Nominet UK Dispute Resolution Service

DRS 05761

National Westminster Bank Plc v Doris Solomon

Decision of Independent Expert

1.	Parties

Complainant:		National Westminster Bank Plc
Country:		GB		  

Respondent:		Doris Solomon
Country:		Netherlands

2.	Domain Name

      Natwest-ibank.co.uk

3.	Procedural Background

The Complaint was lodged with Nominet on 4 June 2008.  Nominet validated the Complaint and notified the Respondent of the Complaint on 5 June 2008 and informed the Respondent that she had until 27 June 2008 to lodge a Response.  No Response was received from the Respondent and, on 30 June 2008, Nominet informed the parties that, in the circumstances, Nominet could not provide mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 14 July 2008.  On 3 July 2008 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

On 4 July 2008 the undersigned David King (“the Expert”) 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 brought to the attention of the parties which might appear to call into question his independence and/or impartiality.  Nominet appointed the Expert in this matter on 10 July 2008.

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 5a of Nominet’s Dispute Resolution Procedure (“the Procedure”).

Under Nominet’s current Terms and Conditions the registrant must inform Nominet promptly
of any change in his/her registered details and those of any agent.  It is therefore the 
Respondent’s responsibility to maintain and update any contact details which she submits to 
Nominet and to ensure that the details are accurate.

Nominet has written to the Respondent at the postal address and the e-mail address shown 
in the Register Entry and to postmaster@natwest-ibank.co.uk.  The letter dated 5 June 2008 
has been returned to Nominet undelivered but the e-mails have not resulted in delivery failure 
reports.  

The Expert is satisfied that the Complaint was properly delivered to the Respondent and that, 
in the absence of a response from the Respondent, there are no exceptional circumstances 
present to prevent the Expert from proceeding with the Decision of this Complaint.

5.	The Facts

The Complainant has been registered at Companies House since 1968 and is part of the fifth largest financial services group in the world with more than 1,600 branches. The Complainant is well known in the UK and internationally.  A significant part of its business revolves around its online banking services.

The Complainant has a large portfolio of registered trademarks including the “NATWEST” mark.

The Complainant owns numerous domain name registrations featuring the NATWEST mark, including natwest.co.uk, natwestgroup.co.uk and natwest.com (the Complainant’s primary web-site).

The Respondent registered the Domain Name on 24 March 2008.  

6.	The Parties’ Contentions

Complainant

The Complainant has made detailed submissions which can be summarised as follows:

The Complainant offers a wide range of financial products and services to individual and institutional investors throughout the United Kingdom and worldwide through its website and at its more than 1,600 branches. Acquired by The Royal Bank of Scotland Group plc (“RBS”) in 2000, the Complainant is part of the fifth-largest financial services group in the world and offers a wide range of financial products and services, including online banking services, to both individual and institutional investors. A significant part of Complainant’s business today revolves around its online banking services.  

The Complainant has been registered at Companies House since 1968. 

The Complainant has rights in respect of the “NATWEST” name and mark on which this complaint is based.  The Complainant has numerous registrations for its “NATWEST” family of marks, including with the UK Intellectual Property Office and with the EU Office for Harmonization in the Internal Market. 

The Complainant owns numerous domain name registrations featuring the well-known “NATWEST” mark, including natwest.co.uk and natwestgroup.co.uk (both registered prior to August 1996), and natwest.com (created 11 February 1997). These domain names resolve to the Complainant’s primary website at natwest.com, where Internet users can access the Complainant’s online banking services. 

The Domain Name is similar to the Complainant’s “NATWEST” name and mark because it fully incorporates the “NATWEST” mark and simply adds a hyphen and the generic or descriptive term “ibank,” presumably for “Internet Bank.” The addition of the domain name suffix “.co.uk” is irrelevant to this analysis. The minor addition of the generic or descriptive term “ibank” does not change the overall impact of the Domain Name, which strongly conveys the impression that it is sponsored by or associated with the Complainant. The Complainant’s mark is the most distinctive and dominant component of the Domain Name. 

The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant’s business. Given the similarity between Complainant’s “NATWEST” mark and the Domain Name, it follows that Respondent registered the Domain Name in order to take advantage of the goodwill associated with the Complainant’s name. 

In The Royal Bank of Scotland Group plc v. John Leona, the Nominet-appointed expert found that the domain name at issue, natwest-onlineb.co.uk, was an abusive registration in light of the mark “NATWEST ONLINE,” which is registered by the Complainant . (DRS 4185 on 19 January 2007). The Nominet-appointed Expert reasoned that because of the Complainant’s well established international reputation and the similarity between the mark and the domain name, “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 Respondent undoubtedly sought to disrupt the Complainant’s business by registering the Domain Name, as it consists solely of the Complainant’s mark “NATWEST,” a hyphen, and the term “ibank,” which presumably describes the Internet banking services that the Complainant provides. The Complainant’s customers or potential customers may believe that the Domain Name is associated with or sponsored by the Complainant, resulting in unfair disruption of the Complainant’s business for purposes of DRS Policy 3(a)(i)(C). The website to which the Domain Name resolves contains duplications of the Complainant’s registered mark, “NATWEST,” in connection with purported banking services under the heading, “Natwest Iweb Banking International.” The website also offers a link called “Account Manager,” which directs users to enter their login information, consisting of their “account number” and “account pin.” As this enables the Respondent to obtain the confidential login information of the Complainant’s accountholders, the Respondent is further capable of unfairly disrupting the Complainant’s business by using this information to defraud the Complainant and its accountholders. As a previous Nominet-appointed Expert has recognised (Novus Credit Services Inc v. Discover Financial Services LLC – DRS 03205 on 26 January 2006), this pernicious practice, known as “phishing,” which consists of “creating fictitious domain names and websites all with a view to extracting bank account details from gullible individuals,” constitutes an unfair disruption to the Complainant’s business in violation of DRS Policy. 

The Respondent’s use of the Domain Name unfairly disrupts the Complainant’s business by interfering with the ability of those seeking information about and access to the Complainant’s services to reach the Complainant’s legitimate website, likely causing the Complainant to suffer loss of business and revenue. 

The Respondent is using the Domain Name in a way that either has confused people into believing, or is extremely likely to confuse people into believing, that the Domain Name is registered to the Complainant, is operated or authorised by the Complainant, or is otherwise connected with the Complainant. Given that the Domain Name incorporates the Complainant’s “NATWEST” mark in its entirety, an Internet user is likely to believe that the website is affiliated with or authorised by the Complainant. Since the Respondent’s website prominently displays a duplication of the Complainant’s mark, coupled with the terms “Banking,” and “International,” a user would not necessarily be alerted to the fact that the website is not authorised by the Complainant. 

The Expert has perused the extensive documentation, which the Complaint has supplied in support of its contentions.

Respondent

The Respondent has not responded to the Complaint.

7.	Discussion and Findings:

General

Paragraph 2 of Nominet’s Dispute Resolution Policy (“the Policy”) requires that, to succeed, the Complainant must prove to the Expert, on the balance of probabilities, both that the Complainant 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.

Complainants’ Rights

Under paragraph 1 of the Policy, “Rights” includes, but is not limited to, rights enforceable under English law.  

The Complainant has based its Complaint on the registered trademark of “NATWEST”   The Complainant has provided full details of its various trademark registrations and has referred to earlier DRS decisions in support of its submissions.  There is no doubt that the Complainant has Rights in respect of the “NATWEST” mark.  The distinctive component of the Domain Name is “natwest”.  The addition of a hyphen and the words “ibank” is of no significance.

The Expert finds that, for the purposes of the Policy, the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.

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 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.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3 of the Policy.  The Complainant relies on factors 3 a i C and 3a ii and has cited various DRS decisions in support of its contentions. 

Under paragraph 3 a i C, there may be evidence of Abusive Registration if circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.  The Complainant has provided a screen-shot of the Domain Name website which refers to “Natwest Iweb Banking International” and contains a link to “Account Manager” which asks Natwest customers to input their “Account Number” and “Account Pin”.  The Expert agrees with the Complainant’s submission that this is evidence of “phishing” whereby individuals’ bank details can be extracted by imitating the Complainant’s web-site.  This practice is patently Abusive under the Policy.  

Under paragraph 3 a ii, there may be evidence of Abusive Registration if circumstances indicate 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.  The Complainant has not provided any evidence of actual confusion having taken place but, in light of the Expert’s comments above,  the potential for confusion is obvious.  The Expert considers that the Respondent intended that the Domain Name be confused with the Complainant’s mark. 

As mentioned in paragraph 4 above, the Expert is satisfied that the Complaint was properly notified to the Respondent, who has had the opportunity to respond to the Complaint but has failed to do so.  The Expert cannot envisage any legitimate reason for the Respondent choosing to register the Domain Name, which includes the Complainant’s distinctive mark.  The Expert is satisfied that the Complainant has proved its case.

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 www.natwest-ibank.co.uk be transferred to the Complainant.

David King						   17 July 2008