The Royal Bank of Scotland Group plc v. PrivacyProtect.org c/o Domain Admin
Claim Number: FA0707001032003
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas, of Parker Poe Adams & Bernstein LLP, Post
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rbs-edinburgh-plc.com>, registered with Estdomains, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 21, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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. Respondent’s <rbs-edinburgh-plc.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbs-edinburgh-plc.com> domain name.
3. Respondent registered and used the <rbs-edinburgh-plc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
With offices throughout the world, Complainant, The Royal Bank of Scotland Group plc, based in
Respondent registered the <rbs-edinburgh-plc.com> domain name on
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."
In view of 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 draw such inferences it 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 that Complainant must 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 respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has satisfied
its burden establishing rights in the RBS mark under Policy ¶ 4(a)(i) by
registering it with various trademark
authorities, including the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum
Respondent has failed to a create
a mark distinguishable from Complainant’s RBS mark as the <rbs-edinburgh-plc.com> domain name adds hyphens, a geographical
location, a business designation, and the generic top level domain (“gTLD”)
“.com” to Complainant’s fully incorporated mark. Therefore, the disputed domain name is confusingly
similar to Complainant’s mark. See Health Devices Corp. v.
Under Policy ¶
4(a)(ii), Complainant must establish a prima
facie case that Respondent lacks rights and legitimate interests in the <rbs-edinburgh-plc.com>
domain name. Complainant’s assertion
that Respondent lacks rights or legitimate interests sufficiently meets its
burden. See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (holding that once the complainant asserts that the
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide “concrete evidence that it has
rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s failure to submit a Response allows the Panel to presume that it lacks all rights and legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Although no further analysis is required, the Panel will now examine the evidence to determine if Respondent holds any rights or legitimate interests under Policy ¶ 4(c).
Respondent has failed to establish rights and legitimate
interests under Policy ¶
4(c)(ii) as nothing provided in the evidence, including the WHOIS record, indicates
that Respondent “PrivacyProtect.org c/o Domain Admin” is commonly known by the <rbs-edinburgh-plc.com> domain name.
See Am. Online, Inc. v. World Photo Video & Imaging Corp.,
FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not
commonly known by <aolcamera.com> or <aolcameras.com> because the
respondent was doing business as “Sunset Camera” and “World Photo Video &
see also Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
Respondent’s use of the disputed domain name to imitate Complainant’s website, without Complainant’s authorization, for financial gain as part of a “phishing” scheme, meant to fraudulently obtain Internet users private and financial information, does not constitute a bona fide offering of goods or services as required by Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The record shows that Respondent attempted to attract Internet users to its website located at the disputed domain name for commercial gain through acquiring the personal and financial information of Internet users attempting to locate Complainant’s services. Respondent intended to confuse Internet users by giving them the false impression that Respondent was Complainant, or at least, officially associated with Complainant. Therefore, Complainant has adequately shown that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) as the disputed domain name is capable of causing confusion as to its source and Complainant's association with it. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Respondent’s unauthorized use of Complainant’s mark and logo on its website located at the disputed domain name as an attempt to gain access to Internet users’ private and financial information to accommodate a “phishing” scheme is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
The Panel concludes that Complainant has 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 <rbs-edinburgh-plc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
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