Complainant is National Westminster Bank plc, of London, United Kingdom of Great Britain and Ireland, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Adeolu Ajai, of Lagos, Nigeria.
The disputed domain name <natwesttransfer.com> (the "Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2014. On October 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 21, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 18, 2014.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 1, 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.
Complainant states that it "is a public limited company incorporated in London… offer[ing] its financial services under the mark 'NATWEST'" to "around 7.5 million personal customers and 850,000 small business accounts." Complainant further states that it "was recently ranked number 39 in the list of the UK's most valuable brands" and that it operates websites using the domain names <natwest.com>, <natwestgroup.com> <natwestuk.com>, <natwestinternational.com> and <natwest.co.uk>.
Complainant states, and provides evidence in support thereof, that it is the owner of numerous registrations for the trademark NATWEST (the "NATWEST Mark") including OHIM Reg. No. 004319067 in the European Union (registered on April 18, 2006).
Complainant states, and provides evidence in support thereof, that "Respondent used the Domain Name to 'phish' for financial information in an attempt to defraud the Complainant's customers" by "us[ing] the Domain Name to pass itself off as the Complainant in order to defraud Complainant's customers through a fraudulent website identical, or similar, to the Complainant's."
Complainant states, and provides evidence in support thereof, that it sent a demand letter to Respondent regarding the Disputed Domain Name on September 21, 2014, and a reminder on September 29, 2014, but Respondent did not respond.
The Disputed Domain Name was registered on August 12, 2014.
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because "[t]he Domain Name comprise [sic] the term 'natwest', identical to the Complainant's registered trademark NATWEST… with the addition of a suffix closely related to the Complainant, namely 'transfer'." Further, "considering that the Complainant's main core of business is banking, where transfer of funds is common course of business, the addition of [the word 'transfer'] is rather fitted to strengthen the impression of association with the Complainant."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name"; "[n]or has the Complainant found anything that would suggest that the Respondent has been using NATWEST in any other ways that would give it any legitimate rights in the name"; "[t]here is no evidence in the record suggesting that the Respondent is commonly known by the Domain Name"; "Respondent has used the Domain Name to pass itself off as the Complainant in order to defraud Complainant's customers through a fraudulent website identical, or similar, to the Complainant's"; and "Respondent used the Domain Name to 'phish' for financial information in an attempt to defraud the Complainant's customers."
- The Disputed Domain Name has been registered and is being used in bad faith because, inter alia, "[b]y utilizing Complainant's registered trademark, Respondent was using the Domain Name to deceive the Complainant's customers and manipulate them into divulging sensitive financial information."
Respondent did not reply to Complainant's contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, as well as supporting documentation, it is apparent that Complainant has rights in and to the NATWEST Mark.
As to whether the Disputed Domain Name is identical or confusingly similar to the NATWEST Mark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., "natwesttransfer"), as it is well-established that the top-level domain name ".com" may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 ("WIPO Overview 2.0") ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.").
This Panel agrees here with the longstanding decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which found that "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Although the Disputed Domain Name contains an additional word (that is, "transfer"), "a wide variety of panelists have considered that the addition of generic words to trademarks was not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant." Wikimedia Foundation Inc. v. commens, Nan Jiang, WIPO Case No. D2009-1699. Indeed, because the word "transfer" is related to Complainant's financial services business, this word "exacerbates the confusing similarity between the [Complainant's] trademark and the Domain Name and increases the risk of confusion between the Domain Name and the… trademark[]." Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that, inter alia, "Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name"; "[n]or has the Complainant found anything that would suggest that the Respondent has been using NATWEST in any other ways that would give it any legitimate rights in the name"; "[t]here is no evidence in the record suggesting that the Respondent is commonly known by the Domain Name"; "Respondent has used the Domain Name to pass itself off as the Complainant in order to defraud Complainant's customers through a fraudulent website identical, or similar, to the Complainant's"; and "Respondent used the Domain Name to 'phish' for financial information in an attempt to defraud the Complainant's customers."
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence from Respondent to the contrary, and in light of the discussion that follows, the Panel is satisfied that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's 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 registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Here, Complainant implies that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy, that is, "by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's 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 registrant's website or location or of a product or service on the registrant's website or location." Complainant's argument that Respondent has used the Disputed Domain Name in connection with a phishing website is supported by the record and not disputed by Respondent. As previous panels have said, "[t]he use of a domain name (that is likely to be confused with the complainant's mark) for purposes of a phishing scheme satisfies paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use. PCL Construction Holdings Ltd. v. Chye Ling, WIPO Case No. D2012-2498; and "[a] respondent is in bad faith in using a domain name to redirect Internet users to a website that imitates complainant's billing website and is used to fraudulently acquire personal information from complainant's clients." The Royal Bank of Scotland Group Plc v. Mike Steinbock, WIPO Case No. D2013-0121 (internal punctuation and citation omitted).
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 <natwesttransfer.com> be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: December 15, 2014