The Royal Bank of Scotland
Group plc v.
Claim Number: FA0708001072911
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rbsus.com>, registered with Compana, Llc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 31, 2007.
On September 6, 2007, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <rbsus.com> domain name is registered with Compana, Llc and that the Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, Llc 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 September 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 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.
A timely Response was received and determined to be complete on October 2, 2007.
Complainant’s additional submission was timely received on October 9, 2007.
On October 11, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
On October 17, 2007, an Additional Submission was submitted by Respondent. It was determined to be deficient. The Panel has decided not to consider this Additional Submission in its Decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant developed the following arguments.
The domain name is identical or confusingly similar to Complainant’s mark “RBS” because it fully incorporates Complainant’s mark and the mere addition of a geographic term and top-level domain name extension does not make the domain name distinct.
Respondent has no right to or legitimate interest in the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the “RBS” mark, or any variation thereof, in the domain name or otherwise.
Respondent has never used the domain name in connection with a bona fide offering of goods or services nor made a legitimate non-commercial or fair use of the domain name.
Instead the domain name resolves to a website featuring links to Complainant’s competitors in the financial and banking industries.
It appears that Respondent is capitalizing on Complainant’s well-known mark by attracting Internet users — including Complainant’s current and prospective customers — to its website and redirecting them to Complainant’s competitors, presumably in exchange for click-through fees.
Respondent has never been commonly known by the name <rbsus.com>. To the contrary,
Respondent registered the domain name under the name Texas International
Property Associates with an address in
Further, there is no indication on Respondent’s website that Respondent has ever been commonly known by this name.
Complainant’s mark “RBS” is a registered trademark and well-known around the world. Respondent is thus deemed to have actual or constructive knowledge of the mark.
Respondent registered the domain name in 2005, almost ten years after Complainant registered “RBS” as a trademark. There can be little doubt that Respondent had knowledge of Complainant’s mark when it registered the domain name and was trying to take advantage of Complainant’s goodwill. Respondent’s registration and use of the confusingly similar domain name therefore was and is in bad faith.
Further, it can be inferred that Respondent profits through referral fees by diverting Internet users seeking Complainant’s services to competitors’ websites.
Respondent is disrupting Complainant’s business by diverting current and prospective RBS customers to competitors’ websites, thus causing Complainant to suffer loss of business and revenue.
Such conduct constitutes bad faith regardless of whether Respondent itself is the competitor to whose website the domain name resolves or whether Respondent appears to be a third party not formally affiliated with the competitors.
Finally, the issue of Respondent’s bad faith should be considered in light of Complainant’s status as a well-known financial institution and in light of the particular sensitivities and dangers that status raises. Companies today, especially those conducting business online, are increasingly targeted by those wishing to exploit, for their own commercial gain, the goodwill and notoriety built up by the companies in their trademarks and trade names. Due to the sensitive nature of the confidential information that is routinely exchanged between online companies and their customers, such companies are consistently exposed to online threats and schemes, such as “webjacking” and “phishing.”
Respondent developed the following arguments.
The domain name primarily consists of a three letter acronym and is not identical or confusingly similar to any mark in which complaint has enforceable rights under the Policy.
Complainant concedes that the domain name <rbsus.com> is merely a geographically descriptive term which the public is free to use. Therefore, as the .com and “us” are essentially irrelevant to the analysis, the panel is faced with a three character domain name dispute.
Furthermore, it appears that Complainant does
not even use the “RBS” mark standing alone in the
In this case, Respondent does not have
exclusive rights to use RBS in the
There are a number of federal trademark registrations that incorporate RBS yet have no connection to Complainant. The registered marks cover diverse areas such as building materials and clothing.
There is no intent to target Complainant by
seeking business in
Respondent has no control over what terms advertisers bid on at Google and what terms appear on its website.
Respondent registered the domain name <rbsus.com> because it believed it was a descriptive acronym to which no party had exclusive rights.
The principle that the mere ownership of a common term domain should, in and of itself, establish the owner’s rights and legitimate interest has been recognized by several ICANN panels.
It is well established that, where a mark is a common term with substantial third party use, as it is here, the complainant must proffer evidence that demonstrates that respondent has specifically intended to confuse consumers seeking out complainant. There is no such proof here.
Respondent had no actual knowledge of Complainant’s mark and the mere registration without actual knowledge does not impute a finding of bad faith.
Further, the Panel must disregard superficial arguments that links on
the disputed webpage to retail banking services in the
Complainant also makes knowingly false, malicious and defamatory statements regarding phishing, identity theft and other allegations of criminal conduct against Respondent.
C. Additional Submissions
Respondent has been ordered to transfer infringing domain names to brand owners in 46 UDRP proceedings in 2007 alone. Moreover, Respondent expressly admits in its Response that:
a. The disputed domain name, <rbsus.com> “primarily consists of” Complainant’s registered “RBS” mark;
b. Complainant has registered rights in
its “RBS” mark both in the
c. Links on the website to which the domain name resolves lead Internet users to banking-related websites of Complainant’s competitors so that Respondent may benefit commercially; and
d. Respondent intended the domain name to attract Internet users searching for goods and services utilizing the acronym “RBS.”
Complainant, The Royal Bank of Scotland Group plc (“RBS”), was founded in 1727, and is one of the world’s leading financial services groups.
The trademark on which this Complaint is based is the “RBS” mark. Complainant holds numerous trademark registrations for its “RBS” mark, including in the United Kingdom Patent Office since 1996, the EU Office for Harmonization in the Internal Market since 1998 and the United States Patent and Trademark Office since 2006.
Respondent is well known as having demonstrated a pattern of registering domain names that infringe on another's legitimate trade mark rights.
In this case, Respondent registered the domain name and attracted visitors to a website, redirecting them to Complainant’s competitors.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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’s trademark registrations for its “RBS” mark establish Complainant’s rights in the mark for purposes of ICANN Policy.
Respondent admitted that Complainant has
registered marks in the
Respondent also admitted that the domain name “primarily consists of” Complainant’s "RBS" mark. Respondent confirmed that "the .com and “us” are essentially irrelevant to the analysis."
Therefore, Respondent at least implicitly conceded that Complainant has established that the domain name is confusingly similar to Complainant’s “RBS” mark under Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does possess rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant has demonstrated that the <rbsus.com> domain name resolves to a website featuring links to Complainant’s competitors in the financial and banking industries.
The Panel therefore finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
Complainant further alleges that Respondent has never been commonly known by the disputed domain name. Complainant further points out that Respondent’s WHOIS registration for the <rbsus.com> domain name lists “Texas International Property Associates” as the registrant. In light of this, the Panel finds that Respondent is not commonly known by the <rbsus.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
As indicated above, the <rbsus.com> domain name resolves to a website featuring, inter alia, links to Complainant’s competitors.
The Panel decides that such use constitutes a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Services, FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of the complainant’s competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent likely profits from its diversionary use of the domain name through the acquisition of click-through advertising fees.
The Panel therefore finds that Respondent’s use amounts to an attraction for commercial gain, which evinces registration and use in bad faith pursuant to 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 the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbsus.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: November 5, 2007
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