Nominet UK Dispute Resolution Service

DRS 4738

Natwest Bank Plc. v. M. Purtiz

Decision of Independent Expert
1.	Parties

Complainant:	Natwest Bank Plc		
	Edinburgh 		 
Country:		 GB

Respondent:		Mike Purtiz
Country:		US

2.	Domain Name

2.1.	natwest-onlinebnk.co.uk  (the “Domain Name”).

3.	Procedural Background 

3.1.	Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service (“DRS”) Policy and Procedure, Version 2 of September 2004 (“the Policy” and “the Procedure” respectively).

3.2.	Nominet received the hardcopy Complaint in full, with evidence, on 29 May  2007, validated it and sent it to the Respondent, advising the Respondent he had 15 working days to submit a Response.  It was sent by priority post and by email to chidialexander@yahoo.co.uk and postmaster@natwest-onlinebnk.co.uk.  
3.3.	 The Response was due on 20 June 2007.  No Response was submitted then or thereafter.  In accordance with paragraph 5(d) of the Procedure, on 21 June 2007, both parties were advised the dispute would be referred to an independent expert on payment of the requisite fee, within the specified time period, and Nominet duly received the fee on or about 27 June 2007.  

3.4.	Confirming there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I was appointed as the independent expert in this dispute on 5 July 2007. 

4.	Outstanding Formal/Procedural Issues

4.1.	Service 

4.1.1.	I need to say something briefly about service. The DRS derives its jurisdiction from the terms and conditions of the contract of registration between the Respondent and Nominet (“the Contract”).  Clause 14 of the Contract incorporates the Policy and Procedure by reference.  Clause 4.1 requires a Registrant’s details to be entered in the Register and the Registrant agrees to ensure that Nominet has its correct postal address, telephone and fax number and email address. Certain details are also posted on the public WHOIS database. Failure to provide correct details, or keep them current, may be grounds for cancelation or suspension of a domain name, per clause 17.2.
 
4.1.2.	The relevance of this is that §2(a) of the Procedure provides a Respondent will be served with a Complaint, at Nominet’s discretion by any of: first class post, fax or email to the contact details in the Register; by email to postmaster@<the domain name in dispute>; or any email addresses shown on any active web pages to which the domain name resolves.  Other communications are also by fax, first class post or email, per §2(b).    

4.1.3.	Nominet has provided me with a copy of the Respondent’s Register entries and WHOIS details.  The Respondent’s Register entry gives the postal address set out above, namely the Irvine, Sheboygan address.  The Respondent’s email address is given as chidialexander@yahoo.co.uk. 

4.1.4.	Nominet served the Complaint on the Respondent on 29 May 2007 by: (a) post to the Irvine, Sheboygan address; (b) by email to (i) chidialexander@yahoo.co.uk and (ii) postmaster@natwest-onlinebnk.co.uk.  The posted letter was returned marked “Returned for Better Address” but no delivery failure reports were received in relation to the emails so they appear to have been delivered.  

4.1.5.	In any event, the Procedure stipulates that the postmaster and other email addresses will be used for service and the Contract renders the Respondent responsible for any failure to notify Nominet of changes to its details.  The Complaint is therefore deemed served on 29 May 2007. 

      

4.2.	Default

4.2.1.	Although the Respondent has failed to submit a Response, or make any other submission, the Procedure does not provide for a default decision in favour of the Complainant. The Complainant must still prove its case to the requisite standard, see §15(b) of the Procedure.  However, an expert may draw such inferences from a party’s default as appropriate.   

5.	The Facts

5.1.	The Complainant is one of the largest nationwide banks in the UK and part of one of the largest financial services groups Worldwide. It provides banking and other services through its network of branches and online. It has been trading since 1968.  The group has had the domains natwest.co.uk and natwest.com since 1996 and 1997 respectively and the primary site is at the .com domain.  

5.2.	The Respondent registered the Domain Name on 2 October 2006 as evidenced by the Register and WHOIS reports provided to me by Nominet.  

5.3.	On 12 October 2006, the Domain Name resolved to a site falsely representing it was a site operated by the Complainant and inviting the public to enter private information relating to identity and finances.  The site employed the Complainant’s trademarks and other elements from the Complainant’s online identity.  The Domain Name currently resolves to an inactive site.   

6.	The Parties’ Contentions

Complainant

6.1.	 The Complainant says it has rights in a name or mark identical or similar to the Domain Name and that in the hands of the Respondent, the Domain Name is an Abusive Registration.  

6.2.	As to Rights, the Complainant relies on its numerous registered marks.  These include UK registered marks for “NATWEST” first registered in 1973 in class 16 no.1021601, and later registered in a wide variety of classes as both word and device marks.  In addition, the Complainant relies on its registration of “NatWest On Line” as a word and device mark in 1986 in class 36, no. 1278427.  Community Trade Marks were also registered for “NATWEST” in classes 9,16,35, 36,38, 41 and 42 in 2006.  National marks have also been registered in many countries, e.g. China, Australia, Brazil, Vietnam etc.  The Complainant also relies on its very extensive use of the names and marks in trade since 1968.  

6.3.	 As to Abusive Registration, the Complainant says the Domain Name in the hands of the Respondent is abusive as the site is a fraudulent phishing site, and is exploiting the Complainant’s name, reputation and marks in order to mislead the public and acquire personal and private data.    

Respondent

6.4.	No Response was submitted. 

7.	Discussion and Findings

General

7.1.	The DRS is designed as a fast, simple alternative to litigation.  Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy.  

7.2.	Paragraph 2(a) of the Policy requires the Complainant to prove 2 elements: 

   	  “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.”

The Complainant bears the onus of proof and must prove both elements on the balance of probabilities.  As mentioned above, even where no Response is submitted, the Complainant must meet this burden. 

7.3.	The DRS’s jurisdiction is limited to these issues and the remedies of cancellation, suspension, transfer or amendment of the Domain Name.  The Policy does not provide for the determination of allegations of trade mark infringement or passing-off proper.

Complainant’s Rights

7.4.	Rights under the Policy include rights to registered and unregistered trade marks and names and contractual rights to the same.  I find the Complainant has rights arising from its registered marks and from its use of its marks and name in trade.    

7.5.	Paragraph 2(a)(i) of the Policy requires that the name or mark in which the Complainant has Rights “is identical or similar to the Domain Name.”  In determining this, suffixes are to be ignored.  We are therefore comparing the relevant aspects of the Domain Name, namely “natwest-onlinebnk” with the name and marks, “NATWEST” and “NATWest On Line”. Case is irrelevant, as are hyphens and spaces.  The differential then in relation to the NATWest On Line mark is the addition of the abbreviation ‘bnk.’ The Complainant submits, and I accept, that the addition of a generic term such as bank, does not alter the overall impression of the distinctive or dominant components which convey authorisation or connection with the Complainant.  I am satisfied the Complainant has Rights in a mark similar to the Domain Name.     

Abusive Registration

7.6.	The second element the Complainant must prove under §2(a) of the Policy, is the Domain Name is an Abusive Registration, defined in §1 thereof.  §3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration.  Conversely, §4a of the Policy provides a non-exhaustive list of factors which may evidence that a registration is not an Abusive Registration.     

7.7.	The Complainant made very detailed and comprehensive submissions as to this.  I do not intend to traverse them as there could not be a clearer case of a domain name being used as an instrument of and for fraud and deception.  Phishing is paradigm Abusive Registration.     

8.	Decision

8.1.	I find that the Complainant has Rights in a mark which is similar to the Domain Name, which is an Abusive Registration in the hands of the Respondent.  Accordingly, the Domain Name should be transferred to the Complainant.    

Victoria McEvedy

 19 July 2007