Nominet UK Dispute Resolution Service
DRS 4148
The Royal Bank of Scotland Group Plc & National Westminster Bank Plc v. Andlowe Web Concepts
Decision of Independent Expert
Complainants: The Royal Bank of Scotland Group Plc & National Westminster Bank Plc
Country: GB
Respondent: Andlowe Web Concepts
Country: US
The domain name in dispute is natt-westonlineb.co.uk ("the Domain Name").
3.1 The Complaint was received in full (including annexes) by Nominet on 23 October 2006. Nominet validated the Complaint and sent a copy to the Respondent the following day, informing the Respondent that he had until 15 November 2006 to lodge a Response. It came to the attention of Nominet that the hard copy of the Complaint had not reached the Respondent, so a further copy was sent on 9 November 2006, informing the Respondent that he had until 22 November 2006 to lodge a Response.
3.2 On 16 November 2006, Nominet notified the parties that, since no Response had been received, the dispute would not proceed to Informal Mediation. (The fact that a revised deadline had been given to the Respondent was apparently overlooked - as to which, see section 4 below.) On 20 November 2006 the Complainants paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the Nominet UK Dispute Resolution Service ("DRS") Policy ("the Policy").
3.3 Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet appointed me as Expert on 27 November 2006.
4.1 In view of the fact that Nominet did not wait until the end of the extended period for the Response before asking the Complainants to pay the fee for an Expert's decision, I have considered whether there was a procedural irregularity sufficient to warrant re-starting the process to ensure that the Respondent was not unfairly treated. However, I have decided that to do so would be inappropriate for the reasons given below.
4.2 The details in Nominet's database entry for the Registrant and Administrative Contact for the Domain Name are inter alia as follows:
Registrant: Andlowe Web Concepts
Contact: andey helenah
Address: 673 Illia Street
Los Angeles
California
Postcode: 90033
Country: US
Email: andrew.anslowe@gmail.com
4.3 Nominet attempted to notify the Respondent of the Complaint by the following means, pursuant to paragraph 2(a) of the DRS Procedure:The WHOIS search result for the Domain Name states that the Registrant is a non-trading individual who has opted to have his address omitted from the WHOIS service. In the circumstances of this case, I do not feel constrained to keep the address confidential.
i. by email to andrew.anslowe@gmail.com (the e-mail address in Nominet's database entry for the Domain Name) and to postmaster@natt-westonlineb.co.uk (in accordance with paragraph 2(a)(ii) of the Procedure); and
4.4 No delivery failure reports were received in relation to either of the emails. However, the hard copy of the Complaint sent by post turned up at the address of the Complainants' legal representative in North Carolina (having been named as a copy addressee in the enclosed letter). Nominet therefore sent the second copy mentioned in paragraph 3.1 above on 9 November 2006 by the same three methods of service, offering a new deadline for filing the Response of 22 November. This time a delivery failure report was received in relation to the email sent to the 'postmaster' address, but not in relation to that sent to the 'gmail' address. The postal copy, on the other hand, was eventually received back at Nominet's offices on 24 November 2006, marked "No Such Street" by the US postal service.ii. by post to the postal address in Los Angeles, USA, given for the Respondent in Nominet's database entry.
4.5 Nominet quite correctly used the details that had been provided by the Respondent on registration of the Domain Name. In the circumstances outlined above, it is highly likely that the Respondent gave an incorrect postal address to Nominet, contrary to the terms of Nominet's standard form registration contract under which the Respondent will have agreed to keep Nominet informed of his correct contact details. As far as the email copies are concerned, I infer from the absence of delivery failures of the two emails to the gmail address or the first email to the postmaster address that the Respondent received the Complaint in soft copy on or about 24 October 2006 and again on or about 9 November 2006.
4.6 The question then arises what I should do about the fact that the later soft copy of the Complaint was accompanied by an email extending time for submitting the Response until 22 November 2006, whereas on only 16 November Nominet went on to send him a letter headed "You chose not to respond to the Dispute Resolution Service complaint about NATT-WESTONLINEB.CO.UK", explaining what would happen next if the Complainants paid the fee for a formal decision. I clearly should not refuse the Complaint altogether because of this procedural irregularity, since the Complainants are not at fault in any way; so my options are to start the whole process of notification again or to waive the irregularity and go on to decide the case in the normal way.
4.7 The Respondent has had notice of the Complaint since 24 October. If he was planning to submit a Response, but wanted to take advantage of the extension of time, he could easily have sent a short email to Nominet pointing out its mistake and asking it to abide by the extension. Alternatively, he could simply have filed the Response by the extended deadline of 22 November. He did neither of those things but instead stayed silent.
4.8 Given that the circumstances that gave rise to Nominet's mistake were caused by the Respondent giving a non-existent address to Nominet, and that the Respondent has by now had ample time to respond to the Complaint, I have concluded that re-launching the notification process would be unfair to the Complainants, and I proceed to decide this case on the basis that the Respondent has had sufficient opportunity to put in a Response to the Complaint.
5.1 The lead 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, RBS has offices elsewhere in Europe and in the United States and Asia.
5.2 In 2000, RBS acquired the second Complainant ("NatWest"), which had itself been formed as the result of a merger in 1968. NatWest is 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 through more than 1,600 branches and its website at www.natwest.com. A significant part of NatWest's business services are offered online, including services through which customers can pay bills, effect transfers of funds, organise debts and assets, view account histories and access multiple accounts.
5.3 NatWest trades under the name and mark NATWEST, which is registered as a trade mark in respect of a wide range of financial services, including internet banking, in the UK, the European Community and other countries around the world. NatWest has also registered the trade marks NATWEST ON LINE (in a stylised form) and NATWEST BUSINESS ONLINE (and ON-LINE) as UK trade marks in respect of banking and financial services generally and internet banking specifically.
5.4 Between them, the Complainants are the registrants of the domain names natwest.com, natwest.co.uk, natwestonline.com, natwestonline.org.uk and natwestonline.net, all of which resolve to the NatWest's primary website at www.natwest.com. NatWest also owns the domain name www.natwestonline.co.uk.
5.5 The Respondent claims to be a non-trading individual, and has registered the Domain Name by reference to the name Andlowe Web Concepts. Little is known about the Respondent from the file, except that he gave Nominet a postal address in Los Angeles in the United States, which cannot be found by the US postal service.
5.6 The Respondent registered the Domain Name on 2 April 2006. By the time of the Complaint, the Domain Name did not (and still does not) point to any live website. However, according to the Complainants, it did at an earlier stage point to a website which gave the impression of being owned and operated by NatWest. This contention will be considered further below.
Complainants6.1 The Complainants' contentions can be summarised as follows:
(1) The Complainants have rights in respect of the names and trade marks NATWEST and NATWEST ONLINE.
(2) The Domain Name is similar to these names and trade marks and to a number of the Complainants' domain names.
(3) 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 the Domain Name has been used in a manner that takes unfair advantage of and is unfairly detrimental to the Complainants' rights. In particular:
(a) The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the Complainants' business, in that he used the Domain Name to attract internet users to a fraudulent website, which by its appearance and content purported to be a website owned and operated by NatWest.
(b) 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 authorised by the Complainants, or is otherwise connected with the Complainants. This was certainly the case where the Domain Name was being used to perpetrate a fraud targeting the Complainants' customers. But, even since that has stopped, there is still great potential for confusion and, thus, serious disruption to the Complainants' business, for example if NatWest customers access the Domain Name only to be confused and aggravated by what they perceive as an inactive site. This is detrimental to the Complainants' business, and could potentially result in loss of customers.
(c) The Respondent is not a legitimate owner of, nor has he been given permission to use, the Complainants' marks. Therefore, there is no legitimate use to which the Respondent could put the Domain Name. His use of the Domain Name would in and of itself constitute passing off and/or trade mark infringement, so the Domain Name is an 'instrument of fraud' in the hands of the Respondent.
(d) Since the Respondent used the Domain Name to redirect internet users who were familiar with and searching for NatWest's online banking services to a fraudulent website which purported to be owned and operated by NatWest, he can be presumed to have been using the Domain Name to benefit commercially from the unauthorised and illegitimate use of the Complainants' marks and associated goodwill.
(4) The Respondent cannot establish any of the situations demonstrating that the Domain Name is not an Abusive Registration. In particular:
(a) the Respondent has not been commonly known by the names NATWEST, NATWEST ONLINE or NATT-WESTONLINEB.
(b) there is no active website to be found at www.natt-westonlineb.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
6.2 I have read the detail of these contentions as set out in the Complaint, as well as the supporting evidence, and I shall refer to such detail and evidence which I take into account in my discussion and findings below.(e) the Domain Name is not generic or descriptive.
Respondent6.3 The Respondent has not filed a Response.
General7.1 Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
i. it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
7.2 In the absence of a Response from the Respondent, I must consider whether the Complainants have established a prima facie case.ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainants' Rights7.3 Under paragraph 1 of the Policy, "Rights includes, but is not limited to, rights enforceable under English law". Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off in the United Kingdom and similar rights in jurisdictions elsewhere.
7.4 The Complainants have registered trade mark rights in respect of the names NATWEST and NATWEST ON LINE/ON-LINE, which directly cover inter alia financial services including internet banking services
7.5 Through its extensive use of the name NATWEST in connection with its financial services business, including internet banking services, NatWest has built up a substantial goodwill in relation to such services, such that it could rely on the common law of passing off in the UK to prevent the unauthorised use of the NATWEST name in relation to a range of financial services, including internet banking services. It is also likely to have similar common law or unregistered trade mark and/or unfair competition rights in other jurisdictions.
7.6 The name and mark NATWEST is not descriptive or generic, but has come to be associated exclusively with NatWest as a result of its extensive use. A very substantial number of consumers and potential consumers of internet banking services would associate the use of the names NATWEST or NATWEST ON LINE or confusingly similar names or marks with NatWest. NATWEST is such a well-known name that - if registered as a domain name by anyone not authorised by NatWest - it is likely to be held under English law to be an 'instrument of fraud', the use of which would inevitably lead to passing off. The addition of the descriptive term ONLINE would lead to the same result.
7.7 The most distinctive component of the Domain Name is the term NATT-WEST. This is a close variant of the Complainants' name and mark NATWEST. The other component of the Domain Name, ONLINEB, is a descriptive term indicating an activity that is conducted on the internet, with an added letter 'B' that is meaningless and does not detract from the perception of the word ONLINE. Although the added 'T', the hyphen and the added 'B' are all visible differences from the term NATWEST ON LINE (or ON-LINE), the overall impression of the Domain Name is nevertheless one of similarity to both NATWEST and NATWEST ON LINE/ON-LINE, in which the Complainants have Rights.
7.8 I therefore conclude that the first limb of the test in paragraph 2 of the Policy is satisfied.
Abusive Registration7.9 Paragraph 1 of the Policy defines an "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
7.10 I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
7.11 Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are brought into play by the Complainants are as follows:
"3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
(A) …(B)…; or
(C) for the purpose of unfairly disrupting the business of the Complainant;
7.12 In support of both of these grounds, the Complainants allege that the Respondent used the Domain Name to lead internet users to a "fraudulent website which, by its appearance and content, purported to be a website owned and operated by NatWest", and that this was designed both to disrupt NatWest's business and to confuse NatWest's customers and potential customers.(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;..."
7.13 This is a serious allegation, which I would usually expect to be accompanied by more detail than has been given, including printouts showing the offending website (or an explanation as to why these cannot be produced). It is odd that further information has not been presented, since the operation of a fraudulent website as outlined would be strong evidence to prove the Complainants' case. Instead, a bare allegation is made by a US attorney "on information and belief", without any explanation of who gave him the information and why he believes that it is true.
7.14 On the other hand, the Respondent has done nothing to rebut the allegation. On that basis, and given that it is made by a US attorney on behalf of two highly respected financial institutions, I believe that it is appropriate to accept its truth. The use of the Domain Name in the way described is strong evidence that the Domain Name is an Abusive Registration.
7.15 In view of this finding, I do not have to reach a conclusion on the Complainants' argument that - even without the alleged use in respect of the fraudulent website - the Domain Name is an instrument of fraud whose use will inevitably lead to passing off. The 'instrument of fraud' doctrine has been applied in cases involving unauthorised registration of well-known brand names as domain names, such as in British Telecommunications plc v One in a Million Ltd [1999] ETMR 61. The domain names in issue have generally been identical or almost identical to the brand name concerned. Although I have found that the Domain Name in this case is similar to names in which the Complainants have Rights, the differences are more noticeable than in most of the 'instrument of fraud' cases and I do not have the evidence before me that would confirm the inevitability of passing off occurring through any use of the Domain Name. It is the specific evidence of the Respondent's attempt to pass himself of as being connected with the Complainants which has persuaded me in this case that there was a risk of this occurring.
7.16 I have considered whether there are any factors in the Respondent's favour which demonstrate that the Domain Name is not an Abusive Registration, some examples of which are given in paragraph 4 of the Policy. There do not appear to be any. In particular: there is no evidence of the Respondent being commonly known by any of the names NATWEST, NATWEST ON LINE or NATT-WESTONLINEB; there is no evidence of the Respondent using or preparing to use the Domain Name in connection with a genuine offering of goods or services, or any other legitimate non-commercial or fair use of the Domain Name; and the Domain Name is not generic or descriptive.
7.17 The Respondent has not submitted a Response, and therefore I have no explanation from his side as to any justification for adopting the Domain Name. However, there is nothing in the circumstances of which I am aware which assists the Respondent under paragraph 4 or otherwise.
7.18 Further, the fact that the US postal service reported "No Such Street" in relation to the letters sent to the Respondent by Nominet indicates that he gave false contact details to Nominet when he registered the Domain Name. The Complainants would not have known this when launching the Complaint, since the Respondent had opted to keep his address details confidential. Independent verification that a Respondent has given false contact details to Nominet is additional evidence of an Abusive Registration (see paragraph 3(a)(iv) of the Policy).
7.19 In all the circumstances set out above, I conclude that both limbs of the definition of "Abusive Registration" are satisfied in this case.
I find that the Complainants have Rights in respect of names and marks which are similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Pursuant to the Complainants' joint request, I therefore direct that the Domain Name natt-westonlineb.co.uk should be transferred to the lead Complainant, RBS.
Anna Carboni
5 December 2006