Domain name - Domain name dispute resolution policy - U.K. Service mark - U.K. Trademark - Not identical - Confusingly similar - No rights or legitimate interests - Bad faith use - Bad faith registration - Valuable Consideration in Excess of Out of Pocket Costs.

Complainant was registrant of United Kingdom service mark and United Kingdom trademark NATWEST. Complainant has used the marks in connection banking, financial and associated services. Respondent registered the domain name, natwestsucks.com.

Held, Name Transferred to Complainant.

Respondent’s registration is not identical to the Complainant’s marks. However, adoption of it in the domain name is inherently likely to lead some people to believe that Complainant is connected with it. Therefore, Complainant has rights in the trade or service mark, with which the Respondent’s Domain Name is confusingly similar. 

It is clear that Respondent has been shown to have no rights or legitimate interests in the Domain Name. There is no justification for the role of officious interferer which Respondents have taken upon themselves to provide in the manner in which they have chosen to do so. 

It is also clear that Respondents registered and are using the domain name in bad faith.  Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of documented out-of-pocket costs related to the domain name. 

Policies referred to

ICANN Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Rules referred to

Rules for Uniform Domain Name Dispute Resolution Policy, adopted October 24, 1999

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, adopted December 1, 1999

Panel Decisions Referred to

Direct Line Group Ltd., et. al. v. Purge I.T. Ltd., ICANN Case No. D2000-0583 (WIPO). 

Standard Chartered PLC v. Purge I.T. Ltd., ICANN Case No. D2000-0681 (WIPO). 

Wal-Mart Stores, Inc. v. Walsucks, ICANN Case No. D2000-0477 (WIPO).

Cornish, Panelist: - 

1. The Parties
Complainant: National Westminster Bank plc of 6th Floor, 27 Leadenhall Street, London EC3A 1DD, United Kingdom.

Respondents: (1) Purge I.T. of Park Farm Cottage, St Giles Close, Wendlebury, Oxon OX6 7AA,United Kingdom;
(2) Purge I.T. Ltd of Unit D3a, Telford Road, Bicester, Oxford OX6 0TZ, United Kingdom. 

The Domain Name and Registrar:
NATWESTSUCKS.COM, registered by Network Solutions, Inc. on May 11, 1999, to the Registrants Purge I.T. (Natwestsucks-dom) (Contacts:OzNic.com -- Administrative: (AMD598-ORG), Technical and Zone: (ITT-ORG), Billing: (ITA3-ORG))
 
2. Procedural History
(1) The Complaint in Case D2000-0636 was filed on June 20, 2000.

(2) The WIPO Arbitration and Mediation Center has found that: 
- the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
The Panel accepts these findings and itself finds that:
- the Complaint was properly notified in accordance with the Rules, paragraph 2(a), having been sent to the Respondents and the Contacts abovenamed by Post/Courier, Fax and E-mail.
- A Response to the Complaint was filed in due time, though a copy was not sent by the Respondents to the Complainant; as required by the Dispute Settlement Policy.
- the Administrative Panel was properly constituted.

(1) The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(2) There has been a further submission from the Complainant consisting of comments on the Response. Due to the failure of the Respondents to send the response to the Complainant, the Panel decided that it must in the circumstances be admitted. In order to avoid any consequent prejudice to the Respondents, the Panel in turn permitted the Respondents until August 6, 2000, to offer their own comments. None have been received.

(3) The date originally scheduled for issuance of a decision was: August 6, 2000. In light of the circumstances mentioned in the previous paragraph, the Panel ordered that this be changed to August 13, 2000.
(4) The language of the proceedings is English.

3. Factual Background
(1) The Complainant is registered proprietor of 100 United Kingdom trade and service marks for "Natwest", with or without additional words or symbols, as scheduled in the Complaint, Annex 7. The Complainant, which is now a subsidiary of the Royal Bank of Scotland Group plc, has deployed "Natwest" as a trading abbreviation for its international banking business and has a very substantial reputation under that name in many countries of the world. The Complaint sets out the value of its assets, various measures of its trading and its financial performance for 1992-99. There is also evidence of its very large expenditure on advertising and promotional literature. It is shown to be the sponsor of major sporting events and to attract constant press comment. 

(2) The Complainant also holds forty-one TLDs which incorporate "Natwest," in some cases with additions, as, for instance, natwestgfm.com and natwestonline.com.

(3) The Complaint forms one of a series against the Respondents or the corporate Respondent alone, The Response to these cases has been by a single document, which indicates that the Domain Name Registrations in issue were made in pursuit of the same business objective. The Complainant has demonstrated by WhoIs database searches that the Respondents have registered with Network Solutions the names or abbreviations of eighteen well-known British enterprises with the addition of "sucks". All were obtained on May 11, 1999. Five have resulted in the parallel complaints which have been referred conjointly to the present Panel. The other four are, and D2000-0583 (directlinesucks.com), D2000-0584 (dixonssucks.com), D2000-0585 (freeservesucks.com) and D2000-0681(standardcharteredsucks.com). 
 
4. Parties’ Contentions

A. Complainant
The Complainant asserts the following:
- The Respondents' Domain Name at issue is identical to or confusingly similar to the Complainant's trade marks indicated above.

* The Respondents have no legitimate interest in the name for which the Complainant has registered marks.
* The Respondents registered the Domain Name and are using it in bad faith in that they are seeking to obtain financial gain from it by securing its transfer for a substantial sum to the Complainant.
* Accordingly the Complainant seeks transfer of the Domain Name in issue to itself

B. Respondents
The Respondents, while not contesting directly the documentary material submitted as annexes to the Complaint, nevertheless deny that they have acted in bad faith or that they have ever used the Domain Name after registration. In particular:
- They did not secure the Domain Name in order themselves to establish any website; they have not done so and any "Under Construction" label was presumably set up by the ISP; 
- They did not intend to transfer the registration to anyone other than the Complainant, and in particular not to any disgruntled person who might wish to acquire it in order to host complaints against the Complainant or otherwise to extract revenge. On the contrary their motivation was to protect the Complainant against such risks. 
- Mere registration without more cannot amount to use.
 
5. Discussion and Findings
In accordance with the Dispute Settlement Policy, Paragraph 4(a), the Complainant bears the burden of demonstrating three elements.

Element 1: That the Complainant has rights in a trade or service mark, with which the Respondents' Domain Name is identical or confusingly similar.

As it has clearly demonstrated in its Complaint, the Complainant has a well-known trade mark for banking, financial and associated services, most notably in the United Kingdom but also in many other countries. This reputation is protected by the registration of the trade marks already referred to in Paragraph 3(1), by rights arising from its use of "Natwest" for its services and products in many countries, and that reputation is further enhanced by the use which it makes of its Domain Names also there referred to. The Respondents' explanation of the conduct which they have pursued in relation to the names of various major enterprises is as follows:

"The company was set up in response to an article in The Times newspaper referring to disgruntled consumers registering domain names such as walmartsucks.com to host complaints sites against companies." (Response, para. 8) 
The Respondents' registration, consisting of the Complainant's name with the suffix, "sucks" (plus ".com"), is not identical to the Complainant's marks and the question arises whether the registration is confusingly similar to those marks. 
Given the apparent mushrooming of complaints sites identified by reference to the target's name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainant? In the Panel's opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainant's name. Adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainant is connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainant; but equally others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainant. The Complainant has accordingly made out the first element in its Complaint (see the rather similar conclusion on this Element in Case D2000-0477 (walmartcanadasucks.com).

Element 2: The Respondents must be shown to have no rights or legitimate interests in the Domain Name.

The Complainant's reputation was well established before the Respondents began their activity, as is evident from their own statement of purpose, which is said to be, to help protect enterprises against being bothered by customer sites at which grievances are aired. Complaints sites are only likely to be set up against businesses with considerable reputations. Those who have genuine grievances against others or wish express criticisms of them -- whether the objections are against commercial or financial institutions, against governments, against charitable, sporting or cultural institutions, or whatever -- must be at liberty, within the confines set by the laws of relevant jurisdictions, to express their views. If today they use a website or an email address for the purpose, they are entitled to select a Domain Name which leads others easily to them, if the name is still available. 

The Respondents, contrarily, make it plain that their purpose is to help circumvent such free expression. They want, so they say, to protect against such engines of free speech. They claim as their own legitimate interest that they are in the business of obtaining Domain Names which might embarrass well-known enterprises if the names were allowed to fall into the hands of critics. Although a website exists at the Domain Name address and is stated to be "under construction", the Respondents are at pains to explain that this is not upon their instructions, the statement probably having been made by the Internet Service Provider. 

The Respondents do not, however, act in a wholly altruistic spirit, since, as will be discussed further under Element 3, they seek substantial sums beyond their own costs before they will transfer over the offending registration. This latter aspect has to be brought into account in considering whether the Respondents therefore have any "right or legitimate interest" in the Domain Name, with which they otherwise have no association whatsoever and which they admit to have selected by reference to the Complainant's reputation in its own marks. The Panel finds that there is no justification for the role of officious interferer which the Respondents have taken upon themselves to provide in the manner in which they have chosen to do so. The Complainant has accordingly made out the second element (see likewise Case D2000-0477 (walmartcanadasucks.com)).

Element 3: that the Respondents registered and are using the Domain name in bad faith, in one of the senses of that term set out in Paragraph 4b of the Dispute Settlement Policy.

Before lodging the Complaint, neither the Complainant nor its representative had received any direct communication from the Respondents which would indicate that the Respondents were inviting an offer at more than the direct cost of the Domain Name registration as consideration for a transfer of the Domain Name to the Complainant. However, there is evidence that the Respondents had registered contemporaneously Domain Names in which "sucks" was associated with other well-known United Kingdom enterprises by referring to their names or abbreviations of them. In two of the five such cases which resulted in the jointly referred dispute proceedings, D2000-0583 (directlinesucks.com) and D2000-0681 (standardcharteredsucks.com), there was uncontroverted evidence that financial compensation above direct cost was being sought by the Respondents. In the particular circumstances of these cases, the Panel finds that this evidence was properly filed in the present Complaint in order to show the Respondents' overall course of conduct.

In any case, the same motivation is demonstrated in the common Response to all these cases by the statements:

"The purpose of the company is to register email domains to prevent them becoming widely available. These names shall then be made available to the company concerned. No domain shall be made available to a competitive third party….
"Should the decision reached by yourselves be against our clients, the directors would of course be prepared to transfer the domain names to the relevant companies at cost."

Since the filing of the Complaint, the Respondents have contacted the Complainants' solicitors by fax and telephone in which they have said that a reason for the registration was to make a modest return for their initiative, that they might be prepared to accept £900-1200 for its transfer and that they wanted to make revenue from selling the site.

Thus it is clear that the Respondents' prime purpose in acquiring the names was to transfer the Domain Name at more than cost to the Complainant. Their Response claims that they are entitled to do so. The Dispute Resolution Policy, to which they became party as part of their registration contract, is to the contrary, since it provides in Paragraph 4(b)(i) that a Domain Name has been registered and is being use in bad faith if there are circumstances indicating that the registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark for valuable consideration in excess of documented out-of-pocket costs related to the domain name. The Respondents' motivation falls within this definition of bad faith. Accordingly, in the Panel's opinion, the Third Element is also made out. 
 
6. Decision
The Panel decides, in accordance with the Uniform Domain Name Resolution Policy, Paragraph 4a and 4b
- that the Domain Name in dispute is confusingly similar to the registered trade and service marks of the Complainant;
- that the Respondents have no rights or legitimate interests in respect of the Domain Name; and
- that the Domain Name has been registered and is being used in bad faith.
The Panel accordingly requires that the Domain Name NATWESTSUCKS.COM be transferred forthwith to the Complainant.