The Royal Bank of Scotland Group plc v. RBS Asset
Management c/o Stephen Woods
Claim Number: FA0709001079208
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 RBS Asset Management c/o Stephen
Woods (“Respondent”), 406
Farmington Avenue, Farmington, CT 06032.
DISPUTED DOMAIN NAME
The domain name at issue is <rbsassetmgmt.com>, registered with Key-Systems Gmbh.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on September 14,
2007; the National Arbitration Forum received a hard copy of
the Complaint on September 17, 2007.
On September 17,
2007, Key-Systems Gmbh
confirmed by e-mail to the National Arbitration Forum that the <rbsassetmgmt.com> domain name is
registered with Key-Systems Gmbh and that
Respondent is the current registrant of the name. Key-Systems
Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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
On September 20,
2007, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October
10, 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.
On October 15, 2007, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed James A. Carmody, Esq., 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
Complainant requests that the domain
name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
name is confusingly similar to Complainant’s RBS mark.
does not have any rights or legitimate interests in the <rbsassetmgmt.com> domain name.
registered and used the <rbsassetmgmt.com>
domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, is one of
the world’s leading financial services companies. Complainant maintains offices around the
world and employs more than 140,000 people.
Complainant’s main services include retail banking, corporate and
commercial banking, financial markets activities, wealth management and
insurance. Complainant offers online
banking services at the <rbs.com>, <rbsdigitalbanking.co.uk> and
<rbsdigital.com> domain names.
Complainant has registered the RBS mark with the United
Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617 issued January 5, 1996),
and holds numerous trademark registrations for the RBS mark with trademark
offices around the world, including with the United States Patent and Trademark
Office and the European Union’s Office for Harmonization in the Internal
Respondent registered the <rbsassetmgmt.com>
domain name on November
30, 2006. Respondent is
using the disputed domain name in connection with an “advanced fee fraud”
scheme whereby individual investors are sent e-mails from the domain name in
furtherance of a scam intended to defraud them.
Through these e-mails, Internet users are asked to provide personal and
financial information, amounting to an attempt to “phish” such information for
Respondent’s financial gain.
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:
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
has no rights or legitimate interests in respect of the domain name; and
domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established rights in the RBS mark pursuant
to Policy ¶ 4(a)(i) through registration of the mark with the UKIPO. See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006)
(“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF
SCOTLAND mark with the United Kingdom Patent Office as evidence of
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also
Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding
that the complainants established rights in marks because the marks were
registered with a trademark authority).
domain name incorporates Complainant’s entire RBS mark and adds the terms “asset”
and “mgmt,” an abbreviation for the term “management,” and the generic
top-level domain “.com.” The Panel finds
these additions to Complainant’s registered mark insufficient to differentiate
the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); see also
Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because
the subject domain name incorporates the VIAGRA mark in its entirety, and
deviates only by the addition of the word “bomb,” the domain name is rendered
confusingly similar to the complainant’s mark); see also Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Rights or Legitimate Interests
Complainant claims that Respondent has no rights or
legitimate interests in the <rbsassetmgmt.com>
domain name. Complainant has the initial
burden of proof in establishing that Respondent lacks rights or legitimate
interests in the domain name. Once
Complainant makes a prima facie case in support of its allegations, the
burden then shifts to Respondent to show it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
In this case, Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). See Document Tech., Inc. v. Int’l Elec.
Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the
Policy requires that the Complainant prove the presence of this element (along
with the other two), once a Complainant makes out a prima facie showing,
the burden of production on this factor shifts to the Respondent to rebut the
showing by providing concrete evidence that it has rights to or legitimate
interests in the Domain Name.”); 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).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure
to respond not only results in its failure to meet its burden, but also will be
viewed as evidence itself that Respondent lacks rights and legitimate interests
in the disputed domain name.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept.
23, 2000) (finding no rights or legitimate interests where no such
right or interest was immediately apparent to the panel and the respondent did
not come forward to suggest any right or interest it may have possessed). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Despite the WHOIS information listing Respondent as “RBS
Asset Management c/o Stephen Woods,” there is no other affirmative evidence in
the record suggesting that Respondent is commonly known by the disputed domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See City
News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004)
(“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’
there is no evidence before the Panel to indicate that Respondent is, in fact,
commonly known by the disputed domain name <citynewsandvideo.com> pursuant
to Policy ¶ 4(c)(ii).”); see also Nature’s Path Foods Inc. v. Natures Path,
Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact
information, Respondent lists its name and its administrative contact as
‘Natures Path, Inc.’ However, since
Respondent failed to respond to the Complaint, there has not been any
affirmative evidence provided to the Panel showing that Respondent was commonly
known by the disputed domain name prior to its registration of the domain
Respondent is using the <rbsassetmgmt.com>
domain name to “phish” for personal and financial information in an attempt
to defraud Complainant’s customers through the use of an “advanced fee fraud”
scheme. Respondent’s attempt to “phish”
for customers’ personal and financial information 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 Vivendi Universal Games v. Ballard,
FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied
the complainant’s website in order to steal account information from the
complainant’s customers, that the respondent’s “exploitation of the goodwill
and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal
activities is prima facie evidence of a lack of rights and legitimate
interests in the disputed domain name”); 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 Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Registration and Use in Bad Faith
Respondent is using the <rbsassetmgmt.com>
domain name to engage in a phishing scam.
Through the use of Complainant’s registered trademark, Respondent is
using the domain name in connection with an “advanced fee fraud” scheme to
defraud Complainant’s Internet customers and manipulate them into divulging
sensitive personal and financial information.
Thus, Respondent’s use of the <rbsassetmgmt.com>
domain name constitutes 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 Capital One Fin. Corp. v.
Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration
and use because the respondent used the domain name to redirect Internet users
to a website that imitated the complainant’s website and to fraudulently
acquire personal information from the complainant’s clients).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbsassetmgmt.com> domain name be TRANSFERRED
from Respondent to Complainant.
A. Carmody, Esq., Panelist
Dated: October 29, 2007
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