The Royal Bank of Scotland Group plc v. willams c/o willams
Claim Number: FA0801001126046
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbosuk.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 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 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@rbosuk.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 <rbosuk.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbosuk.com> domain name.
3. Respondent registered and used the <rbosuk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, provides international financial services including: retail banking, corporate and commercial banking, financial markets activities, wealth management and insurance. Complainant holds trademark rights for its RBS mark in numerous countries including: (1) the United Kingdom Intellectual Property Office (“UKIPO”) registered on January 5, 1996 (Reg. No. 2,004,167); (2) the European Union Office for Harmonization in the Internal Market (“OHIM”) registered on March 23, 1998 (Reg. No. 97,469); and (3) the United States Patent and Trademark Office (“USPTO”) registered on December 19, 2006 (Reg. No. 3,185,538). Complainant uses its RBS mark to promote and provide banking, investment and insurance services worldwide. Additionally, Complainant uses the mark to operate online banking services for its Internet customers.
Respondent registered the disputed 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 has registered its RBS mark with numerous governmental authorities including the UKIPO, the OHIM and the USPTO. The Panel finds that these registrations sufficiently establish Complainant’s rights in the RBS mark pursuant to Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Respondent’s <rbosuk.com>
domain name is confusingly similar to Complainant’s RBS mark pursuant to Policy
¶ 4(a)(i) because it fully incorporates Complainant’s mark with the addition of
the letter “o” and the geographic identifier “UK,” a common abbreviation of “United
Kingdom.” In addition, generic top-level
domains such as “.com” are considered irrelevant for the purposes of evaluating
whether a disputed domain name is confusingly similar pursuant to Policy ¶ 4(a)(i). See Campmor,
Inc. v. Momm Amed Ia, FA 154530 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights
or legitimate interests in the disputed domain name. Once Complainant presents a prima facie case in support of these
allegations, the burden shifts to Respondent to establish that it does have
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). The
Panel finds that Complainant has established a prima facie case to support its allegations and Respondent has
failed to submit a response to the case.
Therefore, the Panel may assume Respondent does not have rights or
legitimate interests in the disputed domain name. The Panel, however, will examine the record
to determine whether Respondent has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent previously used the <rbosuk.com> domain name to “pass itself off” as Complainant in order to defraud Complainant’s Internet customers. Respondent’s disputed domain name resolved to a website that imitated Complainant’s RBS logo and encouraged Internet users to divulge confidential personal and account information through the “Internet Banking” and “Register” links. Complainant alleges that Respondent was using this disputed domain name to “phish” for confidential financial information in attempt to defraud Complainant’s Internet customers. The Panel finds Respondent’s attempt to pass itself off as Complainant and phish for customers’ confidential information was neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). 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).
Respondent’s disputed domain name does not currently resolve
to an active website. The Panel finds
that this constitutes a failure to make an active use of the disputed domain
name and is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the
disputed domain name pursuant to Policy ¶ 4(c)(iii). See
Bloomberg L.P. v. Sandhu, FA 96261
(Nat. Arb. Forum
In addition, the record and WHOIS information provide no evidence suggesting that Respondent is commonly known by the <rbosuk.com> domain name. Furthermore, Respondent was not authorized to use Complainant’s RBS mark or logo. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent was previously using the <rbosuk.com> domain name, which is
confusingly similar to Complainant’s RBS mark, to phish for Internet users’
confidential information by passing the website off as Complainant’s. Respondent was using a logo which imitated
Complainant’s and asked Internet users to provide confidential personal and
financial information through the “Internet Banking” and “Registration” links
presumably in order to defraud these Internet users. The Panel finds that such use constitutes bad
faith registration and use pursuant to 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
In addition, the Panel finds Respondent’s previous use of
the <rbosuk.com> domain name constituted registration and use in bad faith pursuant to Policy ¶ 4(b)(iv) because
it was confusingly similar to the Complainant’s website and Respondent was
profiting by obtaining Internet users’ confidential financial information. Respondent was attempting to use the
recognition Complainant built up in its RBS mark in order to lure Internet
users into providing their confidential personal and financial information to
Respondent. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat.
Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain); see
also 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).
Furthermore,
Respondent’s disputed domain name does not currently resolve to an active
website. The Panel finds that
this current inactive use constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iii).
See DCI
The Panel finds 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 <rbosuk.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Panelist
Dated: February 27, 2008
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