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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> National Westminster Bank plc v Rogers [2007] DRS 4625 (7 June 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4625.html Cite as: [2007] DRS 4625

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Nominet UK Dispute Resolution Service

DRS 04625

National Westminster Bank plc

–v–

Mr. Kenny Rogers

Decision of Independent Expert

1. Parties:

Complainant:	National Westminster Bank plc
Address:
Postcode:
Country:	GB
Respondent:	Mr Kenny Rogers
Address:
Postcode:
Country:	GB

2. Domain Name: natwestuk-bank.co.uk ("the Domain Name").

3. Procedural Background:

The Complaint was lodged with Nominet on 19 April 2007. Nominet validated the Complaint and notified the Respondent of the Complaint on 20 April 2007 and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent failed to respond. Mediation not being possible in those circumstances, Nominet so informed the Complainant and on 21 May 2007 the Complainant lodged the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy") and paragraphs 5(d) and 8 of the Nominet UK Dispute Resolution Service Procedure ("the Procedure").

Andrew Murray, the undersigned, ("the Expert") has confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. On 30 May 2007, Nominet invited the undersigned, the Expert, to provide a decision on this case.

4. Outstanding Formal/Procedural Issues (if any):

The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

The Expert has seen copy communications from Nominet to the Respondent and has no reason to doubt that the Respondent has been properly notified of the Complaint in accordance with paragraphs 2 and 4(a) of the Procedure.

Paragraph 15(b) of the Procedure provides, inter alia, that: "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint." There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the Complaint and notwithstanding the absence of a Response.

The lack of a Response does not entitle the Complainant to a default judgement. The Complainant must still prove their case to the required degree. The Expert will evaluate the Complainant's evidence on its own merits and will draw reasonable inferences from it in accordance with paragraph 12(b) of the Procedure. Paragraph 15(c) of the Procedure provides that: "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure …….. , the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."

Generally, the absence of a Response from the Respondent does not, in the Expert's view, entitle an Expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit. In this case it seems to the Expert that the probable facts speak for themselves and that it is not necessary to draw any special inferences. The Expert finds that the probable facts asserted by the Complainant and set out in the following section are indeed facts.

5. The Facts

1. .1 The Complainant was formed as the result of a merger in 1968 and was acquired by The Royal Bank of Scotland Group Plc ("RBS") in 2000.
2. .2 The Complainant is part of the fifth-largest financial services group in the world and offers a wide range of financial products and services to individual and institutional investors through its website and at its more than 1,600 branches.
3. .3 A significant part of the Complainant's business today revolves around its online banking services, through which customers can, among other things, pay bills, effect transfers of funds, organise debts and assets, view account histories, and access multiple accounts.
4. .4 The Complainant is registered at Companies House and has been so registered since 1968.
5. .5 The Domain Name was registered on 24 July 2006 by the Respondent. The Domain Name does not currently resolve to a webpage. Evidence was presented by the Complainant demonstrating that on 4 August 2006 the Domain Name did resolve to an active site clearly designed to pass the site off as being operated by the Complainant.

6. The Parties' Contentions

Complainant:

The Complainant contends that:

The Complainant has rights in the Domain Name because:

6. .1 The Complainant has numerous registrations for its "Natwest" family of marks, including with the UK Patent Office and with the EU Office for Harmonization in the Internal Market. Printouts reflecting certain of these registrations were made available to the Expert.
7. .2 The Complainant also owns numerous domain name registrations featuring its well-known "Natwest" mark, including natwest.co.uk (registered prior to August 1996) and, through RBS, natwest.com (registered 11 February 1997.) The Complainant uses these domain names to promote and operate its online financial business.
8. .3 The Domain Name is similar to the Complainant's name and mark. Numerous decisions by previous panels establish that a comparison of a domain name and a mark in which the complainant has rights disregards the first (.uk) and second (.co) levels of the domain name and any hyphens that may appear in the domain name. See: Enterprise Rent-a-Car Co. v. Alliance Ltd / Mr Rajiv Chugh [2006] DRS 03846 in which the Expert noted that "The first (.uk) and second (.co) levels of the domain name can be disregarded as being wholly generic."; Kohler Mira Limited v. Marc Soper, [2006] DRS 3727 in which the expert ignored hyphens and the domain name suffixes .co, .co.uk and .net . Thus, neither the hyphen nor the first and second level suffixes of the Domain Name distinguish the Domain Name from the Complainant's mark. Likewise, the Domain Name's addition of the generic term "bank," which describes the Complainant's business, and "uk", which is generally regarded as an abbreviation for United Kingdom – the country where the Complainant is based and maintains a strong presence – to the Complainant's distinctive "Natwest" mark does not change the overall impression of the Domain Name, which strongly conveys that it is sponsored by, or associated with, the Complainant. See further Alliance & Leicester plc v. Paul's Cameras [2006] DRS 3280 in which the Expert found the addition of the generic terms 'bank' and 'plc' did not remove the similarity of the respondent's "allianceandleicesterbankplc.co.uk" domain name to the complainant's "Alliance & Leicester" name and Kohler Mira Limited v. Marc Soper [2006] DRS 3727 in which the Expert found that the addition of "uk" in the domain name "mira-uk.co.uk" did not make the disputed domain name dissimilar to the complainant's "Mira" mark. Consequently, the Domain Name is similar to the Complainant's "Natwest" mark.
9. .4 But for the insignificant additions of the geographic indicator "uk", the descriptive term "bank" and a hyphen, the Domain Name is identical to the Complainant's "natwest.co.uk" domain name.
10. .5 The Domain Name's confusing similarity to the Complainant's mark is aggravated by the fact that Respondent has used the Domain Name to operate a fraudulent imitation of the Complainant's website.
11. .6 The Domain Name is apparently targeted toward Internet users who, being unsure of the precise address of the Complainant's website, might by guesswork enter in the address bars on their computers "Natwest" in combination with the generic terms "uk" and "bank" in the hope that that address would take them to the Complainant's website. Such users instead found themselves at the Respondent's web page, which was a fraudulent imitation of the Complainant's legitimate website.
12. .6 The Respondent registered "natwestcards.co.uk" on 24 July 2006 long after the Complainant acquired rights to their name and marks.

6.7 The Respondent has no apparent rights to the Domain Name.

The Domain Name in the hands of the Respondent is abusive as:

13. .8 The Domain Name 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 Complainants' rights and because it has been used in a manner that takes unfair advantage of and is unfairly detrimental to the Complainants' rights.
14. .9 The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant's business, in breach of Paragraph 3(a)(i)(C) of the Policy. Specifically, the Respondent used the Domain Name to attract Internet users seeking access to the Complainant's online banking services to the Respondent's website, which was a fraudulent imitation of the Complainant's website. Prior to its removal, the Respondent's website prominently displayed the Complainant's name and marks (including the use of graphics that appear to have been taken directly from the Complainant's legitimate website) and provided numerous links by which Internet users could contact, and provide personal information such as their bank account numbers and online passwords to the Respondent or those associated with him. The Respondent was capitalising on the Complainant's well-known name and mark by attracting Internet users to his "natwestuk-bank.co.uk" website, deceiving them into believing that they had in fact reached the Complainant's legitimate website, and soliciting information from them – likely in furtherance of additional fraudulent activity. Such use constitutes an abusive registration (see National Westminster Bank Plc v. Johnny Megaline [2006] DRS 03525 in which it was found that the disputed domain name, "natwestbonline.co.uk", which resolved to website that was a fraudulent imitation of the complainant's website, was an abusive registration in part because it unfairly disrupted the business of the complainant).
15. .10 Such use of the Domain Name also unfairly disrupted the Complainant's business by improperly preventing the Complainant's current and prospective customers from reaching the Complainant's legitimate website, thus causing the Complainant to suffer loss of customers and revenue. Accordingly, the Respondent's misuse of the Complainant's mark threatened to damage the Complainant's reputation and to erode the goodwill it has built up in its marks. See Novus Credit Services, Inc. v. Discover Financial Services LLC [2006] DRS 03205 in which the Expert concluded that the respondent's placing of a copy of the complainant's "Discover" website at "discoverfinancial.co.uk" constituted a blatant example of an unfair disruption to the complainant's business.
16. .11 The Respondent used the Domain Name in a way that either confused people into believing, or was extremely likely to confuse people into believing, that the Domain Name was registered to the Complainant, was operated or authorised by the Complainant, or otherwise was connected with Complainant in breach of Paragraph 3(a)(ii) of the Policy. Previous decisions have found such confusion in situations in which a respondent used a domain name to perpetrate a fraud targeting the complainant's customers including National Westminster Bank Plc v. Johnny Megaline [2006] DRS 03525 in which it was found that the respondent's use of the disputed domain name to impersonate the complainant, most probably for the purposes of fraud, was likely to confuse people or businesses into believing his website was associated with the complainant to the serious detriment of complainant's goodwill.
17. .12 The Domain Name currently resolves to an inactive webpage, which also has great potential for confusion and, thus, serious disruption to Complainant's business. For example, the Complainant's current or prospective customers may access the Domain Name only to be confused and aggravated by what they perceive as an inactive site. This may have a detrimental effect on the Complainant's business, including the potential loss of customers. In a similar situation, an Expert has held that the respondent's registration of a domain name, which resolved to an inactive webpage, was abusive due to the potential for disruption of the complainant's business (Amazon.com, Inc. v. Microplace Ltd. t/a Netknowledge [2004] DRS 01781).
18. .13 The Respondent's registration and use of the Domain Name takes unfair advantage of the Complainant's rights because, given the strength of the Complainant's "Natwest" mark, the confusing similarity of the Domain Name to these marks, the fact that "uk" is an abbreviation for the Country in which the Complainant is based and maintains a significant presence, and "bank" describes the Complainant's business, the registration could have been for no purpose other than an intention that the Domain Name be confused with the Complainant's mark, thereby intending primarily to divert business away from the Complainant. (See The Royal Bank of Scotland Group Plc v. Kwan Jin [2006] DRS 03931). Thus, the Respondent's registration of the Domain Name was necessarily made in a manner which took unfair advantage of the Complainant's rights.
19. .14 The Domain Name is an abusive registration because the Respondent presumably benefited commercially from his fraudulent use of the Complainant's mark and associated goodwill. Specifically, the Respondent used the Domain Name to redirect Internet users who were familiar with and searching for the Complainant, including Complainant's current and prospective customers, to a fraudulent website, which falsely purported to be a website owned and operated by the Complainant, where the Respondent solicited personal financial information. This practice, known as "phishing", indicates an abusive registration (see Novus Credit Services, Inc. v. Discover Financial Services LLC [2006] DRS 03205).

Respondent:

6.15 The Respondent has not responded.

7. Discussion and Findings

7.1 General

According to paragraph 2 of the Policy, in order to succeed in this complaint, the Complainant has to prove to the Expert that, on the balance of probabilities 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.

These matters must be proven by the Complainant, notwithstanding the failure by the Respondent to respond.  The effect of the Respondent's default is rather that, under paragraph 15(c) of the Procedure (there being no exceptional circumstances in this case) the Expert is required to draw such inferences from the Respondent's non-compliance as he considers appropriate.

20. 2 Complainant's Rights
21. 2.1 Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. This is usually demonstrated by reference to a trade mark registration or evidence of active trading using the name or mark in question.
22. 2.2 In this case, the Complainant relies upon their registered rights in the mark "Natwest" and in their domain names natwest.co.uk and natwest.com. The Complainant has demonstrated that they hold a series of trade mark registrations at the UK Trade Marks Registry, at EU Office for Harmonisation, as well as many other trade mark registries around the globe in the term "Natwest" all of which predate the registration of the Domain Name.
23. 2.3 The question remains whether the Domain Name is sufficiently similar to the Complainant's name and mark?
24. 2.4 As noted by the Complainant in their Complaint: "[b]ut for the insignificant additions of the geographic indicator "uk", the descriptive term "bank" and a hyphen, the Domain Name is identical to the Complainant's "natwest.co.uk" domain name." 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 Complainant because the Complainant's mark will be perceived by Internet users as the most distinctive and dominant component of the Domain Name.
25. 2.5 The Complainant directs the Expert to several Decisions which have considered similar issues, including Enterprise Rent-a-Car Co. v. Alliance Ltd / Mr Rajiv Chugh [2006] DRS 03846 in which the Expert noted that "The first (.uk) and second (.co) levels of the domain name can be disregarded as being wholly generic."; Kohler Mira Limited v. Marc Soper, [2006] DRS 3727 in which the expert ignored hyphens and the domain name suffixes .co, .co.uk and .net , Alliance & Leicester plc v. Paul's Cameras [2006] DRS 3280 in which the Expert found the addition of the generic terms 'bank' and 'plc' did not remove the similarity of the respondent's "allianceandleicesterbankplc.co.uk" domain name to the complainant's "Alliance & Leicester" name and Kohler Mira Limited v. Marc Soper [2006] DRS 3727 in which the Expert found that the addition of "uk" in the domain name "mira-uk.co.uk" did not make the disputed domain name dissimilar to the complainant's "Mira" mark.
26. 2.6 On the basis of the evidence presented the Expert is satisfied that the Complainant has rights in respect of the mark "Natwest" which is sufficiently similar to the Domain Name in question. Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of a name or mark, which is identical or similar to the Domain Name.

7.3 Abusive Registration

Paragraph 1 of the Policy defines "Abusive Registration" as:-

"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."

Under paragraph 3(a) of the Policy is listed a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The Complainant has indicated that they believe that in particular they may make out a claim under paragraph 3(a)(i)(C):

The Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.

And further under paragraph 3(a)(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.

27. 3.1 Paragraph 3(a)(i)(C)
28. 3.1.1 In making their claim under paragraph 3(a)(i)(C), the Complainant asserts "the Respondent used the Domain Name to attract Internet users seeking access to the Complainant's online banking services to the Respondent's website, which was a fraudulent imitation of the Complainant's website. Prior to its removal, the Respondent's website prominently displayed the Complainant's name and marks (including the use of graphics that appear to have been taken directly from the Complainant's legitimate website) and provided numerous links by which Internet users could contact, and provide personal information such as their bank account numbers and online passwords to the Respondent or those associated with him. The Respondent was capitalising on the Complainant's well-known name and mark by attracting Internet users to his "natwestuk-bank.co.uk" website, deceiving them into believing that they had in fact reached the Complainant's legitimate website, and soliciting information from them - likely in furtherance of additional fraudulent activity." The Complainant then goes on to direct the Expert to the decision in National Westminster Bank Plc v. Johnny Megaline [2006] DRS 03525 where it was found that the domain name was an abusive registration as it resolved to a fraudulent imitation of Complainant's website.
29. 3.1.2 The Expert in National Westminster Bank Plc v. Johnny Megaline, Mr. Steven Maier, found that in that case "The Respondent is using the Domain Name to impersonate the Complainant, most probably for the purposes of fraud. In any event, he is using the Domain Name in a manner that is likely to confuse people or businesses into believing that his website is associated with the Complainant, to the serious detriment of the Complainant's goodwill. The Respondent has failed to answer the Complainant's allegations. Further, there is no evidence of any legitimate use by the Respondent of the Domain Name, whether within the categories set out in paragraph 4 of the Policy or otherwise. I therefore conclude that the Domain Name was registered and/or has been used by the Respondent in a manner which took unfair advantage of, or was unfairly detrimental to, the Complainant's rights and is therefore an Abusive Registration in the hands of the Respondent. The second limb of the test set out in paragraph 2 of the Policy is satisfied accordingly."
30. 3.1.3 It appears to this Expert that this claim is clearly on all-fours with that decision. Although currently the site is inoperative there is overwhelming evidence of previous fraudulent activity taking place on the site associated with the Domain Name and I am concerned that should the Respondent be allowed to retain the Domain Name such activity may resume. The danger of phishing for personal and/or financial data is one of the scourges of the Internet and it would be remiss to take positive action to reduce the risk of such activity resuming at a site associated with this Domain Name. I therefore find that that registration in the hands of the Respondent is abusive under Paragraph 3(a)(i)(C) of the Policy.
31. 3.2 Paragraph 3(a)(ii)
32. .3.2.1 Having found the Complainant has established an Abusive Registration under Paragraph 3(a)(i)(C) it is unnecessary to examine this head of claim.

7.4 Finding

33. 4.1 Having found the Complainant has made out a prima facia case under paragraph 3(a)(i)(C) of the Policy, the burden under paragraph 4 now shifts to the Respondent to demonstrate their use is not an Abusive Registration.
34. 4.2 The Expert having found the Respondent has a case to answer, the Respondent must make that answer. Here the Respondent has failed to answer and therefore cannot rebut the presumption of Abusive Registration.
35. 4.3 Accordingly, the Expert finds that the Domain Name is an Abusive Registration as defined by paragraph 1 of the Policy on the basis that it is being used primarily for the purpose of unfairly disrupting the business of the Complainant.

8. Decision:

In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name be transferred to the Complainant.

Andrew Murray Date: 7 June 2007