The Royal Bank of Scotland Group plc v. Kellen Jones
Claim Number: FA0801001128346
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <royalbankofscotland.ws>, registered with Global Domains International.
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 January 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 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 email@example.com by e-mail.
Having received no response from Respondent other than
“WHAT!? That's really disappointing. I have several emails that prove my response.. I was never given any more formal avenue to respond. Kellen,”
Since this is the only response received from the Respondent, and cannot be deemed a response to the proceedings, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <royalbankofscotland.ws> 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 <royalbankofscotland.ws> domain name.
3. Respondent registered and used the <royalbankofscotland.ws> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, is a
leading financial service group.
Complainant holds numerous trademark registrations for the THE ROYAL
BANK OF SCOTLAND mark, including in the United Kingdom Intellectual Property
Office (No. 1,566,044, issued February 2, 1996), the European Union Office for
Harmonization in the Internal Marked (“OHIM”) (No. 97402, issued June 15, 1998)
and the United States Patent and Trademark Office (“USPTO”) (Reg. No.
Respondent registered the <royalbankofscotland.ws> 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 established rights pursuant to Policy ¶
4(a)(i) through its numerous registrations of the THE ROYAL BANK OF SCOTLAND
mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum
The disputed domain name is confusingly similar to
Complainant’s mark. Respondent’s <royalbankofscotland.ws> domain
name includes the majority of Complainant’s mark, omitting only spaces and the article
“the” while adding the country code top-level domain (“ccTLD”) of Samoa, “.ws.” The Panel finds these minor variations
insufficient to distinguish the disputed domain name from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Antoun v. Truth Squad, FA 114766
(Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Where Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights to or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case in the matter at hand. See 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”); 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 has failed to submit a response to the
Complaint. Therefore, the Panel is
entitled to presume that Respondent lacks all rights and legitimate interests
in the disputed domain name. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
The disputed domain name, <royalbankofscotland.ws>, currently redirects Internet users
to a website at <website.ws/kellenjones1>, which displays information for
GDI. The Panel finds this to be 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 Bank
of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006)
(finding that the respondent’s use of a domain name to redirect Internet users
to websites unrelated to a complainant’s mark is not a bona fide use
under Policy ¶ 4(c)(i)); see also
Complainant contends that Respondent is not commonly known
by the <royalbankofscotland.ws> domain
name and is not authorized to use Complainant’s THE ROYAL BANK OF SCOTLAND mark
in any way. Nowhere in Respondent’s WHOIS information or elsewhere in the
record does it indicate that Respondent is or ever was commonly known by the <royalbankofscotland.ws> domain name. Absent evidence suggesting otherwise, the
Panel finds that Respondent has not established rights to or legitimate
interests in the disputed domain name in accordance with Policy ¶
4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent is using the <royalbankofscotland.ws> domain name to
divert Internet users to a website displaying information for GDI for financial
gain. The Panel agrees with this
assertion and finds that Respondent is taking advantage of the confusing
similarity between the <royalbankofscotland.ws>
domain name and Complainant’s THE ROYAL BANK OF SCOTLAND mark in order to
profit from the goodwill associated with the mark. Therefore, the Panel finds that Respondent has
registered and is using the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(iv). See Allianz of Am.
Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see
also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <royalbankofscotland.ws> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
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