name incorporates the Complainant’s mark in its entirety. Various UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a Complainant’s registered mark: for example, The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.
The Complainant states that the addition of the word “antifraud” has no impact on the overall impression of the dominant part of the disputed domain name: “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.” That is particularly so given that the Complainant’s main core of business is banking “a field in which antifraud protection is vital to its functionality.”
Further, the use of hyphens is not a distinguishing factor, and the addition of the generic Top-Level Domain “.com” does not distinguish the disputed domain name from the Complainant’s mark.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts that it has exclusive rights to the NATWEST mark and that no license or authorization has been given by the Complainant to the Respondent to use the trademark, or to use the disputed domain name.
It was open to the Respondent to demonstrate rights or legitimate interests in the disputed domain name by, for example, reliance on the circumstances set out in paragraph 4(c) of the Policy. The Respondent has not done so.
The Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated, the disputed domain name incorporates the Complainant’s mark in its entirety. That domain name was registered long after the mark was registered by the Complainant in numerous countries worldwide.
The Complainant’s evidence, which has not been disputed, is that 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, or similar, to the Complainant’s. The Respondent used the domain name to ‘phish’ for financial information in an attempt to defraud the Complainant’s customers.” 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.
In Tumblr, Inc. v. Fundacion Private Whois / PPA Media Services, Ryan G Fo, WIPO Case No. D2013-0203, the panel stated that using a domain name to redirect to a website designed to extract personal information from Internet users via a “phishing scam” clearly showed the respondent’s bad faith.
It was open to the Respondent to answer the Complainant’s arguments by serving a Response. He has chosen not to do so.
The Panel is satisfied that the Complainant has provided evidence of bad faith registration and use pursuant to the Policy, and has proved the requirements of 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 <natwest-antifraud.com > be transferred to the Complainant.
Anthony R. Connerty
Date: December 16, 2014