WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Westminster Bank plc v. Whois Agent, Whois Privacy Protection Service, Inc. / Name Redacted
Case No. D2014-2059
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 Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Name Redacted.
2. The Domain Name and Registrar
The disputed domain name <nawestin.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2014. On November 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 24, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 27, 2014.
The Center verified that the Complaint together with the amendment to 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 28, 2014. On the request of the Complainant, the Center sent a Notification of Suspension on December 15, 2014. On the request for the Complainant, the proceedings were re-instated on February 18, 2015.
In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2015. The Center sent a Notification of Respondent’s Default on February 27, 2015.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on March 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 following facts are undisputed.
The Complainant, National Westminster Bank plc, is a public limited company incorporated in London and is the proprietor of the NATWEST brand which was recently ranked as number 39 of the list of the UK’s most valuable brands. The Complainant operates websites such as “www.natwest.com”, “www.natwestgroup.com”, “www.natwestuk.com”, “www.natwestinternational.com” and “www.natwest.co.uk”.
The Complainant owns an international portfolio of registered trademarks for the term NATWEST (“Trademark”), such as Community Trade Marks and national trademarks all over the world. The Trademark is registered for goods and services in several classes, such as 9, 16, 35 and 36.
The Domain Name was registered on July 9, 2014.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Name consist of the term “nawest”, which is confusingly similar to the Complainant’s registered trademark NATWEST, eliminating the third letter “t” as well as adding the term “in”.
The Domain Name combines the term “nawest”, which is confusingly similar with the Trademark, with merely the letter “t” missing, with the addition of a suffix “in”, which presumably refers to the term “international” or “investment”. The addition of a generic term to a trademark will not distinguish the Domain Name from the Trademark.
Furthermore, the addition of the generic Top-Level Domain (gTLD) “.com” does not distinguish the Domain Name from the Trademark.
The Domain Name is registered as a private registration. As far as the Complainant is aware, the Respondent has not any registered trademarks or trade names corresponding the Domain Name. The Complainant is also not aware that the Respondent is using the Trademark in a way that would give the Respondent any legitimate rights in the Domain Name. Consequently, the Respondent may not claim any rights established by common usage. Furthermore, there is no evidence that the Respondent is commonly known by the Domain Name.
The Respondent used the Domain Name to phish for financial information in an attempt to defraud the Complainants’ customers via a login portal. The Respondent has used the Domain Name to pass itself off as the Complainant in order to defraud Complainant’s customers through a fraudulent website with reference to the Complainant’s. The fact that Respondent attempt to pass itself off as the Complainant and phish for customers’ information is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Therefore, the Respondent has no rights or legitimate interests in the Domain Name.
Upon learning about the phishing scams in question, the Complainant immediately contacted the host of the website associated with the Domain Name and had the website taken down that was behind the Domain Name. Even if the website behind the Domain Name is currently inactive, such passive holding could still constitute an act of bad faith and any realistic use of the Domain Name by the Respondent would constitute “passing off” and/or trademark infringement.
It has been confirmed by numerous panelists that the Trademark is a well-known and reputed trademark, in particular within the banking industry. It is obvious that the Respondent was aware of the rights the Complainant has in the Trademark when the Domain Name was registered. There is no connection between the Respondent and the Complainant. By using the 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 its own commercial gain. Therefore, Respondent has registered and used the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
However, the individual listed as the registrant for the Domain Name replied and claimed that he was a victim of identity theft. This individual claimed that his name and local address in the United States of America were fraudulently used to register the Domain Name.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name combines the term “nawest”, which is confusingly similar with the Trademark, with merely the letter “t” missing, with the addition of a suffix “in”, which presumably refers to the term “international” or “investment”. The addition of such a term to a trademark will not distinguish the Domain Name from the Trademark.
The Panel also takes into account that Internet users considering the Domain Name without awareness of its content may believe that the Domain Name is in some way connected and associated with the Complainant (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “nawestin” is one of the Respondent’s names or that the Respondent is commonly known as “nawestin”.
The Domain Name was registered in July 2014, well after the Complainant’s registration of its Trademark. Given the notoriety of the Trademark, the Respondent, in the view of the Panel, cannot claim to have been using the term “nawestin”, without being aware of the Complainant’s rights to it and chose these terms to exploit the Complainant’s Trademark. To the Panel, this proves that the Respondent’s interests cannot have been legitimate.
The Panel also finds that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may further be inferred by the fact that no response was filed by the Respondent. The individual listed as the registrant for the Domain Name replied, but claimed that he was a victim of identity theft. According to previous UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant and the absence of a reply, the Panel considers that the Complainant’s trademarks and activities are well-known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the Domain Name. This is emphasized by the fact that the website to which the Domain Name resolves, was used to deceive Internet users and manipulate them into divulging sensitive financial information.
This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e., that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Domain Name is currently inactive as the Complainant contacted the host of the website associated with the Domain Name upon learning about the phishing scams in question. Passive holding of a domain name can in the appropriate circumstances also be considered as of bad faith use.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the passive holding by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <nawestin.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: March 19, 2015