Ulster Bank Limited and The
Royal Bank of Scotland Group plc v. Christopher Rainer
Claim Number: FA0802001154854
PARTIES
Complainant is Ulster Bank Limited and The Royal Bank of Scotland
Group plc (collectively, “Complainant”) represented by James A. Thomas, of Troutman
Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grouptradergold.us>, registered with
Melbourne
It Ltd.
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On
On March 10, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 31, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
On
On April 3, 2008, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the 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
1. Respondent’s <grouptradergold.us> domain name is confusingly similar to Complainant’s TRADERGOLD mark.
2.
Respondent does not have any rights or
legitimate interests in the <grouptradergold.us>
domain name.
3.
Respondent registered and used the <grouptradergold.us> domain name in
bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Ulster Bank Limited, was founded
in 1836 and has provided financial services to a variety of customers, national
and international. Complainant is owned
by Complainant The Royal Bank of
Respondent registered the <grouptradergold.us> domain name on
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 the Complainant's undisputed representations
pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant asserts rights in the TRADERGOLD
mark. The Panel finds that Complainant
has established rights in the TRADERGOLD mark for purposes of Policy ¶
4(a)(i). See Royal Bank of Scot. Group plc v. Soloviov, FA
787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations
for the NATWEST mark with the United Kingdom Patent Office . . . establish
Complainant’s rights in the mark pursuant to UDRP ¶ 4(a)(i).”); see also Royal Bank of Scot. Group plc v. Demand Domains, FA 714952
(Nat. Arb. Forum
Complainant contends that Respondent’s <grouptradergold.us> domain name is
confusingly similar Complainant’s TRADERGOLD mark. Respondent’s disputed domain name contains
Complainant’s entire mark and adds the generic top-level domain (“gTLD”) “.com”
and the generic term “group.” The Panel
finds that Respondent has failed to differentiate its domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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 Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat.
Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,”
to the complainant’s AIG mark failed to sufficiently differentiate the name
from the mark under UDRP ¶ 4(a)(i) because the appended term related directly
to the complainant’s business); see also Am. Online, Inc. v. Anytime Online Traffic
Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the
respondent’s domain names, which incorporated
the complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant contends that
Respondent lacks all rights and legitimate interests in the <grouptradergold.us> domain
name. In instances such as this where
Complainant has established a prima facie
case against Respondent, the burden of proof shifts from Complainant to
Respondent to bring forth its evidence of rights and legitimate interests under
Policy ¶ 4(a)(ii). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum
Complainant contends that
Respondent does not own a trademark in the <grouptradergold.us>
domain name. Respondent is not commonly
known by the <grouptradergold.us>
domain name. The WHOIS information for
the disputed domain name lists the registrant as “Christopher
Respondent is using the <grouptradergold.us> domain name to
redirect Internet users to a website that advertises competing
telecommunications services.
Respondent’s use is not a bona
fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate
non-commercial or fair use pursuant to Policy ¶ 4(c)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant has shown that Respondent
is using the <grouptradergold.us>
domain name to connect Internet users to a website offering services that
directly compete with Complainant’s own financial services. The Panel finds that use to be a disruption
of Complainant’s business and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v.
Latingrocer.com, FA 94384 (Nat. Arb. Forum
Finally, the Panel finds that
Internet users will likely be confused as to Complainant’s sponsorship of and
affiliation with the resulting website and Respondent is seeking to capitalize
on this confusion by selling competing financial services through its resulting
website. This use is further evidence of
bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark); see also TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grouptradergold.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 17, 2008
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