The Royal Bank of Scotland Group plc v. Wild West c/o Wild
Claim Number: FA0709001082183
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
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <rbsonline-uk.com> and <rbsonline-uk.net>, 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
On September 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 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 postmaster@rbsonline-uk.com and postmaster@rbsonline-uk.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rbsonline-uk.com> and <rbsonline-uk.net> domain names are confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsonline-uk.com> and <rbsonline-uk.net> domain names.
3. Respondent registered and used the <rbsonline-uk.com> and <rbsonline-uk.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, was founded in 1727 and is one of the world’s leading financial services groups with offices in numerous countries around the world and over 140,000 employees. Complainant’s RBS mark is used in connection with banking, financial planning, insurance and brokerage services and Complainant holds numerous trademark registrations for the RBS mark in various jurisdictions around the world, including with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617 issued January 5, 1996) and with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 7,849,908 issued December 19, 2006).
Respondent’s <rbsonline-uk.com> domain name was registered
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 sufficiently established its rights in the
RBS mark through registration with the UKIPO and USPTO pursuant to Policy ¶ 4(a)(i). 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 U.S. Office of Pers. Mgmt. v. MS
Tech. Inc., FA 198898 (Nat. Arb. Forum
Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is
registrable, by so issuing a registration, as indeed was the case here, an
ICANN panel is not empowered to nor should it disturb that determination.”).
Respondent’s
<rbsonline-uk.com> and <rbsonline-uk.net>
domain names both contain Complainant’s RBS mark in its entirety, and then
include the generic descriptive term “online” and geographic initials for the
United Kingdom “uk” separated by a hyphen.
They both then further include the generic top-level domain (“gTLD”) “.com”
or “.net.” It is well established that
the inclusion of a gTLD is not relevant to a Policy ¶ 4(a)(i)
analysis. Further, the addition of
generic descriptive or geographic terms does not negate a finding of confusing
similarity. The Panel finds that
pursuant to Policy ¶ 4(a)(i) Respondent’s disputed
domain names are confusingly similar to Complainant’s mark. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the disputed
domain names. See VeriSign Inc. v. VeneSign
Respondent has not submitted a response to the
Complaint. Accordingly, the Panel
presumes that Respondent has no rights or legitimate interests in the <rbsonline-uk.com> and <rbsonline-uk.net>
domain names, but will still consider all the available evidence in
consideration of the factors listed under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”); see also CMGI, Inc. v. Reyes,
D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to
produce requested documentation supports a finding for the complainant).
The record does not indicate in Respondent’s WHOIS
information or elsewhere that Respondent is or ever has been commonly known by
the disputed domain names. Further,
Complainant has never granted permission to Respondent to the RBS mark in any
way. As such, the Panel finds that
pursuant to Policy ¶ 4(c)(ii) that Respondent is not
commonly known by the disputed domain names.
See 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); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum
The <rbsonline-uk.com> and <rbsonline-uk.net>
domain names each resolve to websites that are engaged in “phishing.” Phishing is the use of e-mails, pop-ups, or
other methods to imitate a complainant’s website to trick Internet users into
providing personal information. See Juno Online Servs.,
Inc. v. Iza, FA 245960 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that
Respondent’s attempt to acquire personal information from Complainant’s
customers fraudulently is conclusive evidence of Respondent’s bad faith
registration and use of the <rbsonline-uk.com> and <rbsonline-uk.net>
domain names.
See 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); 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); see also 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).
Moreover, Respondent’s deceptive and diversionary use of
links presumably financially benefits Respondent, as Respondent is holding
itself out to be a source of Complainant’s services. The Panel finds this to be additional
evidence of Respondent’s bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name]
to benefit from the goodwill associated with Complainant’s HP marks and us[ed]
the <hpdubai.com> domain name, in part, to provide products similar to
those of Complainant. Respondent’s
practice of diversion, motivated by commercial gain, constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”);
see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad
faith where the respondent used the disputed domain name to sell the
complainant’s products without permission and mislead Internet users by
implying that the respondent was affiliated with the complainant)
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 <rbsonline-uk.com> and <rbsonline-uk.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 2, 2007
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