WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Westminster Bank plc v. Mary Tersky

Case No. D2012-1709

1. The Parties

The Complainant is National Westminster Bank plc, London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Melbourne IT Digital Brand Services, United Kingdom.

The Respondent is Mary Tersky, Nigdensk, Russian Federation.

2. The Domain Nameand Registrar

The disputed domain name <natwest-online.pro> is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2012. On August 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2012, 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.

On August 31, 2012, the Center notified the Complainant that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by the Registrar), the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On August 31, 2012 the Complainant submitted a request for English to be the language of the proceedings in the Complaint providing the reasons for such request. The Respondent did not provide any comments in this regard.

The Center verified that the Complaint together with the language request 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 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2012.

The Center appointed Ladislav Jakl as the sole panelist in this matter on October 26, 2012. 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.

On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Russian. The Respondent did not express to the question of the language of the proceedings. The Complainant requests the Panel to decide that the language of the administrative proceedings in this case be English. According to paragraph 11(a) of the Rules the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), decides that the language of the administrative proceedings be English.

4. Factual Background

The Complainant asserted, and provided evidence in support of the following facts, which the Panel finds established:

The National Westminster Bank Plc (the Complainant), is a public limited company incorporated in London and is a proprietor of the NATWEST trademark, and other trademarks used in connection with its 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 also owns an international portfolio of registered trademarks for the term “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 disputed domain name <natwest-online.pro> was registered on February 2, 2012.

In accordance with paragraph 4(i) of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark NATWEST, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

The Complainant argues that the disputed domain name is identical to the trademark NATWEST. The disputed domain name <natwest-online.pro> comprises the term NATWEST, which is identical to the registered trademark NATWEST, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world. The disputed domain name combines the Complainant’s NATWEST mark with the suffix “online” and such combination of a generic term with a mark does not prevent a domain name from being found confusingly similar. Furthermore, the Respondent’s addition of the generic top-level domain “.pro” does not distinguish the disputed domain name from the Complainant’s mark. Therefore, the Complainant submits that the disputed domain name is identical and confusingly similar to the mentioned trademarks in which the Complainant has rights.

As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using NATWEST in any other way that would give the Respondent any legitimate rights in the name and consequently the Respondent may not claim any rights established by common usage. Furthermore the Complainant argues that the Respondent registered the disputed domain name on February 2, 2012 and that the mere registration of a domain name does not give the owner a right or legitimate interest in respect of the domain name. The Respondent is not commonly known by the disputed domain name and there is no other evidence in the record suggesting that the Respondent is commonly known by this disputed domain name and therefore the Respondent has not established rights or legitimate interests in the domain name. Moreover the Complainant contends 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 to the Complainant’s. Referring to the above mentioned, the Complainant concludes that the Respondent has no rights or legitimate interest in respect of the disputed domain name.

Furthermore, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the trademark NATWEST in financial services, belonging to the Complainant, has the status of well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world and that awareness of that trademark is considered to be significant and substantial. The considerable value and goodwill of the mark NATWEST is most likely, a large contribution to this and also what made the Respondent register the domain name at issue here. The Complainant further introduces that it first tried to contact the Respondent on February 20, 2012 through a cease and desist letter, sent by email and advised the Respondent that the unauthorized use of the NATWEST trademark within the disputed domain name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain name, but despite reminders no response received. The Complainant refers to earlier disputes that the failure of a 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 D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460). Furthermore the Complainant introduces that use of a domain name that is confusingly similar to the Complainant’s trademark, redirects Internet users to a website that imitates the Complainant’s billing website, and is used to fraudulently acquire personal information from the Complainant’s clients is evidence of bad faith registration and use. The website is currently not active but it is still “in hands” of the Respondent and the Complainant will not be able to rest until the disputed domain name is transferred. The Complainant concludes that the NATWEST is a famous trademark worldwide and that it is obvious that the Respondent was aware of the rights of the Complainant’s trademark and of the value of said trademark, at point of the registration. Moreover 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 the Respondent’s own commercial gain. Consequently, by referring to the above mentioned, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.

In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel appointed in this administrative proceeding to issue a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Complainant owns hundreds of trademark registrations for the NATWEST mark throughout the world, for example United Kingdom trademark registration No. 1278207, dated October 1,1986 or Russian Federation registration No. 2005729121, and hundreds of trademark registrations consisting from that trademark 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 disputed domain name is confusingly similar to the Complainant’s trademark NATWEST as the disputed domain name <natwest-online.pro> comprises the term “natwest”, which is identical to the registered trademark NATWEST, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world. The disputed domain name combines the Complainant’s NATWEST mark with the suffix hyphen and “online”; such a combination of a hyphen and generic term with a mark does not prevent a domain name from being found confusingly similar. Furthermore, the Respondent’s addition of the generic top-level domain “.pro” does not distinguish the disputed domain name from the Complainant’s mark (Davidoff & Cie SA v. Paul Darnell o/b/o Cuban Cigars International, NAF Claim No. 97331; Wal-Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717). The Panel accepts the general principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone (Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310).

For all the above cited reasons, the Panel concludes that disputed domain name is identical or 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

The Panel accepts the Complainant’s assertion that the Respondent must at all times have been aware of the Complainant’s trademarks NATWEST, especially of the United Kingdom trademark registration No. 1278207, dated October 1, 1986 or Russian Federation trademark registration No. 2005729121 and hundreds of trademark registrations consisting from that trademark and a word suffix, for example NATWEST ON LINE, United Kingdom trademark registration No. 1278427, dated October 1, 1986. The disputed domain name was only registered on February 2, 2012 and the mere registration of a domain name does not give the owner a right or legitimate interest in respect of the domain name. There is no doubt that the Respondent has chosen the disputed domain name to exploit the goodwill of the Complainant’s trademark (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353). The Respondent has no relation to the Complainant and only registered the disputed domain name for commercial gain in order to misleadingly divert consumers to sites not affiliated with the Complainant. The Respondent is not a licensee of the Complainant and did not obtain any authorization to use the trademark of the Complainant. The Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name, without the intent, for commercial gain, to mislead the consumers or to tarnish the Complainant’s trademark. The Respondent was using the disputed domain name to attract Internet users seeking a website linked to the Complainant and to its mark NATWEST to the Respondent’s own website, without the Respondent being in a position to legitimately offer services under the mark NATWEST. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

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, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on that website or location.

The Panel accepts the arguments of the Complainant that the disputed domain name was registered and is being used in bad faith. The trademark NATWEST in financial services, belonging to the Complainant, has the status of well-known and reputed trademark with a substantial and widespread reputation throughout the whole community and throughout the world and that awareness of that trademark is considered to be significant and substantial. The considerable value and goodwill of the mark NATWEST is most likely, a large contribution to this and also what made the Respondent register the disputed domain name. The Complainant tried to contact the Respondent on February 20, 2012 through a cease and desist letter, sent by email and advised the Respondent, that the unauthorized use of the NATWEST trademark within the disputed domain name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain name, but despite reminders no response from the Respondent was received. There is a consensus view by previous UDRP panels, that such failure of a 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; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460). Furthermore using of a domain name, that is confusingly similar to the Complainant’s trademark, redirects Internet users to a website that imitates the Complainant’s billing website, and was used to fraudulently acquire personal information from the Complainant’s clients is evidence of bad faith registration and use. At some point around the time of the filing of the Complaint the website at the disputed domain name was taken down. In the circumstances of this case, the Panel finds this is another indication of bad faith. For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith.

Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <natwest-online.pro> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Dated: November 7, 2012