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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> National Westminster Bank Plc v 2catchafly [2006] DRS 3390 (3 April 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3390.html Cite as: [2006] DRS 3390

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Nominet UK Dispute Resolution Service
DRS 03390
National Westminster Bank Plc. v 2catchafly
Decision of Independent Expert
1. Parties




Complainant: National Westminster Bank Plc

Country: GB

Respondent: 2catchafly

2. Disputed Domain Name

The domain name in dispute is:

3. Procedural Background

On 31 January 2006 the Complaint was lodged with Nominet UK in accordance with the Nominet UK Dispute Resolution Service Policy (the "DRS Policy") and hard copies of the Complaint were received in full on 1 February 2006.

On 1 February 2006 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service ("the DRS Procedure") had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.

On 27 February 2006 as no Response had been received from the Respondent by

Nominet UK, the Complainant was advised accordingly. 

On 8 March 2006 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.

On 10 March James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure

On 23 March 2006, the Expert was informed by Nominet UK that the Complainant wished to make a further non-standard submission under paragraph 13b of the Nominet UK Procedure for the Conduct of Proceedings Under the Dispute Resolution Service. The Expert determined that since the Complaint as filed contained sufficient evidence to allow the Complainant to succeed any additional non-standard submission was unnecessary.

4. The Facts

Originally known as National Westminster Bank, the Complainant was formed as the result of a merger in 1968. The Complainant has been registered at Companies House under the name "National Westminster Bank Public Limited Company" since 1968 and it adopted the "NatWest" title in the 1990s .

The Complainant is part of the fifth-largest financial services group in the world and has more than 1,600 branches. It offers a wide range of financial products and services, including loans and related services, to individual and institutional investors

The Complainant is the owner of almost 100 UK registered trademarks consisting of or incorporating the name NATWEST including:

•    UK registered Trade Mark No. 1021601 NATWEST (filed 3 December 1973) and registered in class 16 in respect of "paper, paper articles and cardboard articles, all included in class 16; printed matter and stationary.";

•    UK registered Trade Mark No. 1278207 series NATWEST, NAT WEST, NatWest, Nat West, registered on 29 January 1990 in class 35 in respect of "consultancy and information services, all relating to business and commerce"; and

•    UK registered Trade Mark No. 1278208, series NATWEST, NAT WEST, NatWest, Nat West, registered 29 January 1990, in class 36 in respect of "financial services included in Class 36".

The Complainant owns the Internet domain name registration registered prior to August 1996, and its affiliate The Royal Bank of Scotland Plc is the registered owner of the Internet domain name , created 11 February 1997.

As no response has been delivered, there no information available about the Respondent except for that set out in the domain name registration details and information submitted by the Complainant, being the results of research carried out by an enquiry agent appointed by the Complainant. The domain name in issue was registered by the Respondent on 8 June 2004 and resolves to a website that provides links to competitors of the Complainant.

5. The Parties' Contentions

Complainant's Submissions

The Complainant claims that it has Rights in respect of the name and mark NATWEST, which is similar to the domain name in issue and that the domain name in issue, in the hands of the Respondent is an Abusive Registration. The Complainant requests that the domain name be transferred to the Complainant

The Complainant submits that it has been trading continuously under the NATWEST name since the 1990s. By virtue of its role, for decades, as a major presence in financial markets, its longstanding commitment to the provision of quality financial products and services, and its significant commitment to the marketing and advertising of the NATWEST name, the Complainant has built up substantial goodwill in that name.

The Complainant submits that it is the owner of nearly 100 registered Trade Marks that consist of or incorporate the NATWEST name and has provided evidence of the registration of the abovementioned registered Trade Marks Nos. 1021601, 1278207 and 1278208 in the form of printouts from the UK Patent Office website.

The Complainant further submits that its ownership of the Internet domain name , that was registered prior to August 1996, and the ownership by one its affiliate companies of the gTLD Internet domain name , created 11 February 1997 is further evidence of its Rights in the mark and name NATWEST. The Complainant has submitted printouts of WHOIS searches against both of these Internet domain name registrations.

The Complainant submits that the domain name in issue is similar to the Complainant's NATWEST name and mark. The Complainant submits that the Respondent has simply added the generic term "loans" to the word "NATWEST". It is submitted that notwithstanding the addition of the generic word "loans" the domain name still strongly conveys the impression that it is sponsored by, or associated with, the Complainant.

The Complainant further points out that the first part of the domain name is identical to the Complainants own Internet domain name registration .

The name NATWEST which is a common element of Complainant's registered trademark rights and which is present throughout its business, is the dominant and distinctive element in the domain name in issue. The generic term "loans" is indicative of, and closely associated with, the Complainant's financial services business, and use of a name or mark combining the word NATWEST with the term "loans" in the Respondent's domain name implies a clear connection with the Complainant's business.

Furthermore the Complainant submits that the domain name is apparently targeted toward Internet users who, knowing that the Complainant is engaged in the business of offering loan services to current and future customers, will add the generic term "loans" to the NATWEST portion of the Complainant's domain name in an effort to access this line of the Complainant's business. Such users will find themselves at the Respondent's web page, which contains a directory to the websites of certain of the Complainant's competitors.

The Complainant points to the fact that the Respondent registered the domain name on 8 June 2004 – long after the Complainant first acquired rights to the NATWEST name and mark. In support of this assertion the Complainant has submitted the WHOIS database details for the domain name registration.

The Complainant submits that the Respondent has no apparent rights to the NATWEST name and that the domain name, in the hands of the Respondent, is an Abusive Registration because it was registered in a manner that, at the time the registration took place, took unfair advantage of and was unfairly detrimental to the Complainant's rights and because the domain name has been used in a manner that takes unfair advantage of and is unfairly detrimental to the Complainant's rights.

In support of these allegations the Complainant states that firstly, it appears that the Respondent has registered the domain name primarily for the purpose of unfairly disrupting the Complainant's business and the domain name threatens to disrupt the Complainant's business by improperly directing the Complainants current and prospective customers to web sites operated by the Complainant's competitors.

The domain name is targeted toward Internet users seeking to access a website for loan services provided by Complainant. Such users, however, are taken to the Respondent's website – which contains, under the brand "pocket lolly," directories of and advertising for financial products and services offered by competitors of Complainant.

As of 27 January 2006, for instance, the domain name resolved to a website providing information about, and links to the websites of, numerous companies providing loan services in competition with Complainant. The Complainant has submitted screenshots from the website to which the domain name resolved, together with screenshots of certain of the websites to which that site, in turn, provided links. The website is established with a "pocket lolly" banner (a "pocket lolly website").

Secondly, the Complainant submits that the Respondent is using the domain name in a way that has confused people into believing, and has the potential to confuse people into believing, that the domain name is registered to the Complainant, is operated or authorized by Complainant, or is otherwise connected with Complainant. Given that the domain name simply combines the mark NATWEST and the generic term "loans," it strongly suggests that it corresponds to a website covering loan services provided by the Complainant. An Internet user intending to access the Complainant's website could find himself/herself at the Respondent's website without realizing that the Respondent's website is not Complainant's official website. Moreover, the content of the Respondent's website, because it consists of information and advertising concerning products and services similar to those offered by the Complainant, would not necessarily alert the user to this error. Further, even if an Internet user realized that it was not the Complainant's official website, he/she still could be confused into believing that Complainant was in some way associated with the domain name, given these substantial similarities.

The Complainant further refers to a previous Nominet UK DRS case, Whittard of Chelsea Plc v. Keith Szlamp, DRS 02297 (2 March 2005) in which the Complainant states a Nominet-appointed Expert ordered the transfer of a domain name that resolved to another "pocket lolly" website

Thirdly, the Complainant submits that it has caused an investigation to be conducted by an enquiry agent who has submitted a report in which it is claimed that investigations have disclosed that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names that correspond to well-known names and trademarks in which the Respondent has no apparent rights. The report furthermore states that there is evidence that the Respondent's domain name registration is part of a widespread and interrelated scheme pursuant to which hundreds of domain names closely resembling the names of well-known entities with rights to the names are registered by the Respondent and others with no apparent rights to the names and frequently made to resolve to "pocket lolly" websites containing links to competing entities.

The enquiry agent's research has revealed inter alia that the Respondent and others with whom Respondent seems to be connected have registered hundreds of domain names, many of which closely resemble the names of well-known entities and resolve to "pocket lolly" websites.

Respondent's Submissions

The Respondent has not filed any Response.

6. Discussion and Findings:

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. that

i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

The Complainant is the owner of numerous registered trademarks consisting of or incorporating the word NATWEST, including UK registered Trade Mark No. 1021601 NATWEST, filed as early as 3 December 1973 and registered in class 16 in respect of "paper, paper articles and cardboard articles, all included in class 16; printed matter and stationary."

Furthermore the Complainant subsequently adopted that word as its trading name and has been continuously trading under the NATWEST name since the 1990s. During that time the Complainant has developed a significant reputation in the use of the NATWEST mark and name in the financial services industry and its business includes the provision of loans.

It is clear that the domain name in issue is similar to the Complainants mark, consisting of the identical word "natwest" together with the generic descriptive term "loans". The word "natwest" is the dominant element in the domain name and the similarity of the domain name to the Complainant's mark is compounded by the fact that the additional generic element, the word "loans", is descriptive of an important part in the Complainant's business and the provision of loans is a field of activity in which the Complainant has an established goodwill in the UK market.

Abusive Registration

The DRS Policy defines "Abusive Registration" as meaning

"a Domain Name which either:


i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

The DRS Policy furthermore provides the following non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration:-

" i. circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
 
A.   primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
 
B.  as a blocking registration against a name or mark in which the Complainant has Rights; or
 
C.  primarily for the purpose of unfairly disrupting the business of the Complainant;
 
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
 
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
 
iv. It is independently verified that the Respondent has given false contact details to us…"

In the absence of any explanation from the Respondent, the Complainant must succeed in its claim that the Respondent's registration is an Abusive Registration. It is unlikely that when it registered the domain name in issue on 8 June 2004, the Respondent was unaware of the Complainant's NATWEST trademark and the associated pre-existing Internet domain names and owned by the Complainant and its associated company. It follows that it is unlikely that the Respondent was unaware of the reputation and goodwill of the Complainant's name and mark NATWEST in the financial services market in the UK

By knowingly linking the domain name to a site that offers links to other sites offering financial services, and particularly loans, by competitors of the Complainant, on the balance of probabilities, reason would infer that the primary purpose of registration of that domain name was to unfairly take advantage of the Complainant's reputation and to divert Internet users to the Respondent's website and thereby unfairly disrupt the business of the Complainant.
 
While the Respondent has stated that there are circumstances indicating that the Respondent is using the domain name in a way which has confused people or businesses into believing that the domain name is registered to, operated or authorised by, or otherwise connected with the Complainant, it has not produced any evidence of any actual confusion. That being said, there is a strong likelihood of confusion on the part of Internet users and the indications are that the Respondent, in applying to register the domain name, intended to create such confusion.
 
Furthermore, the evidence of the enquiry agent who carried out research on behalf of the Complainant, would seem to indicate that the Respondent is engaged in a pattern of making Abusive Registrations.

In conclusion therefore, the Complainant has established that the Complainant has rights in respect of the name and mark NATWEST that is similar to the domain name in issue and that the domain name in issue, in the hands of Respondent, is an Abusive Registration.

7. Decision

This Expert therefore directs that the domain name be transferred to the Complainant.

James Bridgeman

Date: 3 April 2006