 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Bank of Scotland Group Plc & Anor v Malionato [2006] DRS 4172 (11 December 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4172.html Cite as: [2006] DRS 4172 |
||
[New search] [Printable RTF version] [Help]
Nominet UK Dispute Resolution Service
DRS 04172
The Royal Bank of Scotland Group Plc and National Westminster Bank Plc v Trevor Malionato
Decision of Independent Expert
Lead Complainant: The Royal Bank of Scotland Group Plc
Country: GB
Additional
Complainant: National Westminster Bank Plc
Country: GB
Respondent: Trevor Malionato
Country: US
natwestonlineb.co.uk
The Complaint was lodged with Nominet on 3 November 2006. Nominet validated the Complaint and notified the Respondent of the Complaint on 3 November 2006 and informed the Respondent that he had until 27 November 2006 to lodge a Response. No Response was received from the Respondent and, on 28 November 2006, Nominet informed the parties that, in the circumstances, Nominet could not provide mediation and invited the Complainants to pay the fee to obtain an Expert Decision by 12 December 2006. On 29 November 2006 the Complainants 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 December 2006 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 6 December 2006.
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").
Paragraph 15b 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 the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."
Paragraph 15c 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."
Are there exceptional circumstances present in this case? At this point in the Decision, the Expert wishes to consider whether the complaint has been properly communicated to the Respondent. Under Paragraph 2a of the Procedure, Nominet will send a complaint to the Respondent using, in its discretion, one of the following means:
i sending the complaint by first class post, fax or e-mail to the Respondent at the contact details shown as the registrant or other contacts in Nominet's Domain Name register database entry for the Domain Name in dispute;
ii sending the complaint in electronic form (including attachments to the extent available in that form) by e-mail to:
A postmaster@the domain name in dispute>: or
B if the Domain Name resolves to an active web page (other than a genuine page which Nominet concludes is maintained by an ISP for the parking of Domain Names), to any e-mail address shown or e-mail links on that web page so far as this is practicable; or
iii sending the complaint to any addresses provided to it by the Complainant under Paragraph 3 (b) (iii) of the Procedure so far as this is practicable.
Under Nominet's current Terms and Conditions the registrant must inform Nominet promptly
of any change in his registered details and those of his Agent if applicable. It will be the
registrant's responsibility to maintain and update any details he submits to Nominet and to
ensure that his details are up to date and accurate.
Nominet have written to the Respondent at the postal address and the e-mail address shown
in the Register Entry and to [email protected]. The e-mail to the
postmaster address resulted in a Delivery Failure Report but, as far as the Expert is aware,
the letter, which was sent by Air Mail, and the e-mail, which was sent to the e-mail address
shown in the Register Entry were delivered to the Respondent.
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.
This is a multiple Complainant case, in which The Royal Bank of Scotland Group Plc ("RBS") is the lead Complainant and National Westminster Bank Plc (NatWest) is the additional Complainant. In this decision the term "the Complainants" means RBS and NatWest.
Each of the Complainants has been registered at Companies House since 1968.
NatWest was formed as the result of a merger in 1968 and was acquired by RBS in 2000. It is part of the fifth largest financial services group in the world and has more than 1,600 branches. The Complainants are well known in the UK and internationally. A significant part of NatWest's business revolves around its online banking services.
NatWest has a large portfolio of registered trademarks including the "NATWEST" and "NatWest ON LINE" names and marks.
The Complainants own numerous domain name registrations featuring the NATWEST mark, including natwest.co.uk, natwest.com (NatWest's primary web-site), natwestonline.com, natwestonline.org.uk, natwestonline.net and natwestonline.co.uk.
The Respondent registered the Domain Name on 26 June 2006. At the time of the Complaint the Domain Name did not, and currently it does not, point to a live web-site.
Complainant
The Complainants have made detailed submissions which can be summarised as follows:
The Complainants have rights in respect of names and marks that are similar to the disputed Domain Name.
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, RBS has offices elsewhere in Europe, and in the United States and Asia.
RBS operates a number of brands worldwide and offers a wide range of financial products and services, including online banking services, to both individual and institutional investors.
RBS has been registered at Companies House since 1968.
NatWest was formed as the result of a merger in 1968 and was acquired by RBS in 2000. NatWest is part of the fifth-largest financial services group in the world. NatWest 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.
A significant part of NatWest's business today revolves around its online banking services, through which customers can, among other things, pay bills, effect transfers of funds, organize debts and assets, view account histories, and access multiple accounts.
NatWest has been registered at Companies House since 1968. The Complainants have rights in respect of the "NATWEST" and "NatWest ON LINE" names and marks, on which this complaint is based.
NatWest has numerous registrations for its "NATWEST" family of marks, including with the UK Patent Office ("UKPO") and with the EU Office for Harmonization in the Internal Market ("OHIM").
In addition, in connection with its online banking services, NatWest has registered the trademarks "NatWest ON LINE" and "NATWEST BUSINESS ONLINE" with the UKPO.
The Complainants own numerous domain name registrations featuring the well-known NATWEST mark, including natwest.co.uk (registered prior to August 1996) and natwest.com (created 11 February 1997). In connection with the promotion and operation of its business, the Complainants also own the domain names natwestonline.com, natwestonline.org.uk and natwestonline.net, each of which resolves to NatWest's primary website at "natwest.com", where Internet users can access NatWest's online banking services. The Complainants own additional domain name registrations relating to NatWest's online banking services including natwestonline.co.uk.
The Domain Name is similar to NatWest's names and marks and to Complainants' domain names.
The Respondent's Domain Name is similar to NatWest's "NATWEST" and "NatWest ON LINE" names and marks. In fact, "but for the addition of the letter 'b', the Domain Name is identical to the latter mark." See National Westminster Bank Plc v. Johnny Megaline (DRS 03525 9 May 2006) recognizing NatWest's rights in the "NATWEST" and "NatWest ON LINE" marks and finding the disputed domain name, "natwestbonline.co.uk", similar to the complainant's marks and, but for the addition of the letter "b", identical to the "NatWest ON LINE" mark. Thus, the addition of the letter "b" to NatWest's marks – whether used as an abbreviation for "bank" or "business" – does not alter the overall impression of the Domain Name, which strongly conveys that it is sponsored by, or associated with, the Complainants because the Complainants' marks will be perceived by Internet users as the most distinctive and dominant component of the Domain Name. Moreover, the addition of the "online" suffix – which corresponds to and describes a well-known segment of NatWest's business – to NatWest's "NATWEST" mark likewise does not change the overall impression of the Domain Name. See Lilly ICOS LLC v. Mike Cialister (DRS 03234 12 May 2006) finding "onlinecialis.co.uk" similar to the name CIALIS because CIALIS would be readily perceived by the public as the most distinctive and dominant component of the domain name. Consequently, the Complainants' "NATWEST" and "NatWest ON LINE" marks remain the dominant and distinctive element in the Domain Name, and the Domain Name's confusing similarity to NatWest's name and marks improperly conveys the impression that the Domain Name is sponsored by, or somehow associated with, NatWest and that it relates to NatWest's online banking business.
But for the insignificant addition of the letter "b", the Domain Name is identical to the Complainants' "natwestonline.co.uk" domain name.
The Domain Name is apparently targeted toward Internet users who, while seeking to access the Complainants' websites and online banking services, either make slight errors when typing in Complainants' actual domain names or attempt to access Complainants' services by typing in NatWest's name along with the term "online", which describes an important aspect of NatWest's businesses, and the letter "b" as an abbreviation for "bank" or" business". Such users, however, find themselves at the Respondent's website, which, upon information and belief, was used for fraudulent purposes, and which currently resolves to a passive holding page.
The Respondent registered the Domain Name on 26 June 2006, long after the Complainants acquired rights to their marks.
The Respondent appears to have no legitimate rights to the Domain Name.
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.
The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the Complainants' business. The Respondent registered the Domain Name to perpetrate a fraud by using the Domain Name to attract Internet users seeking access to NatWest's online banking services. Such users were instead taken to the Respondent's fraudulent website, which, by its appearance and content, purported to be a website owned and operated by NatWest. The Respondent, however, is in no way connected with the Complainants, nor have Complainants licensed or otherwise authorized Respondent to use the "NATWEST" or "NatWest ON LINE" marks, or any abbreviation or variation thereof. Such use constitutes an abusive registration. See National Westminster Bank Plc v. Johnny Megaline (DRS 03525 9 May 2006) finding "natwestbonline.co.uk" was an abusive registration as it resolved to a fraudulent imitation of the complainant's website.
The Respondent has used and 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 Complainants, is operated or authorized by the Complainants, or otherwise is connected with the Complainants. See Enterprise Rent-a-Car Co. v. Alliance Ltd v Mr Rajiv Chugh (DRS 03846 31 August 2006) finding that the respondent's use of "enterprisecarrentals.co.uk" and fraudulent efforts to profit off of the complainant's goodwill and reputation to target the complainant's business and customers is evidence of an abusive registration.
The Domain Name currently resolves to an inactive webpage, which also has great potential for confusion and, thus, serious disruption to the Complainants' business. For example, NatWest customers may access the Domain Name only to be confused and aggravated by what they perceive as an inactive site. This has an obvious detrimental effect on Complainants' business, including the potential loss of customers. In a similar situation, an Expert held that a 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. See Amazon.com, Inc. v. Microplace Ltd. t/a Netknowledge (DRS 01781 20 July 2004) finding the existence of "wwwamazon.co.uk", which resolved to an inactive site, had serious potential for disrupting the complainant's business and was likely to confuse users because potential purchasers taken to this inactive site would assume that the complainant's website was inactive or temporarily out of operation and, as a result, would go to the websites of the complainant's competitors to purchase their goods.
The Respondent's registration and use of the Domain Name takes unfair advantage of Complainants' rights because, given the strength of Complainants' "NATWEST" and "NatWest ON LINE" marks, the confusing similarity of the domain name to these marks, and the fact that the additional letter "b" is an abbreviation for "bank" or "business", the registration "could have been for no purpose other than an intention that the domain name be confused with Complainants' marks, thereby intending primarily to divert business away from Complainants." The Royal Bank of Scotland Group Plc v. Kwan Jin (DRS 03931 9 October 2006) finding the respondent's use of "natweststockbroker.co.uk" likely to unfairly disrupt the complainants' business. Thus, the Respondent's registration of the domain name was necessarily made in a manner which took unfair advantage of the Complainants' rights. See. Nokia Corp. v. Just Phones (DRS 00058 7 January 2002) recognizing an argument that the registration of the "nokiaringtones.co.uk", which combined the complainant's famous and distinctive mark with a mere product description, must necessarily have been made in a manner which took unfair advantage of the complainant's rights. Indeed, there is no use to which Respondent could put the Domain Name that would not be unfair. See ACCOR S.A. v. Peter Love (DRS 03136 24 January 2006) finding difficulty conceiving of any use of the domain name "novotel.co.uk" that would not have been unfair where the respondent had no independent connection to the mark NOVOTEL, and determining the only conceivable reason the respondent adopted the domain name was to take advantage of the accrued goodwill in that name.
The Domain Name is an abusive registration because the Respondent presumably was using it to benefit commercially from its unauthorized and illegitimate use of the Complainants' marks and associated goodwill. The Respondent used the Domain Name to redirect Internet users who were familiar with and searching for NatWest's online banking services – including NatWest's current and prospective customers – to a fraudulent website which purported to be a website owned and operated by NatWest. Such use is commercially exploitive of the Complainants' names and marks and evidences an abusive registration under DRS Policy. Cf. The Royal Bank of Scotland v. Robert Morrison (DRS 3719 21 July 2006) finding an abusive registration where the respondent was seeking to profit financially by improperly directing those seeking information about the services.
The Respondent cannot establish any situation demonstrating that the Domain Name is not an Abusive Registration. See DRS Policy, Section 4(a). In particular: (a) the Respondent has not been commonly known by the names "NATWEST", "NATWEST ONLINE", or "natwestonlineb"; (b) there is no active website to be found at www.natwestonlineb.co.uk; (c) in light of the fame of the Complainants' marks, the Respondent cannot make legitimate non-commercial or fair use of the Domain Name; (d) nor can the Respondent make a genuine offering of goods or services under the Domain Name; and (e) the Domain Name is not generic or descriptive.
The Complainants request that the Domain Name be transferred to RBS.
The Expert has perused the extensive documentation, which the Complaints have supplied in support of their contentions.
Respondent
The Respondent has not responded to the Complaint.
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 Complainants have based their Complaint on the registered trademarks of "NATWEST" and "NatWest ON LINE". The Complainants have provided full details of their various trademark registrations and have referred to earlier DRS decisions in support of their submissions. The Expert is satisfied that the Complainants have demonstrated that they have Rights in respect of these marks. This was the conclusion of the Experts in other DRS decisions, including DRS 03525 regarding "natwestbonline.co.uk", DRS 04123 regarding "nat-westonline.co.uk and DRS 04148 regarding "natt-westonlineb.co.uk".
The distinctive components of the Domain Name are "natwest" and "online". The addition of the letter "b" is meaningless and of no significance.
The Expert finds that, for the purposes of the Policy, the Complainants have 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 Complainants rely on factors 3 a i C and 3a ii and have cited various DRS decisions in support of their contentions.
Under paragraph 3 a i C, it 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 Complainants submit that the Respondent registered the Domain Name to perpetuate a fraud to attract internet users, seeking to access NatWest's online banking services, to the Respondent's fraudulent web-site. This is a serious allegation. As mentioned above, at the time of the Complaint the Domain Name did not, and currently does not, point to a live web-site. It is not clear whether, at some time before the submission of the Complaint, the appearance and content of the Domain Name purported to be a web-site owned and operated by NatWest. The Complainants have not provided any evidence in this respect. In this case, Expert will consider if there is other evidence of Abusive Registration.
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. Anyone typing in the Domain Name by mistake would expect to be taken to one of NatWest's web-site but would be taken to an inactive web-site and might well assume that NatWest's web-site was inactive or temporarily out of operation. The Complainants have not provided any specific evidence of confusion which may have occurred but there is obvious potential for confusion. In DRS 01781 regarding "amazon.co.uk", which was an inactive web-site, the Expert in that case found that there was potential for disruption and confusion and upheld the Complaint.
The Complainants also submit that the registration of the Domain Name could have been for no purpose other than an intention that the Domain Name be confused with the Complainants' marks. Finally, the Complainants submit that the Respondent cannot establish any situation demonstrating that the Domain Name is not an Abusive Registration and that the Respondent would not be able to invoke any of the factors which may be evidence that the Domain Name is not an Abusive Registration under paragraph 4 of the Policy.
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. In the absence of a response, it is difficult to establish the Respondent's primary motive for registration of the Domain Name. The Expert, however, cannot envisage any legitimate reason for the Respondent choosing to register the Domain Name, which includes NatWest's distinctive marks. The Expert is satisfied that the Complainants have proved their case.
In light of the above findings, namely that the Complainants have 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.natwestonlineb.co.uk be transferred to the Lead Complainant, The Royal Bank of Scotland Group Plc.
David King 11 December 2006