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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Westminster Bank plc v. John Brendan

Case No. D2014-2045

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 Brendan of Liverpool, Merseyside, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <natwestplc.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2014. On November 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 December 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 22, 2014.

The Center appointed Steven A. Maier as the sole panelist in this matter on December 24, 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 a public limited company registered in the United Kingdom. It is a provider of banking and financial services and is the proprietor of registrations for the trademark NATWEST in numerous territories throughout the world. Its registrations include, for example:

- United Kingdom trademark number 1278207 for NATWEST filed on October 1, 1986 in International Class 35;

- United States trademark number 3542429 for NATWEST filed on January 24, 2007 in International Classes 09, 16 and 35.

The disputed domain name was registered on July 7, 2014.

At the date of the Panel’s review, January 2, 2015, the disputed domain name did not appear to resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is a major banking and financial services group which has traded under its current name since 1970 and has used the name and mark NATWEST for many years. It states that it has 7.5 million personal customers and 850,000 small business accounts. It provides evidence that it has a large international portfolio of trademark registrations for NATWEST including the examples given above and that it operates websites linked to domain names including <natwest.com> (since 1995), <natwestgroup.com> and <natwestinternational.com>. The Complainant states that its mark NATWEST is highly distinctive, has the status of a well-known trademark, and was recently ranked number 39 in a list of the United Kingdom’s most valuable brands.

The Complainant submits that the disputed domain name is confusingly similar to its trademark NATWEST. The addition of the suffix “plc” does not serve to distinguish the disputed domain name from the mark, and indeed adds to the confusion as the Complainant is a public limited company or “plc”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no trademarks related to the name, has not used it in commerce and has not been commonly known by it. The Complainant has never authorized the Respondent to register a domain name containing its mark NATWEST and the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the Respondent has used the disputed domain name for the purposes of a fraudulent “phishing” website intended to obtain the Complainant’s customers’ account information, which cannot give rise to rights or legitimate interests. The Complainant states that, while the Respondent has claimed in correspondence to have registered the disputed domain name for the purposes of a charity based in Ethiopia, the evidence is to the contrary.

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant states that as of July 14, 2014 the disputed domain name resolved to a website which was designed to look like the Complainant’s own website and invited users to submit their account information. The Complainant exhibits a screen shot of a website which states “Welcome to NatWest Business Banking Portals” and invites users to log in to their online account below. The Complainant states that, while it immediately contacted the host of the relevant website to have the website taken down, the disputed domain name remains in the hands of the Respondent and that its “passive” ownership since that time does not preclude a finding of bad faith.

The Complainant requests a transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present.

A. Identical or Confusingly Similar

The Complainant has established to the satisfaction of the Panel that it has longstanding registered trademark rights in numerous territories for the mark NATWEST and that the mark is a distinctive and well-known trademark. The disputed domain name consists of the term “natwest” together with the suffix “plc” and the generic Top-Level Domain (“gTLD”) “.com”, which is to be disregarded for the purposes of comparison. The Panel accepts the Complainant’s submission that the suffix “plc” does nothing to distinguish the disputed domain name from the Complainant’s mark, and indeed makes the risk of confusion greater as the Complainant is a “plc” or public limited company. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights and that the first limb of the test under paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant has submitted that it has never authorized the Respondent to use its mark NATWEST for the purpose of a domain name, that the Respondent has never commonly been known by the disputed domain name, that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and that the only purpose for which the disputed domain name has been used is for that of a fraudulent “phishing” website. By virtue of these submissions, the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to respond to the Complaint and there is no other evidence before the Panel of any rights or legitimate interests in the disputed domain name on the Respondent’s part. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the second limb of the test under paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

In the absence of any reply by the Respondent, the Panel accepts the Complainant’s uncontradicted submissions and evidence that the disputed domain name has been used for the purposes of a “phishing” website which was designed to impersonate an official website of the Complainant with a view to deceptively obtaining the Complainant’s customers’ account details. Since it is to be inferred that the disputed domain name was registered for this specific purpose, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Panel accepts the Complainant’s submission that it is of no consequence in this case that the disputed domain name may have been passively held by the Respondent since the date that the “phishing” website was taken down. Accordingly, the third limb of the test under paragraph 4(a) of the Policy is satisfied.

7. Decision

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, <natwestplc.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: January 5, 2015

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