The Royal Bank of Scotland Group plc v. PrivacyProtect.org c/o Domain Admin
Claim Number: FA0801001126039
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbs-online-uk.com>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 2008 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@ rbs-online-uk.com.com 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rbs-online-uk.com> domain name is identical/confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbs-online-uk.com> domain name.
3. Respondent registered and used the <rbs-online-uk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group PLC, 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 has used the RBS mark to market its products and services. Complainant registered the RBS mark with the United Kingdom Intellectual Property Office (“UKIPO”) on January 5, 1996 (Reg. No. 2,004,617); with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) on March 23, 1998 (Reg. No. 97,469); and with the United States Patent and Trademark Office (“USPTO”) on January 16, 2007 (Reg. No. 3,198,052) Complainant also owns the registrations for the <rbs.com>, <rbs-online.co.uk>, <rbsdigital.com>, <rbsmarkets.com> and <online-rbs.co.uk> domain names.
Respondent registered the <rbs-online-uk.com>
domain name
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’s registration of the RBS mark with the UKIPO, the OHIM, and the USPTO establishes Complainant’s rights to the mark under 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 Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The <rbs-online-uk.com> domain name combines Complainant’s RBS mark
with the generic term “online” and the geographic abbreviation “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must make a prima facie case demonstrating that Respondent lacks all rights and legitimate interests in a disputed domain name. The Panel finds that Complainant’s assertion that Respondent lacks all rights and legitimate interests has established a prima facie case under Policy ¶ 4(a)(ii), and therefore the burden shifts to Respondent to demonstrate to that it does have rights and legitimate interests. See 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); see also 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”).
Because Respondent has failed to respond to the Complaint, the Panel may presume that Respondent lacks all rights and legitimate interests in the <rbs-online-uk.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); 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). Despite Respondent’s failure to respond, the Panel will consider all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c).
Respondent is attempting to pass itself off as Complainant
by offering similar services and displaying Complainant’s mark on the website
that resolves from the disputed domain name.
Previous panels have found no rights or legitimate interests where the
respondent was using the disputed domain name to pass itself off as the
complainant. Here, the Panel also
concludes that Respondent’s use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Am.
Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May
30, 2003) (finding that the respondent attempts to pass itself off as the
complainant online, which is blatant unauthorized use of the complainant’s mark
and is evidence that the respondent has no rights or legitimate interests in
the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither
a bona fide offerings [sic] of goods or services, nor an example of a
legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when
the holder of a domain name, confusingly similar to a registered mark, attempts
to profit by passing itself off as Complainant . . . .”).
Respondent’s use of the disputed domain name for fraudulent purposes, specifically acquiring personal information of Complainant’s customers as well as potential customers, also demonstrates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); 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).
Complainant contends that Respondent has never been
authorized to use the RBS mark, and that Respondent has never been commonly
known by the disputed domain name. The
WHOIS information confirms Complainant’s assertion that Respondent is not
commonly known by the disputed domain name, as the registrant is listed as
“PrivacyProtect.org c/o Domain Admin.”
The Panel finds that Respondent is not commonly known by the disputed
domain name under Policy ¶ 4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s use of the disputed domain name to operate a
website that imitates Complainant’s legitimate website, and gain commercially
by acquiring the personal information of Complainant’s customers evidences
registration and use in bad faith.
Respondent is likely benefiting from the similarity between the <rbs-online-uk.com> domain name and
Complainant’s RBS mark, and benefiting from the goodwill associated with the
RBS mark. Therefore, the Panel concludes
that Respondent has registered and is using the disputed domain name in bad
faith under Policy ¶ 4(b)(iv). See Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”); see also H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding
that the disputed domain name was registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv) through the respondent’s registration and use of the
infringing domain name to intentionally attempt to attract Internet users to
its fraudulent website by using the complainant’s famous marks and likeness).
The Panel finds that Respondent has used the <rbs-online-uk.com> domain name to acquire the personal information of Complainant’s customers, 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. 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).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <rbs-online-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 14, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum