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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Bank of Scotland Group Plc v Leona [2007] DRS 4185 (19 January 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4185.html Cite as: [2007] DRS 4185 |
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Nominet UK Dispute Resolution Service
DRS 04185
The Royal Bank of Scotland Group plc v. John Leona
Decision of Independent Expert
Complainant 1: The Royal Bank of Scotland Group plc
United Kingdom
Complainant 2: National Westminster Bank plc
United Kingdom
Respondent: John Leona
USA
natwest-onlineb.co.uk
On 6 November 2006 the Complaint was lodged with Nominet in accordance with the Dispute Resolution Policy. Hard copies of the Complaint were received in full on 6 November 2006.
On 8 November 2006 complaint documents were generated for service upon the Respondent. No Response was received by the due date of 1 December 2006. On 1 December 2006 No Response to Complainant documents were generated and served upon the Respondent. The Expert has seen a copy of an email sent by Nominet on 1 December to the Respondent enclosing the No Response to Complainant documents and a copy of an envelope sent by airmail to the Respondent post-marked 1 December 2006 but marked "Return to Sender" dated 12 December 2006.
On 4 January 2007 Clive Thorne was selected as the Expert. He has confirmed his independence and willingness to act. The Expert understands that the necessary fees were received from the Complainant on 2 January 2007. There are no interlocutory or interim matters outstanding.
In the absence of a Response or any other communication from the Respondent the Expert proceeds to determine the dispute on the basis of the Complaint filed by the Complainants.
The factual background is summarised in the Complaint. The domain name the subject of the dispute was registered by the Respondent on 25 April 2006. This is clear from the Whois printout dated 7 November 2006 and set out at Tab 6 to the Expert's papers.
There are two Complainants both of which are members of the same banking group. The First Complainant is the Royal Bank of Scotland Group plc ("RBS"). RBS is one of the world's leading financial service providers and one of the oldest banks in the UK. In addition to its strong UK presence RBS has offices elsewhere in Europe and in the United States and Asia. At Annex B to the Complaint is set out a printout of information about RBS's business activities. It originally consisted of a number of banks in Scotland and in England and Wales but in 1985 traded in the United Kingdom as a single entity; The Royal Bank of Scotland.
The Second Complainant is National Westminster Bank plc ("NatWest"). NatWest was formed in 1968 as a result of a merger between National Provincial Bank, District Bank and Westminster Bank. It began trading as the National Westminster Bank in 1970. In 1995 NatWest was restyled NatWest Group. In 2000 RBS acquired NatWest in the "biggest takeover in the history of British banking" to create a "huge group with a highly diversified portfolio of services for personal, business and corporate customers".
After the merger of RBS and NatWest the businesses of the two groups were combined and the "enormous "task of integrating their IT systems began. It was finished in November 2002. However NatWest Retail Bank continues to operate as a distinct and separate brand in the UK.
Evidence is given by the Complainants that NatWest trades online and offers online services including internet banking, credit cards, online and global banking services. Additionally NatWest is involved in international banking including international cash management, currency accounts, international payments, trade solutions, global travel money services, global banking services and shipping services.
To support its Complaint the Complainants rely upon two marks; "NatWest" and "NatWest Online". Evidence is given of numerous trade mark registrations that NatWest has for its "NatWest" family of marks including registrations with the UK Patent Office and the European Community trademark office ("OHIM"). The Expert has looked at the printouts setting out details of these registrations going as far back as 1973 covering a wide range of financial services including internet banking and which are set out at Annex G to the Complaint. The Complainant has also annexed at Annex H a report listing NatWest's worldwide trademark registrations and applications for its "NatWest" and related marks.
In particular NatWest has registered the trademarks "NatWest Online" and "NatWest Business Online" with the United Kingdom Patent Office. Printouts of these are set out at Annex G to the Complaint.
Evidence is also given by the Complainants to the effect that they own numerous domain name registrations featuring the NatWest mark including "natwest.co.uk" (registered to August 1996) and natwest.com created on 11 February 1997. Copies of the Whois records for these domain names are annexed at Annex I to the Complaint. In connection with the promotion and operation of their businesses the Complainants also own the domain names "natwestOnline.com, natwestOnline.org.uk and natwestOnline.net", each of which resolves to NatWest's primary website at "natwest.com" where internet users can access NatWest's online banking services. The Complainants own additional domain name registrations relating to NatWest's online banking services including "natwestOnline.co.uk."
Having considered the evidence of the Complainants' trademark rights set out in the Complaint, and in the absence of a Response the Expert is satisfied:-
(i) the Complainants have registered trade mark rights in the marks "NatWest" and "NatWest Online" in addition to other marks incorporating "NatWest".
(ii) that as a result of trading both in the United Kingdom and internationally the Complainants have acquired unregistered trade mark rights in the mark "NatWest" and other marks incorporating the mark "NatWest".
Little is known about the Respondent save that at Exhibit J to the Complaint a copy of the web page to which the domain name in dispute currently resolves is attached. This simply states that the page cannot be displayed. Also at Tab 7 to the Expert's papers is a printout of the website at www.natwest-onlineb.co.uk which states that "server not found - firefox can't find the server at www. natwest-onlineb.co.uk".
Under paragraph 2(a) of the DRS Policy a Complainant has the burden of proof of showing that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Expert proceeds to deal with each of them in turn.
(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name
For the reasons set out above the Expert is satisfied that the Complainants have trade mark rights in respect of, inter alia, "NatWest" and "NatWest Online".
The Complainant submits that the domain name in dispute is similar to those marks in that the Respondent has simply added a "b" to "online" and a hyphen between "natwest" and "online". As a result these minor changes do not change the overall impression of the domain name which strongly conveys the impression that it is sponsored by, or associated with, the Complainants because the Complainants' marks will be perceived by internet users as the most distinctive and dominant component of the domain name.
In particular the Complainants rely upon a previous expert decision: National Westminster Bank plc v. Johnny Megaline (DRS 03525 9 May 2006) where there was a finding that the addition of the letter "b" whether used as an abbreviation for "bank" or "business" is insignificant and insufficient in its analysis of similarity of "natwestbonline.co.uk" to the Complainants' marks.
The Expert accepts this submission and finds that the Complainants' marks "NatWest" and "NatWest Online" are the dominant and distinctive element in the domain name in dispute. It follows that the Complainant has rights in respect of a name or mark which is identical or similar to the domain name.
(ii) The Domain Name, in the hands of the Respondent is an Abusive Registration
At paragraph 3(a) of the DRS Policy is set out a non-exhaustive list of factors which may be evidence that the domain is an abusive registration.
In particular the Complainants submit the following:
(1) The domain name in dispute was registered in a manner that at the time that the registration took place it took unfair advantage of and was unfairly detrimental to the Complainant's rights and has also been used in a manner that takes unfair advantage of and is unfairly detrimental to the Complainants' rights.
(2) The Respondent's registration was made "primarily for the purpose of unfairly disrupting the Complainant's business". It submits that the Respondent registered the domain name to perpetrate a fraud by using the domain name to attract internet users seeking access to NatWest's online banking services so that users were taken to the Respondent's "fraudulent website" which purported to be a website owned and operated by NatWest.
(3) The Respondent used and is using the domain name in a way that has confused people into believing or is extremely likely to confuse people into believing that the domain name is registered to the Complainants or operated or authorised by the Complainants or otherwise connected with the Complainants.
(4) The Respondent's domain name currently resolves to an inactive web page which also has great potential for confusion and thus serious disruption to the Complainant's business. By way of example NatWest customers may access the domain name only to be confused and aggravated by what they perceive as an inactive site.
(5) The Respondent's registration and use of the domain name takes unfair advantage of the Complainants' rights as given the strength of the Complainants' marks and their confusing similarity to the domain name the registration could have been for no purpose "other than an intention that the domain name be confused with the Complainants' marks thereby intending primarily to divert business away from the Complainants".
(6) The domain name is an abusive registration because the Respondent "presumably was using it to benefit commercially from its unauthorised and illegitimate use of the Complainant's marks and associated goodwill".
In the absence of a Response and no information beyond the existence of the Respondent's website and the domain name in dispute the Expert has no alternative but to determine the Complaint on the basis of the Complainants' submissions.
In the Expert's view the two most compelling submissions are that because of the very well known international reputation and nature of the Complainants' marks and the confusing similarity between the marks and the domain name in dispute the registration could have been for no purpose other than an intention that the domain name be used to establish confusion with the Complainants' marks. Inevitably the effect of such confusion would be to unfairly disrupt the Complainants' business.
The Expert also accepts the submission that because the domain name in dispute currently resolves to an inactive web page this is likely to cause confusion and aggravation to online customers of the Complainants. As the Complainants submit this may well have a detrimental effect including a potential loss of customers. In support of this submission the Complainants rely upon a previous Nominet decision Amazon.com Inc. v. Microplace Limited (DRS 01781 20 July 2004) where the Expert found that because the domain name in dispute in that case resolved to an inactive site it had serious potential for disrupting the Complainant's business. To some extent each case is dependent upon its own facts. However, it seems to the Expert that the principle contained in the submission is sound and that there is "great potential" for confusion and serious disruption to the Complainants' business.
It follows that the Complainant has succeeded in showing that the domain name in the hands of the Respondent is an abusive registration.
The Complainants have requested that the disputed Domain Name should be transferred to the Complainant RBS. Accordingly, the Expert orders that the Domain Name "natwest-onlineb.co.uk" be transferred to the Complainant RBS.
Clive Duncan Thorne
Expert
19 January 2007