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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 Albion Harbour PTY Ltd [2008] DRS 5826 (13 August 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5826.html Cite as: [2008] DRS 5826 |
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Complainant: National Westminster Bank plc
Country: GB
Respondent: Albion Harbour Pty Limited
Country: AU
2.1 natwst.co.uk (the "Domain Name").
3.1 Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively).
3.2 Nominet received the hardcopy Complaint in full, with evidence, on 25 June 2008. It was validated and sent it to the Respondent, who was advised it had 15 working days to respond. It was sent by fax and by email to [email protected]. The Response was due on 17 July 2008. No Response was submitted then or thereafter. On 18 July 2008, the parties were advised the dispute would be referred to an independent expert on payment of the fee.
3.3 I was appointed as the independent expert in this dispute on 30 July 2007, on providing a declaration of impartiality and independence.
4.1 Service
4.1.1. The DRS derives its jurisdiction from the terms and conditions of the contract of registration between the Respondent and Nominet ("the Contract"). Clause 14 of the Contract incorporates the Policy and Procedure by reference. Clause 4.1 requires a Registrant's details to be entered in the Register and the Registrant agrees to ensure Nominet has its correct postal address, telephone and fax number and email address.
4.1.2. §2(a) of the Procedure provides a Respondent will be served with a Complaint, at Nominet's discretion, by any of; first class post, fax or email to the contact details in the Register; by email to postmaster@; or any email addresses shown on any active web pages to which the domain name resolves.
4.1.3. Nominet served the Complaint on the Respondent on 25 June 2008 by: (a) fax to the fax number given on the Register; and (b) by email to [email protected]. The fax confirmation report on file indicates the fax was successfully sent. A delivery failure report was received in relation to the email. The Contract renders the Respondent responsible for any failure to notify Nominet of changes to its details and the Complaint is therefore deemed served on 25 June 2007.
4.2 Default
4.2.1. Although the Respondent has failed to submit a Response, the Procedure does not provide for a decision by default. The Complainant must still prove its case, although an expert may draw inferences from a party's default as appropriate.
5.1 The Complainant has traded since 1968 and is one of the largest national banks in the UK and part of the fifth largest financial services group in the World, having been acquired by the Royal Bank of Scotland in 2000. It provides banking and other financial products and services through its branches and online services. It has registered the trade mark Natwest as a UK and a Community mark and also registered it in many other countries. Its domain names include natwest.co.uk, natwestgroup.co.uk and natwest.com, registered in 1996 and 1997 respectively.
5.2 The Respondent registered the Domain Name on 12 May 2004, as evidenced by the Register and WHOIS reports.
5.3 On 25 June 2008, the Domain Name resolved to a site entitled natwst.co.uk and comprising advertising links for online bank accounts, loans and credit cards.
Complainant
6.1 The Complainant says it has rights in a name or mark identical or similar to the Domain Name and that in the hands of the Respondent, the Domain Name is an Abusive Registration.
6.2 As to Rights, the Complainant relies on its registered marks including the UK registered mark, NATWEST, registered in 1973 in class 16, No.1021601 (later registered in a wide variety of classes as both word and device marks) and the Community Trade Mark, NATWEST, in classes 9,16,35, 36,38, 41 and 42 in 2006. National marks have also been registered in many countries, e.g. China, Brazil, Vietnam etc. The Complainant also relies on its very extensive use of the names and marks in trade since 1968.
6.3 As to Abusive Registration, the Complainant says the Domain Name in the hands of the Respondent is abusive pursuant to §3 (a)(i)(C) (unfair disruption) and §3(a)(ii) (confusion) of the Policy and due to the unauthorised commercial use it makes of the Complainant's goodwill.
Respondent
6.4 No Response was submitted.
General
7.1 The DRS is designed as a fast, simple alternative to litigation. Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy.
7.2 Paragraph 2(a) of the Policy requires the Complainant to prove 2 elements:
"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."
The Complainant bears the onus of proof and must prove both elements on the balance of probabilities. The DRS's jurisdiction is limited to these issues and the remedies of cancellation, suspension, transfer or amendment of the Domain Name. The Policy does not provide for the determination of allegations of trade mark infringement or passing-off proper.
Complainant's Rights
7.3 Rights under the Policy include rights to registered and unregistered trade marks. The Complainant has submitted detailed evidence of its numerous registered marks and domain names as well as evidence of its extensive use and I find the Complainant has Rights in its registered marks and rights at common law arising from its extensive use of its marks and name in trade.
7.4 Paragraph 2(a)(i) of the Policy requires that the name or mark in which the Complainant has Rights "is identical or similar to the Domain Name." In determining this, suffixes are to be ignored. We are therefore comparing "natwest" with "natwst."
7.5 The Complainant says the Domain Name is a deliberate typographical misspelling, omitting the 'e' from its registered mark, and as such should be treated as similar to the mark it imitates. It relies on National Westminster Bank Plc v. Harry Planet, DRS 3291 (7 March 2006) (ntawest.co.uk, nawtest.co.uk, and natwext.co.uk held similar to NATWEST). It also cites Warren James Jewellers Limited v. David Allan, DRS 3706 (28 July 2006) (warenjames.co.uk similar to the trading name Warren James) and Volvo Trademark Holding Aktiebolag v. Kwan Jin, DRS 3700 (12 July 2006) (vovlo.co.uk, similar to vovlo.co.uk).
7.6 I accept the Complainant's submissions on similarity and am satisfied the Complainant has Rights in marks similar to the Domain Name.
Abusive Registration
7.7 The second element the Complainant must prove under §2(a) of the Policy, is Abusive Registration, defined in §1 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 At §3 of the Policy is a non-exhaustive, illustrative list of factors, which may evidence an Abusive Registration. Conversely, §4a of the Policy provides a non-exhaustive list of factors which may evidence that a registration is not Abusive.
Unfair Disruption, DRS Policy 3(a)(i)(C).
7.9 The Complainant relies on its international reputation as a provider of financial services and says the similarity between its marks and the Domain Name means the Respondent registered the Domain Name with the purpose of taking unfair advantage of the Complainant's goodwill. It says the Respondent intended to target internet users seeking the Complainant online, who mistype its domains. It says abusive intent is demonstrated further by the use of the Complainant's mark (albeit misspelt) for competing products and services in the same field of activity.
7.10 It relies on National Westminster Bank plc v. 2catchafly, DRS 3390 (3 April 2006) ("By knowingly linking the domain name . . . to a site that offers links to other sites offering financial services . . . 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.") and The Royal Bank of Scotland Group Plc v. Jin, DRS 3931 (9 October 2006) (same).
7.11 Given the Complainant's extensive reputation, it is safe to conclude the Respondent had both the knowledge and intent required. See Decision of the Appeal Panel in Verbatim v Toth, DRS 04331 (31 July 2007) at §8.13 (knowledge and intention are pre-requisites for a successful complaint under all heads of §3(a)(i) of the Policy). Typosquatting is a deliberate attempt to generate traffic from another's goodwill and inherently involves diversion and disruption. I find the registration was made for the very purpose of earning revenue from the diverted traffic through advertising and that it takes unfair advantage of the Complainant's Rights.
Confusion, DRS Policy, Section 3(a)(ii).
7.12 The Complainant says the similarity of the Domain Name to its marks and the Respondent's use in relation to competing products, confuses the public who may think the Respondent or its site is connected, authorized or sponsored by the Complainant. It relies on similar facts in National Westminster Bank plc v. Harry Planet, DRS 3291 (7 March 2006) and Warren James Jewellers Limited v. David Allan, DRS 3706 (28 July 2006) ("the nature of this type of typo-squatting is to seek to take advantage of typing errors by Internet users, and the Expert considers that it is natural to conclude that Respondent intended there to be confusion which would lead a customer or potential customer into believing that the Domain Name is registered to, operated or authorized by the Complainant, because there is no other reason for the web pages to exist than for people to visit them.").
7.13 It's worth just turning to the words of §3(a)(ii) of the Policy: "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 to the Complainant." Apart from initial interest confusion, I do not think anyone is or would be confused by the use in this case. Most internet users would immediately recognise the Respondent's site for what it is and would not think there was any connection between the parties or that the use was authorised. Initial interest confusion must be treated with care as domain names often employ or reference the Rights of a third party, but this alone is not enough for Abusive Registration. Whether initial interest confusion can evidence an Abusive Registration is dependent on all of the facts in a given case. If, for instance, a Respondent is also gaining a monetary or reputational advantage, this may tip the balance against them.
7.14 However, it is accepted that Typosquatting causes confusion or the likelihood of confusion. In addition to the Complainant's authorities, see The Carphone Warehouse Limited v.Russell Wilkes DRS 02086 (carphonewarhouse.co.uk and thecarphonewarhouse.co.uk) and Endsleigh Insurance Services Ltd v. David Graham, DRS 02549 (endsligh.co.uk), and Yahoo! Inc v. Smith, DRS 00821 (yahho.co.uk). It is clear from our finding in relation to unfair disruption above, the Respondent intended and created the confusion in order to benefit financially from it and this use does take unfair advantage of the Complainant's Rights.
Unfair Advantage
7.15 The Complainant also says the Domain Name is an abusive registration because it can be inferred that Respondent has been using the Domain Name to benefit commercially from its unauthorized and illegitimate use of Complainant's mark and associated goodwill through the Respondent's sites obvious participation in "pay per click" or "click-through" schemes earning it revenue based on the amount of traffic diverted to the sites advertised. The Complainant relies on The Royal Bank of Scotland Group plc v. Laurent Girault, DRS 3806 (10 August 2006) and The Royal Bank of Scotland Group plc v. Robert Morrison, DRS 3719 (21 July 2006).
7.16 Use of a parking or other site employing paid advertising is not, of itself, determinative and must be considered in light of all other facts -particularly the fame or strength of the mark and the similarity of the name and the mark, and the use of paid advertising in the same or different fields and all other factors. In this case, I find this factor made out for the reasons discussed above in relation to disruption and confusion.
Factors for Non Abusive Registration
7.17 None of the factors evidencing the registration is not abusive are applicable here.
8.1 I find that the Complainant has Rights in a mark which is similar to the Domain Name, which is an Abusive Registration in the hands of the Respondent. Accordingly, the Domain Name should be transferred to the Complainant.
Victoria McEvedy
13 August 2008
