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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Bank Of Scotland Group Plc v Bulldogg [2006] DRS 4197 (18 December 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4197.html Cite as: [2006] DRS 4197

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Nominet UK Dispute Resolution Service

DRS Number 4197

B E T W E E N:

THE ROYAL BANK OF SCOTLAND GROUP Plc

Complainant

- and -

MELISHA BULLDOGG

Respondent

Decision of Independent Expert

1. Parties

Complainant: The Royal Bank of Scotland Group Plc

Country: GB

Respondent: Melisha Bulldogg

Country: US

2. Domain Name

natwestonline-b.co.uk

3. Procedural Background

3.1.1 The Complaint, which is a complaint of Abusive Registration under the Dispute Resolution Procedure ("the DRS") of Nominet UK ("Nominet"), and is dated 18 November 2006, was posted by Nominet to the Respondent under cover of a letter dated 13 November 2006. The covering letter included the following paragraphs:-

"A copy of the complaint is attached to this letter, which is deemed to have been received by you on 20 December 2005 (please refer to paragraphs 2(a) and 2(e) of the Procedure).

In accordance with the Procedure, you have 15 working days, ie until 05 December 2006 to respond to the complaint. In order to be valid, your response must comply with the Procedure, and must be received by Nominet in both hard copy and electronic form."

3.1.2 The Respondent did not respond by 05 December 2006 or at all. In a letter dated 6 December 2006 Nominet wrote again to the Respondent, referring to the failure of the Respondent to respond to the Complaint, and communicating that, in the circumstances, the dispute would be referred to an independent expert for a decision if The Royal Bank of Scotland Plc paid the appropriate fees by on or before 20 December 2006 - a condition which was fulfilled.

3.1.3 By letter dated 11 December 2006 I was appointed with effect on 15 December 2006 to provide a Decision under Nominet UK's Dispute Resolution Policy ("the Policy"). I am required to send my decision to Nominet no later than 03 January 2006.

3.1.4 I have been provided with the following materials:-

Dispute History

Complaint

Standard correspondence between Nominet and the parties

Companies House print outs for the parties.

Register entry for natwestonline-b.co.uk.

Nominet WHOIS query result for natwestonline-b.co.uk.

Printout of website at www.natwestonline-b.co.uk

Copy of Nominet UK's Policy and Procedure.

4. Outstanding Formal Procedural Issues

4.1 It is to be noted that although the Complaint is nominally only that of the Royal Bank of Scotland Group Plc, it is clear from the terms of the Complaint that National Westminster Bank Plc is also a complainant. As a matter of procedure I consider that both these companies should be named as complainants. Nevertheless, this appears to me to be a matter of form rather than substance.

5. The Facts

5.1 The domain name was registered by the Respondent on 5 May 2006.

6. The Parties' Contentions

Complainant

6.1 The Complaint of Abusive Registration is in the following terms:-

The Complaint

I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

1. Complainants have rights in respect of names and marks that are similar to the disputed Domain Name.

A. Complainants' Background (see Annex A for a listing of contact details for each of the Complainants)

(1) Lead Complainant The Royal Bank of Scotland Group plc ("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. (Materials presenting information about RBS's business are attached as Annex B.)

(2) 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. (See Annex B.)

(3) RBS is registered at Companies House and has been so registered since 1968. (See Annex C.)

(4) Complainant National Westminster Bank plc ("NatWest") was formed as the result of a merger in 1968. 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. (Materials presenting information about NatWest's business, including its association with RBS, are attached as Annex D.)

(5) 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. (See Annex E.)

(6) NatWest is registered at Companies House and has been so registered since 1968. (See Annex F.)

B. Complainants have rights in respect of the "NATWEST" and "NatWest ON LINE" names and marks.

(7) The marks on which this complaint is based are "NATWEST" and "NatWest ON LINE".

(8) 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"). (Printouts reflecting these registrations, which date back to 1973 and cover a wide range of financial services, including Internet banking, are attached as Annex G. A report listing NatWest's worldwide trademark registrations and applications for its NATWEST and related marks is attached as Annex H.)

(9) In addition, in connection with its online banking services, NatWest has registered the trademarks "NatWest ON LINE" and "NATWEST BUSINESS ONLINE" with the UKPO. (Printouts reflecting these registrations are attached as Annex G.)

(10) 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) (Copies of the WHOIS records for these domain names are attached as Annex I.) In connection with the promotion and operation of its business, 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. (See Id.) Complainants own additional domain name registrations relating to NatWest's online banking services including natwestonline.co.uk. (See Id.)

C. The Domain Name is similar to NatWest's names and marks and to Complainants' domain names.

(11) Respondent's Domain Name is similar to NatWest's "NATWEST" and "NatWest ON LINE" names and marks – Respondent has simply added a "b" to "online" and a hyphen between "Online" and the letter "b". 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, Complainants because Complainants' marks will be perceived by Internet users as the most distinctive and dominant component of the Domain Name. 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); Pro-Face UK Ltd. v. Price (DRS 00399 8 August 2002) ("It is customary in domain name disputes to disregard . . . an insignificant piece of punctuation such as a hyphen."). 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, Complainants' "NATWEST" and "NatWest ON LINE" marks remain the dominant and distinctive element in Respondent's "natwestonline-b.co.uk" 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.

(12) Further, but for these insignificant additions, the Domain Name is identical to Complainants' "natwestonline.co.uk" domain name.

(13) The Domain Name is apparently targeted toward Internet users who, while seeking to access 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 Respondent's website, which, upon information and belief, was used for fraudulent purposes, and which currently resolves to an inactive site. (A copy of the webpage to which the Domain Name currently resolves is attached as Annex J).

(14) Respondent registered "natwestonline-b.co.uk" on 5 May 2006 – long after Complainants acquired rights to their marks. (See Annex K.)

15. Respondent appears to have no legitimate rights to the Domain Name.

II. The Domain Name, in the hands of the Respondent, is an abusive registration.

(16) 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 Complainants' rights and because it has been used in a manner that takes unfair advantage of and is unfairly detrimental to Complainants' rights.

(17) First, Respondent registered the Domain Name primarily for the purpose of unfairly disrupting Complainants' business. See DRS Policy 3(a)(i)(C). Upon information and belief, 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. Upon information and belief, such users were instead taken to Respondent's fraudulent website, which, by its appearance and content, purported to be a website owned and operated by NatWest. Respondent, however, is in no way connected with 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).

(18) Second, 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, operated or authorized by, or otherwise is connected with Complainants. See DRS Policy 3(a)(ii). This is the case where Respondent was, upon information and belief, using the Domain Name to perpetrate a fraud targeting Complainants' customers. See Enterprise Rent-a-Car Co. v. Alliance Ltd / 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).

(19) Moreover, Respondent's Domain Name currently resolves to an inactive webpage, which also has great potential for confusion and, thus, serious disruption to 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. (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).

(20) Third, 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, Respondent's registration of the domain name was necessarily made in a manner which took unfair advantage of Complainants' rights. Cf. 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).

(21) Finally, the Domain Name is an abusive registration because Respondent presumably was using it to benefit commercially from its unauthorized and illegitimate use of Complainants' marks and associated goodwill. Specifically, upon information and belief, 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 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 offered under the complainants' mark to the complainants' competitors).

(22) Moreover, Respondent cannot establish any situation demonstrating that the Domain Name is not an Abusive Registration. See DRS Policy, Section 4(a). In particular:

(a) Respondent has not been commonly known by "NATWEST", "NATWEST ONLINE", or "natwestonline-b";

(b) there is no active website at www.natwestonline-b.co.uk;

(c) in light of the fame of Complainants' marks, Respondent cannot make legitimate non-commercial or fair use of the Domain Name;

(d) nor can Respondent make a genuine offering of goods or services under the Domain Name; and (e) the Domain Name is not generic or descriptive. …

6.2 The Complainant requests the transfer of the Domain Name.

Respondent

6.3 As stated above, the Respondent has not submitted any Response.

7. Discussion and Findings:

General

7.1 Under paragraph 2a of the Policy the Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that

"i. The Complainant has 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."

7.2 Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

7.3 Paragraph 1 of the Policy defines "Rights" as including but not being "limited to, rights enforceable under English law". This definition is subject to a qualification which is not material.

Complainant's Rights

7.4 The Complaint (which is signed and includes a statement of truth and to which there is no challenge) and the documentation provided with it, in my opinion shows that the Complainant National Westminster Bank Plc

7.4.1 has "rights" in the names NATWEST and NatWest ONLINE on the basis of both its registered marks and registered domain name; and

7.4.2 establishes, on the balance of probabilities, that before the date of registration of the Domain Name the Complainant had acquired common law rights in those names.

7.5 There is no satisfactory evidence before me that the Complainant The Royal Bank of Scotland Plc has rights in the names NATWEST or NatWest ONLINE. All the registrations are in the name of National Westminster Bank Plc or of a company called The Royal Bank of Scotland Plc, and it is not clear that this is the same company as The Royal Bank of Scotland Group Plc.

7.6 I consider and find as a fact that the names in which the Complainant National Westminster Bank Plc has rights are similar to the Domain Name. Accordingly, I am satisfied that the conditions of paragraph 2a of the Policy are satisfied.

Abusive Registration

7.7 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 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."

7.8 The Policy provides:

"3 Evidence of Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A 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 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 The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv It is independently verified that the Respondent has given false contact details to us; or

v The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A has been using the domain name registration exclusively; and

B paid for the registration and/or renewal of the domain name registration.

b Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.

c There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

i Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has

A used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

B been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name; or

C made legitimate non-commercial or fair use of the Domain Name; or

ii The Domain Name is generic or descriptive and the Respondent is making fair use of it.

iii In relation to paragraph 3(a)(v); that the Registrant's holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or

iv In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.

b Fair use may include sites operated solely in tribute to or criticism of a person or business.

c If paragraph 3(c) applies to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.

7.9      I am satisfied and find as facts that

7.9.1 the Respondent's website currently resolves to an inactive site.

7.9.2 the Respondent registered "natwestonline-b-co.uk" long after Complainants National Westminster Bank Plc acquired rights to names NATWEST and NatWest ONLINE.

7.10      I have been provided with no material or particulars to support the broad assertion that

"Upon information and belief, 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. Upon information and belief, such users were instead taken to Respondent's fraudulent website, which, by its appearance and content, purported to be a website owned and operated by NatWest ."

Accordingly, I reject that assertion. In particular there is no sufficient material upon which a finding could be made that the object of the registration of the Domain Name was "to perpetrate a fraud" as asserted in paragraphs 17 and 21 of the Complaint.

7.11     . I have not been provided with any evidence that any person or business has been confused into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant National Westminster Bank Plc. Nevertheless I am quite satisfied that persons or businesses are likely to be so confused, and in my judgment that may be sufficient to establish an Abusive Registration, since the list of factors identified in paragraph 3 of the Policy is stated to be non-exhaustive, and "actual confusion" is specifically identified in paragraph 3aii of the Policy as being a factor which may be evidence of an Abusive Registration.

7.12      Further, I accept the contention in paragraph 20 of the Complaint that given the strength of the "NATWEST" and "NatWest ON LINE" marks and names, the confusing similarity of the Domain Name to them, 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 for the Domain Name to be confused with those marks and names and hence primarily to divert business away from National Westminster Bank plc. Accordingly, I consider that the factor identified in paragraph 3aiC of the Policy is also established.

7.13      There is no material before me to establish any of the non-exhaustive list of factors identified, in paragraph 4 of the Policy, as being capable of being evidence that a Domain Name is not an Abusive Registration. Indeed there is no material before me to explain or justify the registration of that name by the Respondent.

7.14      Accordingly, in the terms of paragraph 1 of the Policy I am satisfied and find that the Domain Name:-

7.14.1 was registered in a manner which at the time when the registration took place was unfairly detrimental to the Rights of the Complainant National Westminster Bank Plc;

7.14.2 has been used in a manner which took unfair advantage of and was unfairly detrimental to that Complainant's Rights.

8. Decision

8.1      For the reasons give above, I find that the Domain Name was acquired in a manner which at the time when the acquisition took place took unfair advantage of and was unfairly detrimental to the Rights of the Complainant National Westminster Bank Plc and, in the hands of the Respondent, is an Abusive Registration.

8.2      The Complainants have requested the transfer of the Domain Name. On the basis of the material before me I consider that that is an appropriate remedy and accordingly that, as requested, the Domain Name should now be transferred to the Complainant National Westminster Bank Plc.

Signed…

David Blunt QC

18 December 2006