Natwest-ukbank.com

The timeline behind natwest-ukbank.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION National Westminster Bank plc v. Joseph Montean Claim Number: FA0909001285339 PARTIES Complainant is National Westminster Bank plc (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA. Respondent is Joseph Montean (“Respondent”), Minnesota, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <natwest-ukbank.com>, registered with Tucows Inc. PANEL The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding. The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 21, 2009. After numerous requests, the Registrar, Tucows Inc., has not confirmed to the National Arbitration that the <natwest-ukbank.com> domain name is registered with Tucows Inc. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute. On September 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@natwest-ukbank.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On October 22, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <natwest-ukbank.com> domain name is confusingly similar to Complainant’s NATWEST mark. 2. Respondent does not have any rights or legitimate interests in the <natwest-ukbank.com> domain name. 3. Respondent registered and used the <natwest-ukbank.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, National Westminster Bank plc, provides financial services, including personal and business banking services and credit cards. Complainant was founded in 1968. Complainant holds trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,021,601 issued December 3, 1973), with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,241,454 issued June 7, 1983), and with the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4,319,067 issued April 18, 2006) for its NATWEST mark. Respondent, Joseph Montean, registered the <natwest-ukbank.com> domain name June 17, 2009. The disputed domain name resolves to a website containing a commercial search-engine and hyperlinks resolving to websites featuring links to Complainant and Complainant’s competitors. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Previous panels have found that the registration of a mark with a federal trademark authority is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also The Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”). Complainant holds trademark registrations with the UKIPO (Reg. No. 1,021,601 issued December 3, 1973), with the USPTO (Reg. No. 1,241,454 issued June 7, 1983), and with the OHIM (Reg. No. 4,319,067 issued April 18, 2006) for its NATWEST mark. Therefore, the Panel finds Complainant has established rights in its NATWEST mark under Policy ¶ 4(a)(i). Complainant alleges Respondent’s <natwest-ukbank.com> domain name is confusingly similar to Complainant’s NATWEST mark. The disputed domain name adds to Complainant’s mark a geographical abbreviation “uk” and a descriptive term “bank,” both of which describe Complainant’s financial services business in the United Kingdom. The Panel finds the additions of a generic term and a geographical abbreviation fail to adequately distinguish the disputed domain name from Complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). Respondent also adds a hyphen and the generic top-level domain (“gTLD”) “.com” to Complainant’s NATWEST mark. The Panel further finds the additions of a hyphen or a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds Respondent’s <natwest-ukbank.com> domain name is confusingly similar to Complainant’s NATWEST mark pursuant to Policy ¶ 4(a)(i). The Panel finds Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has alleged Respondent does not have rights or legitimate interests in the <natwest-ukbank.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Complainant asserts that Respondent is not commonly known by the NATWEST mark or the <natwest-ukbank.com> domain name. The WHOIS information lists Respondent as, “Joseph Montean,” which Complainant argues has no relation to the disputed domain name or to Complainant’s mark. The Panel finds Respondent is not commonly known by the <natwest-ukbank.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Respondent’s <natwest-ukbank.com> domain name resolves to a website featuring a commercial search engine and hyperlinks. The hyperlinks resolve to websites containing links to Complainant and Complainant’s competitors in the financial services industry. Respondent likely receives click-through fees from the search engine and hyperlinks. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). The Panel finds the elements of Policy ¶ 4(a)(ii) have been met. Registration and Use in Bad Faith Respondent’s <natwest-ukbank.com> domain name resolves to a website featuring a commercial search engine and hyperlinks, some of which resolve to links to Complainant and Complainant’s competitors in the financial services industry. Internet users interested in Complainant and Complainant’s financial services may instead purchase financial services from Complainant’s competitors because of Respondent’s use of the confusingly similar disputed domain name. The Panel finds Respondent’s use of the disputed domain name disrupts Complainant’s financial services business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Complainant contends, and the Panel infers, Respondent receives click-through fees from the commercial search engine and hyperlinks. Internet users, searching for Complainant, may become confused as to Complainant’s affiliation and sponsorship of the website resolving from the disputed domain name. Respondent attempts to profit from that confusion. The Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <natwest-ukbank.com> domain name be TRANSFERRED from Respondent to Complainant. The Honorable Charles K. McCotter, Jr. (Ret.), Panelist Dated: November 2, 2009 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.