national arbitration forum

 

DECISION

 

The Royal Bank of Scotland Group plc v. wild west c/o wild

Claim Number: FA0710001095311

 

PARTIES

Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, 434 Fayetteville Street, Two Hannover Square, Suite 1900, Raleigh, NC 27601.  Respondent is wild west c/o wild (“Respondent”), 19 East Drive, Santa Ana, CA 92711.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <royalbank-of-scotland.com>, registered with Estdomains, Inc.

 

PANEL

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.

 

James A. Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 19, 2007.

 

On November 8, 2007, Estdomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <royalbank-of-scotland.com> domain name is registered with Estdomains, Inc. and that Respondent is the current registrant of the name.  Estdomains, Inc. has verified that Respondent is bound by the Estdomains, 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 November 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 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 postmaster@royalbank-of-scotland.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 17, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <royalbank-of-scotland.com> domain name is confusingly similar to Complainant’s THE ROYAL BANK OF SCOTLAND mark.

 

2.      Respondent does not have any rights or legitimate interests in the <royalbank-of-scotland.com> domain name.

 

3.      Respondent registered and used the <royalbank-of-scotland.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The Royal Bank of Scotland Group plc was founded in 1727.  Complainant is one of the world’s leading financial services groups.  Complainant offers a wide range of financial products and services, including consumer and commercial lending, credit card services, investment and advisory services, and real estate services.  Complainant holds numerous trademark registrations for the THE ROYAL BANK OF SCOTLAND mark, including with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,566,044) since February 2, 1996, the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Mark No. 000097402) since June 15, 1998 and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,147,574 issued September 26, 2006).

 

Respondent registered the disputed domain name on July 10, 2007.  The <royalbank-of-scotland.com> domain name previously resolved to a webpage which purported to provide banking and financial services similar to that of  Complainant in an attempt to  fraudulently obtain customer’s personal information.  The disputed domain name is not currently being actively used.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant registered the THE ROYAL BANK OF SCOTLAND mark with multiple trademark authorities including the USPTO, and therefore, has established rights to the mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant contends that the <royalbank-of-scotland.com> domain name is confusingly similar to the THE ROYAL BANK OF SCOTLAND mark.  Respondent’s removal of the article “the” from the registered mark is insufficient to distinguish the disputed domain name from the registered mark.  Also, the use of hyphens does not distinguish the <royalbank-of-scotland.com> domain name from Complainant’s mark.  Finally, because all domain names are required to have a top-level domain, Respondent’s use of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from Complainant’s registered mark.  Therefore, the Panel finds that the <royalbank-of-scotland.com> domain name is confusingly similar to Complainant’s THE ROYAL BANK OF SCOTLAND mark pursuant to Policy ¶ 4(a)(i).  See Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also The Filmlot, LLC v. Material Insight c/o Shelley Kuipers, FA 1036138 (Nat. Arb. Forum Aug. 30, 2007) (<filmlot.com> ruled confusingly similar to THE FILMLOT mark: “the omission of the article “the” and the addition of the generic top-level domain (gTLD) ‘.com’ fails to sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i).”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  Complainant has the initial burden of proof to show that Respondent does not have rights or legitimate interests in the disputed domain name.  When Complainant has made a prima facie showing, the burden shifts to Respondent to show that it does have rights or legitimate interests in the <royalbank-of-scotland.com> domain name.  The Panel finds that Complainant has met the initial burden showing that Respondent lacks rights and legitimate interests, and therefore has made a prima facie case under Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).

 

Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant asserts that Respondent has never been authorized to use the THE ROYAL BANK OF SCOTLAND mark, and that Respondent is not and has never been commonly known by the disputed domain name.  Further, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name.  Thus, the Panel finds that Respondent is not commonly known by the <royalbank-of-scotland.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Respondent has used the disputed domain name to obtain personal and financial information from customers of Complainant.  This fraudulent use, known as “phishing,” illustrates that Respondent lacks rights and legitimate interests in the <royalbank-of-scotland.com> domain name pursuant to Policy ¶4(c)(i) and (iii).  See 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); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).

 

The Panel also finds that Respondent is currently not using the disputed domain name, as the <royalbank-of-scotland.com> domain name does not resolve to an active website.  There is no evidence that Respondent is preparing to use the disputed domain name in connection with 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).  Therefore, the Panel finds the Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s use of the <royalbank-of-scotland.com> domain name, which is confusingly similar to Complainant’s THE ROYAL BANK OF SCOTLAND mark, is likely to cause confusion to customers searching for Complainant’s goods and services.  There may be uncertainty regarding Complainant’s affiliation, endorsement, or sponsorship of Respondent’s website.  The Panel assumes Respondent is commercially benefiting from this confusion.  Based on the findings, the Panel concludes that Respondent’s registration and use of the <royalbank-of-scotland.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that Respondent has used the <royalbank-of-scotland.com> domain name to obtain personal and financial information from customers of Complainant, a tactic known as “phishing.”  Such use is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).   See 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. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).

 

Respondent is not currently making an active use of the disputed domain name.  Failure to make an active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <royalbank-of-scotland.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Crary, Panelist

Dated:  December 27, 2007

 

 

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