The Royal Bank of Scotland Group plc v. Jim Bowen
Claim Number: FA0707001045991
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas, of Parker Poe Adams & Bernstein LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rbs-america.com>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2007.
On July 27, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbs-america.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 22, 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 28, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is one of the world’s leading financial services groups.
Complainant has offices on four continents, and employees more than 140,000 people world-wide.
Complainant operates the sixth-largest bank in the
Complainant holds numerous registrations world-wide for the RBS trademark, including with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617, issued January 5, 1996), and with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 97,469, issued March 23, 1998) and also with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,185,538, issued December 19, 2006).
Complainant operates numerous websites, including those at the <rbs.com> and <rbsbanking.com> domain names.
Respondent registered the <rbs-america.com> domain name on March 23, 2007.
Respondent’s disputed domain name resolves to a website that displays hyperlinks to various third-party websites in direct competition with the business of Complainant.
The disputed domain name was registered on the same day
Complainant issued a press release discussing the growth and set-up of its
services in the
Respondent’s <rbs-america.com> domain name is confusingly similar to Complainant’s RBS mark.
Respondent does not have any rights or legitimate interests in the <rbs-america.com> domain name.
Respondent registered and uses the <rbs-america.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s trademark registrations in several countries
adequately establish its rights in the RBS mark under Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb.
Forum July 14, 2005): “Complainant has established rights in the
Complainant alleges that the <rbs-america.com>
domain name is confusingly similar to Complainant’s RBS mark under Policy ¶ 4(a)(i). We agree. Respondent has taken Complainant’s RBS mark
and combined it with a hyphen, the geographic indicator “
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant is required to present a prima facie case that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). Once Complainant satisfies that burden, as it has done in the instant proceeding, the burden of proof shifts, and Respondent must produce evidence that it has rights or legitimate interests in the <rbs-america.com> domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that 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 Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
Respondent does not deny Complainant’s allegation that it uses the <rbs-america.com> domain name to host a website displaying hyperlinks to third-party websites in direct competition with the business of Complainant. Such use of a domain name that incorporates Complainant’s RBS mark, presumably for Respondent’s commercial benefit through the accrual of click-through fees, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that a respondent’s use of a domain name that was confusingly similar to a complainant’s mark to display links to that complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to that respondent’s website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Additionally, there is nothing in the evidence before us to indicate that Respondent is or has ever been known by the <rbs-america.com> domain name. Accordingly, we find no basis for a conclusion that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark there in issue and never applied for a license or permission from a complainant to use a trademarked name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
As earlier noted, we presume that Respondent posts hyperlinks on the website that resolves from the disputed domain name in order to benefit commercially through the accrual of click-through fees. Further, use of Complainant’s RBS mark in the <rbs-america.com> domain name creates a likelihood of confusion as to the possibility of Complainant’s sponsorship, endorsement or affiliation with the disputed domain name and resulting website. This is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website and likely profiting from click-through fees); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain).
Finally, Respondent’s undenied registration of the <rbs-america.com>
domain name on the same day that Complainant issued a press release announcing
its expansion of services in the
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <rbs-america.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 11, 2007
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