Nominet UK Dispute Resolution Service

DRS  03931

The Royal Bank of Scotland Group Plc v Kwan Jin

Decision of Independent Expert

1.	Parties

Complainant:		The Royal Bank of Scotland Group Plc
Country:		GB

Additional Complainants

Complainant:		National Westminster Bank Plc
Country:		GB

Complainant:		NatWest Stockbrokers Limited
Country:		GB

Respondent:		Kwan Jin
Country:		NZ

2.	Disputed Domain Name

The domain name in dispute is:  <natweststockbroker.co.uk>

3.	Procedural Background

On 16 August 2006 the Complaint was lodged with Nominet UK in accordance with the Nominet UK Dispute Resolution Service Policy (the “DRS Policy”) and hard copies of the Complaint were received in full on 17 August 2006.

On 22 August 2006 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service (“the DRS Procedure”) had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.

On 15 September 2006 as no Response had been received from the Respondent by Nominet UK, the Complainant was advised accordingly.  

On 18 September 2006 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.

On 19 September James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure 

4.	 	The Facts

The Complainant is The Royal Bank of Scotland Group Plc.,  (“Complainant RBS”) is a PLC, registered at Companies House  since 1968.

There are two additional Complainants  viz. The National Westminster Bank Plc and NatWest Stockbrokers Limited.

The National Westminster Bank plc (“Complainant NatWest”) was acquired by the Complainant RBS in 2000 and had been formed as the result of a merger in 1968. It adopted the “NatWest” title in the 1990s. 

NatWest Stockbrokers Limited (“Complainant NatWest Stockbrokers”) is registered at Companies House and has been so registered since 1985. 

Complainant NatWest is the owner of numerous registrations for its NATWEST trademark throughout the world, including the following UK and CTM registrations:-

•	UK Registered Trademark registration number 1021601, NATWEST, registered in class 16 and having a filing date of 3 December 1973;
•	UK Registered Trademark registration number 1278208, NATWEST (series of 4 marks), registered in class 36 and having a filing date of 1 October 1986;
•	UK Registered Trademark registration number 1438083, NATWEST (series of 4 marks) , registered in class 09 and having a filing date of 17 August 1990;
•	UK Registered Trademark registration number 147078, NATWEST (series of 4 marks), registered in class 36 and having a filing date of 3 December 1973;
•	UK Registered Trademark registration number 1586802, NATWEST (series of 4 marks), registered in class 41 and having a filing date of 29 September 1994;
•	UK Registered Trademark registration number 2111611, NATWEST (series of 4 marks), registered in classes 6, 11, 20, 27 and having a filing date of 19 September 1996;
•	UK Registered Trademark registration number 2181287, NATWEST (series of 4 marks), registered in classes 37, 42 and having a filing date of 5 November 1998;
•	UK Registered Trademark registration number 234087, NATWEST (series of 4 marks), registered in classes 9, 16, 35, 36, 38, 42 and having a filing date of 24 September 2003;
•	CTM registration number 004319067, NATWEST registered in Classes 9, 16, 35, 36, 38, 41, 42 and having a filing date of 31 March 2005;
•	CTM registration number 004319013, NatWest registered in Classes 9, 16, 35, 36, 38, 41, 42 and having a filing date of 31 March 2005.

In the absence of a Response there is no information available about the Respondent except for the information on the WHOIS database. The domain name in issue <natweststockbroker.co.uk> was registered by the Respondent on 15 May 2004.

5.	The Parties’ Contentions

Complainants’ Submissions

The Complaintants submit that Complainant RBS is one of the world's leading financial services providers and one of the oldest banks in the UK. In addition to its strong UK presence, the Complainants have offices in Europe, the United States and Asia and operate a number of brands worldwide and offer a wide range of financial products and services – including retail banking and brokerage services – to both individual and institutional investors. 

Following a merger, Complainant NatWest was acquired by Complainant RBS in 2000 and is part of the fifth-largest financial services group in the world. Complainant NatWest has more than 1,600 branches and offers a wide range of financial products and services, including investment services, to individual and institutional investors. 

A significant part of Complainant RBS’s business is its retail stockbrokerage business and it provides brokerage products and services through its wealth management division, which is comprised of numerous brands and entities aimed at its customers’ varying brokerage needs, including Complainant NatWest Stockbrokers

Complainant NatWest Stockbrokers is the retail stockbroker arm of NatWest and is one of the largest brokerage companies in the UK. Complainant NatWest Stockbrokers offers a broad range of brokerage products and services that offer individual and institutional investors a wide array of investment opportunities. 

The marks on which this Complaint is based are NATWEST and NATWEST STOCKBROKERS and the Complainants claim to have rights in respect of both said names and marks on the basis of the above trademark registrations, the common law rights and goodwill associated with them, and their established use of the NATWEST STOCKBROKERS mark. 

Reports listing Complainant NatWest’s above registrations and other worldwide trademark registrations for the NATWEST mark have been submitted as an annex to the Complaint. 

Additionally, the Complainant NatWest and its affiliates own domain name registrations featuring the well-known NATWEST mark, including the ccTLD <natwest.co.uk> (registered prior to August 1996) and the gTLD  <natwest.com>. The Complainant NatWest uses its domain names to promote and operate its financial services business on the Internet.

Furthermore, the Complainants claim that Complainant NatWest Stockbrokers and its affiliates use the mark NATWEST STOCKBROKERS in connection with the Complainants’ retail stockbrokerage business. 

The Complainant NatWest Stockbrokers and its affiliates also own additional domain names relating to retail stockbrokerage services, including the gTLD <natweststockbrokers.com> and the ccTLD <natweststockbrokers.co.uk>. The Complainant NatWest Stockbrokers operates a website at the  <natweststockbrokers.co.uk> address that directs existing and prospective customers to its homepage, where they can access its brokerage products and services.

The Complainants submit that they have demonstrated that they have Rights in the said NATWEST and NATWEST STOCKBROKERS trademarks and service marks and that the domain name in dispute is similar to the Complainants’ NATWEST and NATWEST STOCKBROKERS marks.

The Respondent has simply added  the descriptive term “stockbroker” to the Complainants’ NATWEST mark and the term “stockbroker” is descriptive of a well-known segment of the Complainants’ business. 

Furthermore the Complainants submit that the Respondent has done nothing more than remove the letter “s” from the end of Complainants’ NATWEST STOCKBROKERS mark. 

The Complainants submit that the domain name strongly conveys the impression that it is sponsored by, or somehow associated with the Complainant NatWest and the Complainant NatWest Stockbrokers and that it in particular relates to Complainant NatWest Stockbrokers’ retail stockbrokerage business.

The Complaint also points out that, but for the letter removal of the letter “s” from the name as noted above, the domain name in dispute is identical to the Complainants’ <natweststockbrokers.co.uk> domain name. 

The domain name in dispute is apparently targeted toward Internet users who, while seeking to access the Complainants’ websites and brokerage services, either make slight errors when typing in the Complainants’ actual domain names or attempt to access the Complainants’ services by typing in the Complainants’ NATWEST mark along with a service the Complainants provide. Such users find themselves at the Respondent’s website, which contains advertising for, and links to websites offering, competing brokerage products and services. 

The Respondent registered <natweststockbroker.co.uk> on 15 May 2004 – long after Complainants acquired rights to their names and marks. 

In the circumstances, the Complainants submit that the Respondent has no apparent rights to the <natweststockbroker.co.uk> domain name. 

The Complainants submit that the domain name, in the hands of the Respondent, 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. 

Specifically, the Respondent has registered the <natweststockbroker.co.uk> domain name for the purpose of unfairly disrupting the Complainants’ business; is using the domain name in a way that confuses Internet users into believing that the name is registered to, operated or authorised by, or otherwise connected with the Complainants; and is attempting to exploit Complainants’ registered trademark and associated goodwill for his own commercial gain. 

The Complainants submit that the Respondent has registered the <natweststockbroker.co.uk> domain name for the purpose of unfairly disrupting Complainants’ business. See DRS Policy Section 3(a)(i)(C). As noted, it appears that the <natweststockbroker.co.uk> domain name is targeted toward Internet users seeking access to Complainants’ brokerage products and services. Such users, however, are taken to Respondent’s website – which promotes brokerage products and services offered by Complainants’ competitors. 

As of 3 August 2006, for instance, the <natweststockbroker.co.uk> domain name resolved to a website providing information about, and links to the websites of, numerous companies providing retail stockbrokerage services in competition with the Complainant NatWest Stockbrokers, including Scottrade, Charles Schwab, and TD Ameritrade. In support of this allegation, as an annex to the Complaint, the Complainants have submitted screenshots from the website to which the  <natweststockbroker.co.uk> domain name resolved, as well as from certain of the websites to which that site provided links. 

The Complainants argue that such use of the domain name threatens to disrupt the Complainants’ business by, for instance, improperly directing the Complainants’ current and prospective customers to the Complainants’ competitors, thus causing the Complainants to suffer loss of business and revenue. 

The Complainants further submit that such use constitutes evidence of an Abusive Registration under DRS Policy Section 3(a)(i)(C) citing for example the decisions of the experts in National Westminster Bank plc v. 2catchafly (DRS 3390, 3 April 2006) (“By knowingly linking the domain name ‘natwestloans.co.uk’ to a site that offers links to other sites offering financial services, and particularly loans, by competitors of the Complainant, . . . reason would infer that the primary purpose of registration of that domain name was to unfairly take advantage of the Complainant’s reputation and to divert Internet users to the Respondent’s website and thereby unfairly disrupt the business of the Complainant.”); Yahoo! Inc. v. Smith (DRS 0821, 23 March 2003) (finding, in ordering the transfer of ‘yahho.co.uk,’ that “it seems that by registering the Domain Name, the Respondent could have no purpose other than to intend that the Domain Name be confused with the YAHOO! mark, thereby intending primarily to divert business from the Complainant . . . This is therefore likely to unfairly disrupt the business of the Complainant.”). 

The Complainants submit that the Respondent is using the domain name in a way that has confused people into believing, and has the potential to confuse people into believing, that the domain name is registered to the Complainants and it is operated or authorized by Complainants, or otherwise is connected with Complainants. See DRS Policy, Section 3(a)(ii). Given the near “identicality” of the domain name to the Complainants’ marks and the Complainants’ domain names, an Internet user intending to access Complainants’ websites could find himself at the Respondent’s website without realizing that he had failed to reach Complainants’ sites. 

Further, the content of the Respondent’s website, because it consists of information and advertising concerning products and services similar to those offered by the Complainants, would not necessarily alert the user to his or her error. Additionally, even if a user realized that he was not at the Complainants’ official website, the user still could be confused into believing that the Complainants were in some way associated with the Domain Name, given these substantial similarities. See National Westminster Bank plc v. 2catchafly (DRS 3390, 3 April 2006) (concluding, in directing the transfer of ‘natwestloans.co.uk,’ which the Respondent had used to operate a website providing links to Complainant’s competitors, that “there is a strong likelihood of confusion on the part of Internet users and the indications are that the Respondent, in applying to register the domain name, intended to create such confusion.”); The Carphone Warehouse Limited v. Wilkes (DRS 2086, 15 December 2004) (asserting, in directing the transfer of ‘carphonewarhouse.co.uk’ and ‘thecarphonewarhouse.co.uk,’ which the Respondent had used to offer mobile phone packages and accessories, that “it is likely that a substantial proportion of people arriving at the websites operated under the Domain Names by the Respondent . . . will be confused into believing the websites are operated or authorised by the Complainant.”). 

The Complainants submit that the domain name is an Abusive Registration because the Respondent is using it to benefit commercially from his unauthorized and illegitimate use of the Complainants’ marks and associated goodwill and thus is using the domain name in a manner that takes unfair advantage of and is unfairly detrimental to Complainants’ rights. See DRS Policy, Section 1 (defining Abusive Registration.) Specifically, Respondent’s purpose in redirecting Internet users searching for Complainants’ brokerage products and services – including Complainants’ current and prospective customers – to the websites of Complainants’ competitors is presumably to generate “click-through” revenues based on the amount of traffic he diverts to those sites. Respondent’s attempt to profit financially from his unauthorized use of Complainants’ marks is commercially exploitive of Complainants’ names and marks and evidences an abusive registration under the DRS Policy. See, e.g., The Royal Bank of Scotland Group plc v. Laurent Girault (DRS 3806, 10 August 2006) (stating, in directing the transfer of ‘natwestcards.co.uk’ and ‘privalege.co.uk,’ which the Respondent had used to operate websites providing links to Complainants’ competitors, that “[t]here seems to be no reason for the Respondent to use the Domain Names except to profit at the Complainants’ expense . . .”). 

Further, the Respondent cannot establish any of the situations demonstrating that the domain name is not an Abusive Registration. See DRS Policy, Section 4(a). For instance, there is no evidence the Respondent has ever used the domain name in connection with a genuine offering of goods or services; has ever been commonly known by the domain name; or has ever made a legitimate non-commercial or fair use of the domain name. To the contrary, the Respondent has registered and is using the domain name to profit illegitimately from the Complainants’ names and marks by connecting to a search engine that displays links to competing brokerage products and services and presumably generates search revenues. 

Accordingly, the Complainants respectfully request that the Expert issue an order directing the transfer of both the domain name to the Complainant RBS.

Respondent’s Submissions

The Respondent has not filed any Response. 

6.	Discussion and Findings:

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainants to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. that 

i.	the Complainants have 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 Complainants’ Rights

The Complainants have demonstrated that they have Rights in the said NATWEST and NATWEST STOCKBROKERS trademarks and service marks both through their large portfolio of trademark registrations in the UK, the European Union and in other jurisdictions and at common law through their use of the marks NATWEST and NATWEST BROKERS in relation to the provision of inter alia stockbrokerage services.

It is obvious that for the reasons given by the Complainant and set out above, the domain name in dispute is similar to the Complainants’ NATWEST and NATWEST STOCKBROKERS trade marks and servicemarks.

Abusive Registration

The DRS Policy defines “Abusive Registration” as meaning 

“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 DRS Policy furthermore provides the following non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration:-
” i. circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
 
A.	 	primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
 
B. 		as a blocking registration against a name or mark in which the Complainant has Rights; or
 
C. 		primarily for the purpose of unfairly disrupting the business of the Complainant;
 
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;
 
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
 
iv. It is independently verified that the Respondent has given false contact details to us…”

The Complainants arguments that the domain name in dispute strongly conveys the impression that it is sponsored by, or somehow associated with the Complainant NatWest and the Complainant NatWest Stockbrokers and that it relates to Complainant NatWest Stockbrokers’ retail stockbrokerage business are compelling.

This Expert also accepts the Complainants’ submission that it is an Abusive Registration in the hands of the Respondent, because it was registered in a manner that, at the time the registration took place, it took unfair advantage of and was unfairly detrimental to the Complainants’ Rights and because the domain name has been used by the Respondent in a manner that takes unfair advantage of and is unfairly detrimental to the Complainants’ Rights. 

The Respondent must have been aware of the Complainants’ goodwill and rights in the NATWEST and NATWESTSTOCKBROKERS marks and their stockbrokerage business when the Respondent registered <natweststockbroker.co.uk> on 15 May 2004 – long after Complainants first acquired rights to their NATWEST and NATWESTSTOCKBROKERS names and marks.

Subsequent to registration of the domain name in dispute, the Respondent has caused, permitted or allowed the <natweststockbroker.co.uk> domain name resolve to a website providing information about, and links to the websites of, numerous companies providing retail stockbrokerage services in competition with the Complainants.

Given the strength of the Complainants marks, and the similarity of the domain name to the  distinctive NATWEST mark and the fact that the additional “stockbroker” element is descriptive of an important element of the Complainants’ business, 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 from the Complainants. Its use by the Respondent is therefore likely to unfairly disrupt the business of the Complainant.

Furthermore given the content of the website established by the Respondent at the <natweststockbroker.co.uk> address, the Respondent is clearly endeavouring to give the impression that there is some connection between his website and the Complainants. As the Complaint points out, the website consists of information and advertising concerning products and services similar to those offered by the Complainants and an Internet user would not necessarily be alerted to the fact that there was no such connection. Additionally, even if a user realized that he was not at the Complainants’ official website, the Internet user may well still be confused into believing that the Complainants were in some way associated with the domain name, given these substantial similarities.

While the Complainants have not provided any evidence of actual confusion on the part of the public, the similarity of the domain name with the Complainants’ marks and their domain names indicate that the Respondent is using the domain name in a way which is very likely to have confused people or businesses into believing that the domain name is registered to, operated or authorised by, or otherwise connected with the Complainant

This Expert therefore finds that the Respondent’s registration of the <natweststockbroker.co.uk> domain name in dispute is an Abusive Registration 

7.    Decision

This Expert directs that the said domain name <natweststockbroker.co.uk> be transferred to the Complainant, The Royal Bank of Scotland Group Plc.

         James Bridgeman                                                       Date:  9 October 2006