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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Takeda, Jim
Case No. D2002-0994
1. The Parties
The Complainant is National Westminster Bank plc of London EC2M 3UR, United Kingdom, ("UK"), represented by Cogent IPC Ltd of London W1F 7QH, UK.
The Respondent is Faisal Ilyas of Cardiff, Wales CF24 4QE, UK.
2. The Domain Name and Registrar
The disputed domain name is <natwest.org> ("the Domain Name), registered with Register.com ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 25, 2002. The Registrar confirmed on October 28, 2002, that it was the Registrar, that the Respondent was the registrant, that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applied to the registration, that the language of the registration agreement was English, and that the Respondent submitted in that agreement to the jurisdiction of the courts at the Registrar’s principal office. The Center checked the Complaint for compliance with the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). No deficiency was found.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 1, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2002, but the time limit was extended at the Respondent’s request to November 26, 2002. The Response was duly filed with the Center by email and fax on November 25, 2002.
The Center appointed Jonathan Turner as the sole Panelist in this matter on December 12, 2002. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. Having reviewed the file, the Panel concludes that all relevant procedural requirements were complied with and the dispute was submitted to a properly appointed Panel in accordance with the Policy, the Rules and the Supplemental Rules.
Shortly after the filing of the Complaint, the Respondent sent a further email to the Complainant as described in section 4 below. The Panel has decided to admit this email and the Complainant’s reply as part of the evidence under paragraph 10(d) of the Rules. This correspondence was not available to the Complainant when the Complaint was filed and the Respondent is not prejudiced by its admission, since he was informed of the Complainant’s request to add it to the file before the commencement of the Proceeding.
4. Factual Background
The Complainant is a major bank in the UK. It is frequently called "NatWest", a shortened form of its name, and it has registered "NATWEST" as a trademark in the UK and other countries for various services and goods.
The Respondent is an individual resident in Cardiff in the west of the UK. He registered the Domain Name on May 25, 2002. The Respondent does not appear to have used it for an active website, but he has claimed in the correspondence summarised below and his Response in this Proceeding that he intended to use it for a software program or an ISP help web page titled "Network And Technical West".
On August 29, 2002, a representative of the Complainant emailed the Respondent asking him to contact her urgently regarding one of his domain names which she was interested in. The email did not disclose that she was acting for the Complainant. The Respondent replied stating:
"The domain(s) in question, although registered by myself are not wholly managed and maintained by myself. They’re used primarily for development programming and such – accessed by a few personal friends globally. There’s no plan to relinquish any of them, as the intended registration was for personal use, as opposed to profitability in sales, or exchange. However, if there are justifiable, valid claims for your usage, chances are we’ll consider the offer."
The Complainant’s representative asked further questions to which the Respondent replied that he was also a student, studying computer science and law; that the domain resolved to blank pages because as of late he had not had the time to invest in website content; and that he was webmaster of <natwest.org>, <buildingsociety.net> and <poisoned.net>. He added that the first two domain names had already imported four-figure offers which he had declined.
On September 2, 2002, the Complainant’s representative sent the Respondent a formal letter claiming that the Complainant had rights in the name "NATWEST" and that the Respondent’s registration and use of the Domain Name were liable to cause confusion. The letter requested the Respondent to cease using the name "NATWEST" and to transfer the Domain Name to the Complainant, and undertook to reimburse all reasonable cost and expenses incurred by the Respondent in respect of the registration.
The Respondent replied the same day, stating:
"‘Natwest’ is primarily a project for a software program I’ve invested time and effort on, over the years, pertaining to the name of "Network And Technical West" Yes, the name represents a very valuable asset to myself. The very reason I’ve been reluctant to relinquish the domain name, even where a substantial amount of finance has been offered. The implicit informal assumption that I’ve registered the domain for financial purposes doesn’t qualify for the chalk on the board.
"As far as costs are involved, if who you represent are willing to compensate me for a generous goodwill gesture, for acting in a way that will make your business prosper, you’ll have to take into account the following: / The initial domain registration costs / The web hosting costs which have been paid in advance / Email aliases which exist on the account / My personal time and expenditure creating the software tagged with "Natwest" as it’ll have to be re-launched with another name, sometime in the distant future, maybe."
The Complainant’s representative replied on September 6, 2002, asking the Respondent to specify the amount of his reasonable costs and expenses, but noting that they were not soliciting a purchase of the Domain Name at some exorbitant price as suggested by the Respondent’s reference to a "generous goodwill gesture". The Respondent’s reply complained that the Complainant had just closed his bank account without reason or prior notice, but did not specify the amount of his reasonable costs and expenses.
There appears to have been no further correspondence until the Complaint was filed on October 26, 2002. The Respondent then emailed the Complainant on October 29, 2002, stating:
"Considering that you’re not willing to purchase it (the domain) for an ‘exorbitant price’, yet willingly, you’re distributing approximately Ј962 ($1,500 USD) for attempted administrative proceedings by a single Panelist, chances are an amicable resolution can be found. Haggling isn’t my speciality, neither is random ‘babble’. What do you consider a "reasonable amount", what does it equate to? If you specifically calculate an amount, something that you’re not willing to increase in any circumstances, that should be mutual enough."
The Complainant’s representative replied stating that the Complainant had merely offered to reimburse the Respondent’ expenditure, and that the matter had now proceeded to the next phase.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its trade mark "NATWEST" registered in the UK and other countries for various services and goods; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that it was registered and is being used in bad faith.
In particular the Complainant contends that the Domain Name was registered for the purposes of sale to the Complainant at a substantial profit, as indicated by the correspondence between the parties; and/or to prevent the Complainant from reflecting its mark in a corresponding domain name; and/or to attract internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark. The Complainant contends that the Respondent’s lack of use of the domain name and aggressive correspondence constitute further evidence of bad faith.
The Complainant further notes that "http:/www.natwest.org" resolves to a secure administrator’s page and speculates that the Respondent might have a website containing undesirable material accessible through this page using a password.
The Respondent states that he was unaware of any trademark of the Complainant and registered the Domain Name on the assumption that it would be of no concern since the ".org" TLD is generally used by non-commercial entities. He draws attention to other domain names incorporating "natwest" such as <natwest.net> which he says are not connected with the Complainant. He states that the page at "http:/www.natwest.org" is a legitimate control panel whose authenticity could be confirmed by the host.
The Respondent denies that he registered or is using the Domain Name in bad faith. He says that he registered it for personal, non-profit, non-commercial use as an ISP help page, entitled "Network And Technical West", and accessible at "http://btconnect.cjb.net". He says that he incurred expenditure of about Ј10,000 on designs, features and value/offers which he sought in his correspondence with the Complainant to make transparent without being too specific. He also says that he felt intimidated by the Complainant’s threatening correspondence.
6. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove (A) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (B) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (C) that the Domain Name has been registered and is being used in bad faith.
A. Identical or confusingly similar to mark in which Complainant has rights
The Panel considers that the Domain Name is identical to the mark "NATWEST" in which the Complainant has registered rights. For the purposes of this requirement, the generic TLD suffix is to be disregarded (see e.g. WIPO Case No. D2001-0154 <kcts.com>).
Alternatively, the Domain Name is confusingly similar to the mark "NATWEST". Although the ".org" TLD may have been intended originally for non-trading organisations, its use is not restricted to such organizations and many Internet users are not aware of the original purpose of the different TLDs. The Panel has no doubt that the ".org" suffix would not dispel confusion caused by the use of the Complainant’s well-known mark.
The possibility that other parties have registered similar domain names is no defence. Indeed, it is common for well-known marks to attract a number of abusive registrations of confusingly similar domain names.
B. Rights or Legitimate Interests
The Panel considers that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. Although the Respondent now has a web page at "http://btconnect.cjb.net" entitled "Natwest / Network And Technical West" there is no evidence of use or of demonstrable preparations to use these names before notice of the dispute.
In any case, the Panelist is satisfied that any use or preparations for use of the name "Natwest" by the Respondent have not been in connection with a bona fide offering of goods or services or other legitimate or fair use. The Respondent must have been well aware of the Complainant and the widespread use of the name "NatWest" to refer to it. Not only is the Respondent a resident of the UK, where the Complainant is one of four major retail banks; he even had an account with the Complainant, which he described as a "NatWest banking account" in his letter of September 9, 2002.
The Respondent’s explanations of his use of the name "Network And Technical West" have varied from a project for a software program in which he said he had invested time and money over the years and which might be relaunched in the distant future (letter of September 2, 2002), to an operational ISP help web page (Response in this Proceeding of November 25, 2002). Had the Respondent already been using the name "Natwest" on a web page at the time of his letter of September 2, 2002, he would surely have mentioned it.
"Network And Technical West" is an odd name to choose for either of the uses claimed by the Respondent, and "Natwest" is an even odder abbreviation of it. It appears to the Panelist that the name "Network And Technical West" was contrived to provide a spurious explanation for his registration of a Domain Name identical to the Complainant’s well-known mark.
C. Registered and Used in Bad Faith
As discussed in subsection B above, the Panel considers that the Respondent registered the Domain Name knowing that its SLD was identical to the Complainant’s well-known mark, and that he has provided spurious explanations for his choice of the name.
The Respondent claimed in the correspondence summarized in section 4 above that he had invested time and money in connection with the domain name. However, he then failed to state the amount of the expenditure, despite specific requests by the Complainant’s representative to do so and an undertaking to reimburse such costs. In his email of October 29, 2002, the Respondent suggested an amicable resolution by payment of an amount between the fee for this Proceeding and an "exorbitant price".
In his Response in this Proceeding, the Respondent asserts that he has "an outbound expenditure of approximately Ј10,000 as far as domain costs designs; features and the domain value/offers are concerned". He continues
"Due to the very alleged element of bad faith, the Respondent did not communicate this to the Complainant. If the Respondent indeed had communicated this, it would enable the Complainant to base an argument of blackmail and trademark sale. In almost every method of communication the Respondent attempted to make this transparent without being too specific. "Out of pocket" expenses relate to the above sum."
The Panel regards this as an admission that the Respondent’s correspondence was indeed intended to convey an invitation to pay "expenses" which he claims amounted to about Ј10,000. It also appears from his description of these expenses and the amount of this figure that they were not confined to "documented out-of-pocket costs directly related to the Domain Name" as referred to in paragraph 4(b)(i) of the Policy.
In addition, the Respondent registered the domain name <buildingsociety.net>. This name would be unsuitable for any of the Respondent’s claimed activities, but might be expected to be of interest to an entity in the business of receiving deposits and lending money to individuals, and to command a significant price. Indeed, the Respondent pointed out in his correspondence with the Complainant’s representative that he had received four-figure offers for <natwest.org> and <buildingsociety.net>. Although sale of the generic domain name <buildingsociety.net> would not be objectionable in itself, the Respondent’s registration of this name is a further indication that he made registrations speculatively with a view to profit from resale, conduct which is normally objectionable in relation to a domain name which is identical in its SLD to a well-known mark, as in the case of the Domain Name.
In all the circumstances, the Panel concludes that the Domain Name was registered and has been used in bad faith, in particular, primarily for the purpose of sale to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <natwest.org> be transferred to the Complainant, National Westminster Bank plc.
Dated: December 18, 2002