WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc v. John Smith, Company
Case No. D2014-2025
1. The Parties
The Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is John Smith, Company of Fulham, Fulham, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <natwest-secure.com> (the "Disputed Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 18, 2014. On November 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 18, 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 November 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 16, 2014.
The Center appointed Michael D. Cover as the sole panelist in this matter on January 5, 2015. 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 a public limited company incorporated in London, United Kingdom and is the proprietor of the trademark NATWEST, which is registered on an international basis. The Complainant can trace its roots back some 180 years and has been involved and continues to be involved in banking and financial services. The Complainant was acquired by the Royal Bank of Scotland Group in 2000.
The Complainant has around 7.5 million personal customers and 850,000 business customers. The Complainant and its Group are the proprietors of a very large number of domain names consisting of or including the Complainant's trademark NATWEST. The Complainant operates websites such as natwestgroup.com and natwestuk.com.
The Disputed Domain Name was registered on July 9, 2014.
5. Parties" Contentions
The Complainant contends that the Disputed Domain Name comprises the term "natwest", which is identical to the Complainant's trademark NATWEST. It notes that what it calls the fame of its trademark NATWEST has been confirmed in numerous previous UDRP decisions and cites various cases in that regard.
The Complainant submits that the Disputed Domain Name combines the term "natwest" with the addition of a suffix "secure" that is closely-related to the Complainant. It notes that the addition of a non-distinctive element "secure" will not distinguish the Disputed Domain Name from the Complainant's trademark NATWEST. It makes the same point in relation to the addition of the generic Top-Level Domain (gTLD) ".com".
The Complainant maintains that anyone who sees the Disputed Domain Name is bound to mistake it for a name related to the Complainant. The Complainant then summarises its submissions by stating that it is the owner of the trademark NATWEST, that the Disputed Domain Name is confusingly similar to that trademark and that the addition of the generic elements "secure" and ".com" do not distract from the overall impression of association with the Complainant.
The Complainant submits that the Respondent had no rights or legitimate interests in the Disputed Domain Name. It says that the Respondent has no corresponding registered trademarks, that there is no evidence that the Respondent is commonly known by the Disputed Domain Name.
The Complainant submits that the Respondent has used the Disputed Domain Name to pass itself of as the Complainant and to defraud the Complainant's customers through a fraudulent website identical or similar to that of the Complainant and produces evidence in that regard. It maintains that the Respondent has used the Disputed Domain Name to "phish" for financial information in an attempt to defraud the Complainant's customers and produces evidence in support of that contention.
Accordingly, the Complainant concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
With regard to the Disputed Domain Name being registered and being used in bad faith, the Complainant notes that its trademark NATWEST has been found in previous UDRP cases to be a well-known and reputed trademark. It notes that it contacted the Respondent and advised the Respondent that its use of the Disputed
Domain Name was unauthorized. It repeats the point about "phishing" set out above and concludes that even passive holding of such a well-known trademark as its trademark NATWEST would be in bad faith. It summarises that its trademark NATWEST is well-known, that the Respondent must have been aware of the rights of the Complainant and that there is no connection between the Complainant and the Respondent. By using its trademark for fraudulent purposes, the Respondent is not making legitimate noncommercial or fair use of its trademark, the Complainant says, but is misleadingly diverting consumers for the Respondent's own gain.
The Complainant states that the Respondent should be considered to have registered and be using the Disputed Domain Name is bad faith and requests the Panel to transfer the Disputed Domain Name to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant is required to demonstrate, on the balance of probabilities, that the Disputed Domain Name is identical or confusingly similar to Complainant's trademark NATWEST in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant's trademark NATWEST in which the Complainant has rights. The Complainant has extensive registered rights in its trademark and the Panel also finds on the balance of probabilities that the Complainant has common law rights in its trademark. Although the Complainant does not produce any sales or turnover figures, it does cite numbers of personal and business customers and it is a reasonable inference that the Complainant will have a very substantial turnover under the business conducted in relation to its trademark.
The Disputed Domain Name incorporates the Complainant's trademark in its entirety and this with the addition of the non-distinctive elements "secure" and ".com". The Panel finds that the addition of these non-distinctive elements does not alter the fact that the Complainant's trademark is the dominant element of the Disputed Domain Name.
B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has demonstrated that the Respondent has not been authorized or licensed to use the Complainant's trademark NATWEST by the fact that it contacted the Respondent and pointed out that the use of this trademark was not authorized.
There is no evidence to suggest that the Respondent has, before notice of the dispute, made demonstrable preparations to use the Dispute Domain Name in connection with a bona fide offering of goods or services. There is also no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Name or that the Respondent is or has been making legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain misleadingly to divert consumers or tarnish the Complainant's trademark. The evidence in fact points strongly in the other direction, with the Disputed Domain Name being used for a website that has been in turn used for "phishing" in relation to customers of the Complainant.
C. Registered and Used in Bad Faith
The Panel also accepts that the Respondent has registered and is using the Disputed Domain Name in bad.
faith. The Complainant's trademark is well-known and it is a reasonable inference for the Panel to make that the Respondent was not unaware of the Complainant's trademark when registering the Disputed Domain Name.
By the "phishing" exercise to which reference has been made above in this Decision, the Respondent was intentionally attempting 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 and endorsement of that website.
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-secure.com> be transferred to the Complainant.
Michael D. Cover
Date: January 19, 2015