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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> National Westminster Bank Plc v Worlld Hosting Company [2007] DRS 4579 (7 May 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4579.html Cite as: [2007] DRS 4579 |
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Nominet UK Dispute Resolution Service
DRS Number 4579
National Westminster Bank Plc v Worlld Hosting Company
Decision of Independent Expert
Complainant: National Westminster Bank Plc
Country: GB
Respondent: Worlld Hosting Company
Country: US
natwst-onlineb.org.uk ("the Domain Name")
| 28 March 2007: | Complaint lodged with Nominet electronically |
| 2 April 2007: | Hardcopy complaint received by Nominet |
| 3 April 2007: | Nominet forwarded complaint to Respondent |
| 30 April 2007: | No response received by Nominet |
On 7 May 2007 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.
None
The Complainant is a very well-known financial institution. It was incorporated in 1968 following a merger between National Provincial Bank and Westminster bank. The Complainant is now part of the fifth-largest financial services group in the world and offers a wide range of financial products and services to individual and institutional investors online and at its more than 1,600 branches in the UK and worldwide.
The Complainant owns a large portfolio of registered trade marks including the following:
| Countries | Number | Mark | Type | Date | Classes |
| UK | 1021601 | NATWEST | Word | 2 December 1973 | 16 |
| UK | 1278208 | NATWEST | Word | 1 October 1986 | 36 |
| UK | 1278427 | NATWEST ONLINE | Device and word | 1 October 1986 | 36 |
| UK | 2248536 | NATWEST BUSINESS ONLINE | Word | 13 October 2000 | 35,36 |
The Complainant owns numerous domain names featuring the NATWEST mark including natwestonline.org.uk, natwestonlinebanking.org.uk, and natwestonline.com, all of which resolve to the primary website at "natwest.com", where internet users can access NatWest's online banking services.
The Domain Name was registered by the Respondent on 21 May 2006.
As of 19 December 2006, the Domain Name resolved to a website which purported to be a site operated by the Complainant. It was prominently branded "NatWest" including the Complainant's official logo. The home page stated at the top: "Welcome to the Natwest Bank Plc website." The site included various links by which users were invited to provide personal information such as bank account numbers and passwords.
As of 22 January 2007, the website at the Domain Name contained a message to the effect that it had been hacked.
Complaint
The Domain Name is similar to the Complainant's "NATWEST" and "NATWEST ON LINE" names and marks. The Respondent has simply shortened "west" by omitting the letter "e," added a "b" to "online" and placed a hyphen between "Natwst" and "Online." These minor changes do not change the overall impression of the Domain Name, which strongly conveys the impression that it is sponsored by, or associated with, the Complainant because the Complainant's marks are the dominant component of the Domain Name. Moreover, the addition of the "online" suffix – which corresponds to and describes a well-known segment of the Complainant's business – to an abridgement of Complainant's "NATWEST" mark likewise does not change the overall impression of the Domain Name.
The Domain Name is apparently targeted toward Internet users who, while seeking to access the Complainant's websites and online banking services, either make slight errors when typing in the Complainant's actual domain names or attempt to access the Complainant's services by attempting to type in the Complainant's name along with the term "online", which describes an important aspect of the Complainant's businesses, and the letter "b" as an abbreviation for "bank" or "business".
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 Complainant's rights and because it has been used in a manner that takes unfair advantage of and is unfairly detrimental to the Complainant's rights.
The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting Complainant's business by perpetrating a fraud on internet users seeking the Complainant's online products and services. Such users were instead taken to the Respondent's fraudulent website, which, by its appearance and content, purported to be a legitimate website of the Complainant. This included the solicitation of information from them – likely in furtherance of fraudulent "phishing" activity. The Respondent's use of the Domain Name also unfairly disrupts the Complainant's business by interfering with the ability of users to reach the Complainant's legitimate website, thereby causing it loss of business and revenue as well as damage to the Complainant's goodwill and reputation.
The Respondent's use of 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 Complainant, is operated or authorized by Complainant, or otherwise is connected with Complainant is further evidence of an abusive registration.
The Domain Name is also an abusive registration because the Respondent was using it to benefit commercially from its unauthorized and illegitimate use of the Complainant's marks and associated goodwill and, thus, was using the Domain Name in a manner that takes unfair advantage of and is unfairly detrimental to Complainant's rights.
Finally, if a customer of the Complainant attempted to reach the Complainant's online banking services, but instead mistyped the name and reached the hacked version of the site, the customer would be left with the impression that Complainant's internet security had been breached. This is likely to erode consumer confidence in the security and reliability of the Complainant's online services. The Respondent's failure to protect the Domain Name from cyber-terrorism is further evidence of bad faith.
Response
The Respondent did not file a response.
General
To succeed, the Complainant has to prove in accordance with paragraph 2 of the DRS Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the DRS Policy) in respect of a name or mark identical or similar to the Domain Name and, second, that the Domain Name, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the DRS Policy).
Complainant's Rights
The Complainant undoubtedly has rights in the marks "NATWEST" and "NATWEST ONLINE" by virtue of its registered trade marks as well as common law rights deriving from very extensive trading activities under those names.
The Domain Name differs from the Complainant's "NATWEST" mark only by omission of the "e" in "Natwest" and addition of "-onlineb". The latter is in fact suggestive of "online business" or "online banking", both directly referable to the Complainant's services.
The only distinction between the Domain Name and the "NATWEST ONLINE" trade mark is the addition of a hyphen and the letter "b" at the end.
None of the above differences are sufficient to distinguish the Domain Name from the Complainant's "NATWEST" and "NATWEST ONLINE" trade marks.
The Complainant has established rights in a name or mark which is similar to the Domain Name.
Abusive Registration
Is the Domain Name an abusive registration in the hands of the Respondent? Paragraph 1 of the DRS 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 Domain Name is explicable only as a deliberate mis-spelling of the Complainant's trade mark and it has been used for a website which sought to impersonate the Complainant for some phishing or similar nefarious purpose. The Respondent has not filed a response to deny these assertions of the Complainant.
The Domain Name is therefore clearly an abusive registration and it is unnecessary to have regard to the non-exhaustive factors in the Policy which may be evidence that the Domain Name is an abusive registration or otherwise.
The domain name < natwst-onlineb.org.uk> should be transferred to the Complainant.
Adam Taylor Date
