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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Bank of Scotland Group Plc v Williams [2006] DRS 4123 (5th December 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4123.html Cite as: [2006] DRS 4123 |
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Nominet UK Dispute Resolution Service
DRS 04123
The Royal Bank of Scotland Group Plc v Bent Williams
Decision of Independent Expert
Complainant: The Royal Bank of Scotland Group Plc
Country: GB
Respondent: Bent Williams
Country: GB
nat-westonline.co.uk ("the Domain Name")
The complaint was entered into Nominet's system on 16th October 2006. Nominet validated the complaint and sent a letter to the Respondent on the same day, noting that the Dispute Resolution Service had been invoked and notifying the Respondent that it had until 7th November 2006 to submit a Response. No Response was received.
On 8th November 2006 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy Version 2 ("the Policy"). The fee was duly paid on or around 16th November 2006.
On 16th November 2006 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case, Nominet duly appointed me as Expert with effect from 22nd November 2006.
This is a multiple Complainant case. The Lead Complainant is The Royal Bank of Scotland Plc and the other Complainant is National Westminster Bank Plc. Where I use the word 'Complainant' in the singular in this Decision, I use this as a shorthand to refer to each of the Complainants.
The Royal Bank of Scotland Plc and National Westminster Bank Plc are major financial institutions based in the United Kingdom, but whose reputation is substantial and international.
The National Westminster Bank Plc was established in 1968 from the merger of National Provincial Bank and Westminster Bank. It was acquired by the RBS Group in 2000. At all material times it has been one of the largest banks in the United Kingdom.
I have not been told the precise date on which The National Westminster Bank Plc started to trade under and by reference to the abbreviated name 'NatWest', but the application date of UK trade mark registration number 1021601 ('NATWEST' word only) is 3rd December 1973. That is just the first of a large portfolio of trade mark registrations for the mark 'NATWEST' in the UK and Community trade mark registries, and around the world. There are also a large number of other registrations for 'National Westminster' and derivative designations, but I regard these as of subsidiary importance in the context of the present Dispute.
The Nominet WHOIS search with which I have been provided indicates that the Respondent registered the Domain Name on 26th May 2006.
As at the date of the print-out of the Respondent's site with which I have been provided by Nominet (16th October 2006), the url http://www.nat-westonline.co.uk does not point to an active website. However, according to the Complainant (who annexes a print-out of the Respondent's website http://www.nat-westonline.co.uk dated 24th September 2006 at Annex K to the Complaint), that url formerly pointed to a convincing mock-up of the genuine National Westminster Bank site (natwest.com), into which the Complainant's customers were encouraged to enter their online banking security details.
Complaint
The Complainant contends that it has substantial registered and unregistered rights in the designation 'NATWEST' arising out of its long-standing use of that designation in relation to financial services. It says that the Domain Name is confusingly similar to NATWEST because the expression 'online' would be readily perceived as non-distinctive by the public in the UK and/or because the Complainant itself uses the domain name natwestonline.com.
The Complainant further contends that the Domain Name was registered, and has been used, in a manner which takes unfair advantage of and was unfairly detrimental to its Rights. In essence it submits:
- that the Domain Name is inherently likely to deceive people into assuming a connection with the Complainant
- that primary purpose of the registration of the Domain Name was to unfairly disrupt the Complainant's business.
- that the use to which the Domain Name has been put (the fraudulent activity known as 'phishing') further exacerbates the likelihood of deception.
- that this activity threatened to compromise the security of the Complainant's online banking operations and damage its reputation.
The Complainant specifically cites and relies on paragraphs 3(a)(i)(C) and 3(a)(ii) of the Policy as providing support for its contention that the Domain Name is an Abusive Registration.
Response
As noted above, the Respondent did not file a Response.
General
Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
These matters must be affirmatively proven by the Complainant, notwithstanding the failure by the Respondent to file a Response. The effect of the Respondent's default, under paragraph 15(c) of the Procedure, (there being no exceptional circumstances in this case) is that I may draw such inferences from the Respondent's non-compliance as I consider appropriate.
Complainant's Rights
The Complainant must prove on the balance of probabilities that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.
On the basis of the materials I have been supplied with, I have no doubt whatsoever that the Complainant owns sufficient Rights in the designation 'NATWEST'. The designation is inherently distinctive, and has a high degree of distinctiveness acquired through use. The Complainant has traded on a substantial scale in the UK (amongst other jurisdictions) for decades under and by reference to that name, and owns a very large portfolio of trade mark registrations comprising or incorporating that designation.
I am further satisfied that the name NATWEST is similar to the Domain Name www.nat-westonline.co.uk (ignoring, as I am required to do, the first and second level suffixes). The words 'nat' and 'west' are much more distinctive and dominant components of the overall name than the hyphen or the word 'online'. I observed in DRS 03234 Lilly ICOS LLC v Mike Cialister (cited in the Complaint in this case) that "The addition of the term ONLINE is entirely non-distinctive in the context of domain names and CIALIS would be readily perceived by the public as the most distinctive and dominant component of the Domain Name." That was a case concerning the domain name 'onlinecialis.co.uk'; I would venture to suggest that this has even more force when the word 'online' is at the end of the domain name.
In the circumstances of this case it is not necessary for me to express a view as to whether the Complainant owns any separate and distinct Rights in the designation 'natwestonline.com', though I rather suspect that any such Rights would simply be subsumed within the Rights in 'NATWEST'.
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.
The Complainant's case is put under both limbs of paragraph 1: both the initial registration and the subsequent use are alleged to be abusive. However, to a large extent the way the Complainant puts its case under the first limb is to seek to draw inferences, ex post facto, from the way the way the Domain Name has in fact been used. Accordingly – bearing in mind also the fact that the Complainant's Rights have not changed materially between the date of the Respondent's registration and the date of use – I think it will do the Respondent no injustice to consider the two limbs together.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out under paragraph 3(a) of the Policy. A non-exhaustive list of countervailing factors are set out under paragraph 4(a) of the Policy.
The Complainant specifically relies on paragraphs 3(a)(i)(C) and 3(a)(ii) of the Policy, which provide that the following factors may be evidence that the Domain Name is an Abusive Registration:
"Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily … for the purpose of unfairly disrupting the business of the Complainant" [3(a)(i)(C)]
"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" [3(a)(ii)]
The Complainant's evidence is that the "Respondent's fraudulent website, … by its appearance and content, purports to be a legitimate NatWest website. … For instance, as of 21 June 2006, the Domain Name resolved to a website for "National Westminster Online Banking," which prominently displayed NatWest's NATIONAL WESTMINSTER BANK and NATWEST names, marks and logos – including images that appear to have been copied from NatWest's legitimate website – and purported to offer the same types of online banking services that NatWest offers at its legitimate website accessible through "natwestonline.com"."
Further, "Respondent's fraudulent website contained 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."
I am conscious of the fact that I should not lightly reach the conclusion that the Respondent has been guilty of fraudulent practices. However, in the light of the clear evidence presented by the Complainant, and the lack of any Response from the Respondent, I am satisfied that the Respondent has indeed been engaged in what the Expert in DRS 03205 Novus Credit Services, Inc. v. Discover Financial Services LLC described as "the pernicious practice of 'phishing' which consists of creating fictitious domain names and websites all with a view to extracting bank account details from gullible individuals."
I regard this, as did the Expert in Novus Credit, as clear and compelling evidence that the Domain Name has been used, and was acquired, abusively as defined in the Policy (and in particular, in contravention of paragraphs 3(a)(i)(C) and 3(a)(ii)). Even without the evidence of phishing, I would probably have concluded that the Domain Name was inherently deceptive and therefore abusive, but the inferences which can be drawn from the evidence of use provide further reinforcement of that conclusion.
It is difficult to imagine a clearer case of unfair advantage to the Respondent, or unfair detriment to the Complainant's Rights, than the use of a domain name to trick and defraud the Complainant's customers. Accordingly I conclude that the Complainant has succeeded, on the balance of probabilities, in substantiating both limbs of the definition of Abusive Registration under paragraph 1 of the Policy, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Having concluded that the Domain Name is an Abusive Registration, the Expert determines that the Domain Name, nat-westonline.co.uk, should be transferred to the Lead Complainant.
Philip Roberts Date: December 5th, 2006