WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Westminster Bank plc v. Royal Bank of Scotland

Case No. D2013-0123

1. The Parties

1.1 The Complainant is National Westminster Bank plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.

1.2 The formal Respondent in these proceedings is […], Royal Bank of Scotland, Edinburgh, of United Kingdom of Great Britain and Northern Ireland. However, as is explained in greater detail in this decision, this is not the real name and address of the underlying registrant in this case.

2. The Domain Name and Registrar

2.1 The disputed domain name <natwestgb.com> (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2013. On January 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that the formal Respondent is listed as the registrant and providing the contact details.

3.2 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”).

3.3 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 January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2013.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 8, 2013. 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

4.1 The Complainant is a well known bank in the United Kingdom. It has 7.5 million personal customers and 850,000 small business accounts. It was formed as a result of a merger between two existing banks in 1968. It began trading under the name “National Westminster Bank” in 1970 and was incorporated as a public limited company in 1982. In 2000 it became part of The Royal Bank of Scotland Group.

4.2 As well as trading under its full registered name, it also uses the term “NatWest”. Indeed, the Panel is prepared to take judicial notice of the fact that this is the name by which it is probably most commonly known by the public in the United Kingdom.

4.3. The Complainant holds various trade marks around the world that comprise or incorporate the term “NatWest”. These include UK registered trade mark no 1278208 filed on October 1, 1986 in respect of financial services in Class 36 in respect of the word marks “NATWEST” NAT WEST”, “NatWest” and “NatWest”. It operates its own website using the domain names <natwest.com> and <natwest.co.uk>.

4.4 The Domain Name was registered on September 26, 2012. Although the publically available WhoIs details for the Domain Name suggest that the Domain Name was registered by someone connected to the Complainant’s parent company, it would appear that a false name and address have been given by whoever is the real underlying registrant in this case. Not only has this been confirmed by the Complainant, but it is also in part apparent from the fact that the WhoIs contact details provides a contact email address (i.e. […]@live.co.uk) that is not associated either with the Complainant or its parent company.

4.5 On October 10, 2012 a letter was sent on Royal Bank of Scotland Group Plc letterhead to this email address alleging that the Domain Name infringed the NATWEST trade mark and demanding transfer of the Domain Name. No response to that letter was forthcoming.

4.6 As at the date of the Complaint and at least since January 2013, the webpage displayed from the Domain Name has included the following text:

“…we can help!

Currently we are undergoing a system upgrade and maintenance for improved performances and enhanced services …”

At the bottom of the page is also displayed the notice “© 2012 Natwest”.

4.7 As at the date of this decision, no webpage appears to be operating from the Domain Name.

5. Parties’ Contentions

A. Complainant

5.1 In its Complaint, the Complainant describes its corporate history, activities and trade marks. It claims that the NATWEST mark has “substantial inherent and acquired distinctiveness” and contends that this is a well known mark under Article 6bis of the Paris Convention. Various previous UDRP decisions involving the Complainant are referred to in this respect.

5.2 The Complainant contends that the dominant part of the Domain Name is the term “natwest”, which is identical to its registered trade mark, to which the letters “gb” have been added. The letters “gb” are likely to be understood merely as a common abbreviation for “Great Britain”, which is the main market for the Complainant’s services. As such, these letters are said not to detract from the overall impression of association with the Complainant, but, if anything, strengthen it. Accordingly, the Complainant maintains that the Domain Name is confusingly similar to the Complainant’s trade marks.

5.3 So far as rights or legitimate interests are concerned, the Complainant denies that the Respondent has any registered trade mark corresponding to the Domain Name, or that the Respondent is commonly known by the Domain Name.

5.4 It further contends that the Respondent has “previously used the 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” and has used “the Domain Name to ‘phish’ for customers’ financial information”. This, it is said, is not a bona fide offering of goods or services. However, these claims are not substantiated and the copy of the webpage provided with the Complaint looks somewhat different to the Complainant’s own website. Further, the Complaint then states that “the Complainant is unable to produce any clear evidence that the Domain Name was in fact a phishing site”.

5.5 So far as bad faith is concerned, the Complainant refers to its letter before action dated October 2012 and the fact that no response to that letter was forthcoming. Various UDRP cases are referred to which are said to be authority for the proposition that this indicates bad faith. It also repeats the claim that the Domain Name is being used to engage in a “phishing scam”.

5.6 It asserts that the Domain Name is no longer active, but that “the Complainant will not be able to rest until the Domain Name is removed entirely”. It also refers to “Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions” which is said to be authority for the proposition that the lack of active use does not prevent a finding of bad faith.

5.7 The Complainant also contends that this is a case where the Respondent has incorporated a well known mark into a domain name and in the absence of any plausible explanation for doing so, this of itself is an indication of bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.

6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

A. Identical or Confusingly Similar

6.4 The Panel agrees with the Complainant that the Domain Name can be most sensibly read as the term “NatWest” in conjunction with the term “GB” and that the letters “GB” are most likely to be understood as the commonly used abbreviation for “Great Britain”. Given the Complainant’s NATWEST registered trade marks, the Domain Name is confusingly similar (as that term is understood under the Policy) to a trade mark in which the Complainant has rights. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests and Registered and Used in Bad Faith

6.5 Usually a panel will separately consider the issue of rights or legitimate interests and the issue of bad faith. However, this is a case where it is more convenient to consider these issues together.

6.6 The reason for this is that at the heart of the Complainant’s Complaint is an allegation that whoever is really responsible for the registration of the Domain Name, that person or entity has registered and held the Domain Name as part of a dishonest scheme to impersonate the Complainant for its own financial gain. If this is correct, it is clear that whoever the registrant may be, it has no right or legitimate interest in the Domain Name and that the Domain Name has been both registered and used in bad faith.

6.7 In advancing this case, the Complainant has contended that the intended dishonest scheme is one of “phishing”; i.e. to deceive the Complainant’s customers into disclosing sensitive financial information. It is a claim that is not really substantiated and (as already been recorded) at one stage the Complainant even admits that it cannot produce clear evidence of this.

6.8 Nevertheless, there is more than sufficient evidence before the Panel to support the claim that dishonest impersonation of the Complainant is taking place. First, there is the fact that the only sensible interpretation of the Domain Name is that the term “NatWest” in the Domain Name is being used to refer to the Complainant and its marks. Second, the Complainant has provided a copy of a webpage operating from the Domain Name that contains the text “© 2012 NatWest”. The Panel accepts that this can only sensibly be read as a false statement to the effect that the webpage is one for which the Complainant was responsible and/or held the rights.

6.9 Third, and perhaps most compelling, is the fact that the false registration and contact details have been recorded in the WhoIs database for the Domain Name. The issue here is not just that the true registrant of the Domain Name is not identified. It is that the details provided are intended positively to represent that the Domain Name is controlled by the Complainant’s parent company, when that representation is clearly untrue.

6.10 Why exactly the underlying registrant has engaged in this dishonest impersonation is not clear. Perhaps the Complainant’s fears that this might be used in conjunction with some phishing are well founded. However, whatever the exact reasons, the Panel accepts that it is more likely than not that this impersonation is with a view to the registrant’s financial gain. Certainly there is no obvious other explanation for such conduct and no explanation or evidence to the contrary has been put before the Panel in this respect.

6.11 In the circumstances the Complainant has made out the requirements of both paragraph 4(a)(ii) and paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 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, <natwestgb.com> be transferred to the Complainant.

Matthew S. HarrisSole Panelist
Date: March 13, 2013