The Royal Bank of Scotland Group plc v. Julio R.
Claim Number: FA0707001026462
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office Box 389, Raleigh, NC, 27602.
Respondent is Julio R. (“Respondent”), Blvd. Kukulkan Km 13,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <royal-bank-of-scotland.info>, registered with Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 29, 2007; the National Arbitration Forum received a hard copy of the Complaint July 2, 2007.
On July 3, 2007, Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <royal-bank-of-scotland.info> domain name is registered with Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the Direct Information Pvt. Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 31, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <royal-bank-of-scotland.info>, is confusingly similar to Complainant’s THE ROYAL BANK OF SCOTLAND mark.
2. Respondent has no rights to or legitimate interests in the <royal-bank-of-scotland.info> domain name.
3. Respondent registered and used the <royal-bank-of-scotland.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc (RBS), founded in 1727, is an international financial services group. Complainant has continuously used the THE ROYAL BANK OF SCOTLAND mark in promoting and providing banking, financial planning, insurance, and brokerage services worldwide. Complainant registered its THE ROYAL BANK OF SCOTLAND mark in numerous jurisdictions worldwide including in the United Kingdom Intellectual Property Office (“UKIPO”) (No. 1,566,044 issued February 2, 1996) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,147,574 issued September 26, 2006).
The disputed domain name, <royal-bank-of-scotland.info>,
which Respondent registered April 1, 2007, resolves to a website using the
heading “Royal Bank of
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant established with extrinsic evidence in this
proceeding that it has rights to and legitimate interests in the THE ROYAL BANK
OF SCOTLAND mark pursuant to Policy ¶ 4(a)(i) through
registration of the mark with the UKIPO and USPTO. See
The disputed domain name that Respondent registered, <royal-bank-of-scotland.info>, has three differences with Complainant’s mark: (1) the addition of the generic top-level domain “.info”; (2) the addition of hyphens; and (3) the omission of the article “the.” It is well established that generic top-level domains, the omission of the definite article “the,” and the use of hyphens do not negate the elements of confusing similarity in a Policy ¶ 4(a)(i) analysis. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Consequently, the Panel finds that the <royal-bank-of-scotland.info> domain name is confusingly similar to Complainant’s THE ROYAL BANK OF SCOTLAND mark.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained in its entirety within the disputed domain
name. Complainant urges that Respondent
has no such rights. Under Policy ¶ 4(a)(ii), Complainant must initially make a prima facie case that it has rights and
that Respondent has no such rights or legitimate interests in the domain name
at issue. See VeriSign Inc. v. VeneSign
Nowhere in the record, including Respondent’s WHOIS information, does it indicate that Respondent is or ever has been commonly known by the <royal-bank-of-scotland.info> domain name. Further, Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Further, the disputed domain name does not resolve to a business or any services offered by Respondent. Instead, the website maintained on the <royal-bank-of-scotland.info> domain name contains numerous links, incorporating the terms “The Royal Bank of Scotland,” which direct Internet users to other web pages containing advertisements for, and links to, various providers of financial services, including those who would seek to compete with Complainant. As a result, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith in registering and using the disputed domain name to link third-party websites that offer personal financial services and that seek to compete with those offered under Complainant’s mark. The Panel finds that Respondent registered and is now using the disputed domain name in bad faith, primarily for the purpose of disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Moreover, when a domain name such as Respondent’s <royal-bank-of-scotland.info>, is so similar to an established mark, such as Complainant’s THE ROYAL BANK OF SCOTLAND mark, and the domain name resolves to a link-driven website featuring services that compete with that mark, it can be inferred that the Respondent is financially benefiting from such use. Therefore, the Panel finds further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stated that when a disputed domain name contains a version of Complainant’s marks and is used for something completely unrelated to their descriptive quality, “a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <royal-bank-of-scotland.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 21, 2007.
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