Complainant is National Westminster Bank Plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Contact Privacy Inc. Customer 0148216678 of Toronto, Canada / Contact Privacy Inc. Customer 0148330018 of Toronto, Canada / Contact Privacy Inc. Customer 0148385680 of Toronto, Canada / Contact Privacy Inc. Customer 0148312519 of Toronto, Canada / Contact Privacy Inc. Customer 0148385700 of Toronto, Canada / Contact Privacy Inc. Customer 0148385786 of Toronto, Canada / Estelle Marshall, Marshall Int of Lichfield, United Kingdom / Magid Mina, Mina Int of Bromley, United Kingdom / Nicola Williams, Williams Int of Southampton, United Kingdom / Lorna Robertson, Robertson Int of Swindon, United Kingdom / Justin Styles, Styles Int of Watford, United Kingdom (collectively “Respondents”).
The disputed domain names <www01-natwestt.com>, <www02-nattwest.com>, <www02-natwestt.com>, <www03-natwestt.com>, <www04-natwestt.com>, <www05-natwestt.com>, <www06-natwestt.com>, <www07-nattwest.com>, and <www3-nattwestt.com> (the “Domain Names”) are registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2017. On July 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 24, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on July 27, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondents of the Complaint, and the proceedings commenced on July 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2017. The Center received a communication by courier on August 2, 2017, dated July 31, 2017, from a third party. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on August 18, 2017.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on August 25, 2017. 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 is a public limited company incorporated in London, United Kingdom and the proprietor of the NATWEST trade mark, and all other trade marks used in connection with the NATWEST brand.
Complainant is the owner of trade mark registrations for NATWEST across various jurisdictions including the United Kingdom, Canada, the European Union and the United States of America (“Complainant’s Mark”). The trade marks relevant to this instant matter are:
TRADE MARK | JURISDICTION TM OFFICE | REGISTRATION NUMBER (DATE) | IC CLASS |
|
NATWEST |
United Kingdom Intellectual Property Office (“UKIPO”) |
1021601 (December 3, 1973) |
16 |
|
NATWEST |
UKIPO |
1278207 (January 29, 1990) |
35 |
|
NATWEST |
UKIPO |
1278208 (January 29, 1990) |
36 |
|
NATWEST & THREE CHEVRONS DESIGN |
Canadian Intellectual Property Office |
TMA828229 (July 17, 2012) |
9, 16, 35, 36, 41, 42, 45 |
|
NATWEST |
European Union Intellectual Property Office (“EUIPO”) |
004319067 (April 18, 2006) |
9, 16, 35, 36, 38, 41, 42 |
|
NATWEST |
United States Patent and Trademark Office |
1241454 (June 7, 1983) |
36 |
In 1968, National Provincial Bank (established 1833) and Westminster Bank (established 1836) merged as National Westminster Bank (Complainant), which began trading under the new name in 1970. Together these banks can trace their history back to the 1650s. It was incorporated as a public limited company in the UK in 1982, and acquired by The Royal Bank of Scotland Group in 2000.
The Domain Names were registered as follows:
<www3-nattwestt.com> - May 10, 2017
<www02-nattwest.com> - May 22, 2017
<www07-nattwest.com> - May 24, 2017
<www01-natwestt.com> )
<www02-natwestt.com> )
<www03-natwestt.com> ) May 31, 2017
<www04-natwestt.com> )
<www05-natwestt.com> )
<www06-natwestt.com> )
Complainant states that it offers its financial services under Complainant’s Mark and has spent a significant amount of money promoting and developing this mark, as well as protecting its intellectual property rights. Complainant has around 7.5 million personal customers and 850,000 small business accounts. It also states that it operates various websites such as “www.natwest.com”, “www.natwestgroup.com", “www.natwestuk.com”, “www.natwestinternational.com” and “www.natwest.co.uk”.
Complainant contends that Complainant’s Mark is a highly distinctive trade mark in possession of substantial inherent and acquired distinctiveness especially within the banking industry, which is evidenced by a Google search of “natwest”, where all top results relate to Complainant.
Complainant claims that Respondents have registered the Domain Names to include purposeful misspellings of Complainant’s Mark, thereby making the Domain Names confusingly similar to Complainant’s Mark. More specifically, the Domain Names vary from Complainant’s Mark by either the addition of an additional letter “t” to the term “natwest”, the addition of the generic term “www” as well as a hyphen, and/or the addition of numbers “0”, “1”, “2”, “3”, “4”, “5”, “6”, and “7”. Complainant submits that this typosquatting is evidence of Respondents’ bad faith registrations.
Complainant states that Respondents are not sponsored by or affiliated with it in any way, and nor has it given Respondents permission to use Complainant’s Mark. Respondents are not commonly known by the Domain Names, which Complainant submits evidences a lack of rights or legitimate interests.
Complainant asserts that prior to this Complaint the domain names <www03-natwestt.com>, <www3-nattwestt.com>, <www02-nattwest.com>, <www02-natwestt.com>, <www01-natwestt.com> and <www06-natwestt.com> previously redirected Internet users to websites that copied exactly Complainant’s websites “www.natwest.com” and “www.nwolb.com” by using the exact same design, color scheme, pictures and text found on Complainant’s websites. Complainant believes that as such, the Domain Names’ websites have purposely been designed to serve as an exact replica of Complainant’s “www.natwest.com” and “www.nwolb.com” websites, all as a means of deceiving Internet users into believing that the Domain Names and their websites are associated with Complainant and Complainant’s Mark.
Complainant contends that in creating the impression that Respondents’ websites were authorized and administered by Complainant, Respondents’ purpose was to deceive unsuspecting visitors into divulging their secure, personal information, by creating websites which were an exact copy of Complainant’s websites with the intention of tricking Complainant’s customers into entering their login details, whole or part of their Personal Identification Number, and customer number. Complainant claims that Respondents have taken advantage of the fame of Complainant’s Marks and the trust and goodwill that Complainant has fostered among consumers to illegitimately increase traffic to Respondents’ websites for personal gain, and to effectively “phish” for personal information from Complainant’s customers. Complainant contends that this use of the Domain Names fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant contends that accordingly, Respondent’s attempt to capitalize on Complainant’s Mark by luring unsuspecting Internet users to its websites in order to obtain personal information, does not constitute a use in connection with a bona fide offering of goods and services or any other legitimate use or interest in the Domain Names. The Domain Names were subsequently the subject of a takedown via the host of the Domain Names on June 6, 2017.
Complainant further states that Respondents are using the domain names <www04-natwestt.com>, <www05-natwestt.com>, and <www07-natwestt.com>, to redirect Internet users to a website that resolves to a blank page or parking page and lacks content. Respondents have failed to make use of these domain names’ websites and have not demonstrated any attempt to make legitimate use of these Domain Names and websites, which Complainant submits is evidence of a lack of rights or legitimate interests in these Domain Names.
Complainant notes that Respondents registered the Domain Names between May 10, 2017 and May 31 2017, which is significantly after Complainant filed for registration of Complainant’s Mark with the UKIPO and the EUIPO, and after Complainant’s registration of its <natwest.com> domain name on February 11, 1997.
Complainant finally asserts that as at the time of the initial filing of the Complaint and prior to it, Respondent had employed a privacy service to hide its identity, which evidences bad faith registration and use.
Respondents did not reply to Complainant’s contentions.
Complainant asserts, and the Panel accepts, that it is highly likely that the Domain Names are being controlled by a single entity, and thus are subject to common control and has requested that the multiple Respondents be consolidated for decision in this one proceeding based on the following:
1. The WhoIs information for the Domain Names shows the Domain Names were all registered in May 2017, with the same registrar (i.e., Tucows Inc.), using the same reseller (Squarespace).
2. All these Domain Names use or used at some point the same privacy provider, Contact Privacy Inc.
3. The WhoIs registrant details on three of the Domain Names have changed since the initial registration date from a privacy provider to individuals (or the other way round) all of whom are residents of the UK and use or have used an email address ending in “@mailinator.com”.
4. Upon filing the Complaint, the Domain Names using the privacy provider Contact Privacy Inc. had their anonymity lifted, and all of them were found to be registered to individuals, residing in the UK and using an email address ending in “@mailinator.com”. Furthermore, all of the said parties had organisations whose name was the individual’s last name with the word “int” appended to it.
5. The Domain Names whose contact information changed since the initial registration in May 2017 did not see a change in Registrar and Name Server information.
6. The websites connected to the Domain Names displayed the exact same content before they were taken down.
7. The Domain Names are very similar in composition and for all intents and purposes identical and display only minor, sequential changes to Complainant’s registered trade mark.
Complainant has established that Complainant’s Mark has been used for many years in connection with its activities within the banking industry. It has also been registered.
Complainant contends that Respondents have registered the Domain Names so as to purposefully misspell Complainant’s Mark, and in so doing render the Domain Names confusingly similar to Complainant’s Mark. As Complainant rightly points out the Domain Names vary from Complainant’s Mark by either the addition of an additional letter “t” to NATWEST, the addition of the element “www” or by adding a hyphen, and/or one of the numbers “0” - “7” (inclusive). Complainant contends that this amounts to typosquatting.
There is clear merit in this argument and Respondents do not deny it. On this basis, it is found that:
a) Complainant has rights in respect of Complainant’s Mark.
b) The Domain Names are not identical to but for the reasons set out above confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
As noted above, Complainant contends that Respondents are using the domain names <www04-natwestt.com>, <www05-natwestt.com>, and <www07-natwestt.com>, to redirect Internet users to a website that resolves to a blank page or parking page and lacks content. On that basis Complainant argues that Respondents have failed to make use of these domain names’ websites and has not demonstrated any attempt to make legitimate use of these Domain Names and websites. The domain names <www03-natwestt.com>, <www3-nattwestt.com>, <www02-nattwest.com>, <www02-natwestt.com>, <www01-natwestt.com> and <www06-natwestt.com> similarly do not resolve to an active page, and as evidenced by Complainant, previously redirected Internet users to websites that copied Complainant’s websites, soliciting Internet users to enter their personal identification information.
This permits the Panel to infer that Respondents lack rights or legitimate interests in the Domain Names. It is apparent that by virtue of Complainant’s trade mark rights and business interests in relation to banking that an unrelated entity using one or more similar domain names is likely to lead to members of the public being confused and deceived.
It is reasonable to infer that Respondents’ previous use of the Domain Names was in no way legitimate and that by using a range of deliberately similar versions of Complainant’s Mark and Complainant’s goodwill or reputation it will attract Internet traffic. Again, these assertions are not disputed by Respondents.
The Panel is of the view that the Domain Names have employed as a means of diverting Internet customers. In those circumstances, it is difficult to see how Respondents’ conduct could be characterized as legitimate.
On this basis, it is found that Respondents have no rights or legitimate interests in the Domain Names.
The Panel is satisfied that the second element of the Policy has been met.
The Panel concludes that Respondents have intentionally attempted to attract for commercial gain Internet users to certain pages or landing sites not related to Complainant and thereby creating a likelihood of confusion with Complainant and/or Complainant’s Mark.
The Panel finds that Respondents registered and are using the Domain Names to take bad faith advantage of Internet users who may wish to communicate with or use Complainant’s banking and related services and that these Internet users are likely to be attracted to the said pages or landing sites or other online presence and be misled as to their origins, sponsorship or association. In the context of the present case, the Panel finds, with regard to those Domain Names that do not appear to have been used in connection with any active website, that there is no plausible bona fide use that Respondents could make of those passively held Domain Names.
The Panel thus finds that the third limb of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, namely <www01-natwestt.com>, <www02-nattwest.com>, <www02-natwestt.com>, <www03-natwestt.com>, <www04-natwestt.com>, <www05-natwestt.com>, <www06-natwestt.com>, <www07-nattwest.com>, and <www3-nattwestt.com> be transferred to Complainant.
Clive L. Elliott Q.C.
Sole Panelist
Date: September 12, 2017