The Royal Bank of Scotland Group plc v. PrivacyProtect.org c/o Domain Admin
Claim Number: FA0804001175194
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 <rbs-manchester.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.
Complainant submitted a Complaint to the
National Arbitration Forum electronically on
7, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 28, 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, 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 <rbs-manchester.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbs-manchester.com> domain name.
3. Respondent registered and used the <rbs-manchester.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, is in the
business of financial services groups such as consumer and commercial lending,
credit card services, investment and advisory services, and real estate services. Complainant registered its RBS mark with the
United Kingdom Intellectual Property Office (“UKIPO”) on
domain name, which it registered 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.
The Panel finds that Complainant has established sufficient rights in the RBS mark through both its registration with UKIPO and USPTO under 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 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).
Respondent’s disputed domain name incorporates Complainant’s
entire RBS mark and adds the geographical term “
Therefore, the Panel finds that Respondent’s <rbs-manchester.com> domain name is
confusingly similar to Complainant’s RBS mark under Policy ¶ 4(a)(i). See JVC
Americas Corp. v. Macafee, CPR007 (CPR
Once Complainant has made a prima facie case that Respondent lacks rights and legitimate
interests in the disputed domain name, the burden of proof shifts to the
Respondent under Policy ¶ 4(a)(ii). The failure to respond by Respondent furthers
the presumption that Respondent does not have any rights or legitimate
interests in the <rbs-manchester.com>
domain name. Based upon an evaluation of the entire record,
the Panel finds that Complainant has established a prima facie case. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
The Panel finds that Responent is using the disputed domain name to pass itself off as Complainant by using the <rbs-manchester.com> domain name to resolve to a website featuring Complainant’s RBS mark, Complainant’s company name, and a description of similar products as those offered by Complainant. After purporting to be Complainant on the website, Respondent then provides its own contact information. Additionally, Respondent has also created a “Login” page link displayed on the resolving website of the disputed domain name to faciliate gathering personal information from Internet users. Therefore, the Panel infers that Respondent is using the disputed domain name in an attempt to phish for personal information from Complainant’s clients or potential clients. Accordingly, the Panel finds that Respondent has not made 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 American 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 . . . .”).
Furthermore, Respondent’s WHOIS contact information of “Nokla Stores c/o Henry Morgan” does not demonstrate that Respondent is commonly known by the <rbs-manchester.com> domain name and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name in connection with a legitimate or fair use. Complainant asserts that Respondent is not licensed by Complainant or otherwise authorized to register or use Complainant’s RBS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s <rbs-manchester.com> domain name and the resolving website are likely to create confusion as to Complainant’s endorsement and affiliation due to Respondent displaying Complainant’s company name, RBS mark, and offering to sell fraudulent products similar to the genuine products offered by Complainant. Based on the undisputed evidence, the Panel finds that Respondent is attempting to profit by passing itself off as Complainant as demonstrated by Respondent’s registration and use of the disputed domain name and resolving website, and that such conduct constitutes bad faith under Policy ¶ 4(b)(iv). See 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); see also American Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also America Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
Finally, the Panel finds that Respondent is attempting to phish for personal information from Internet users while pretending to be Complainant through Respondent’s registration and use of the <rbs-manchester.com> domain name. The Panel infers that Respondent is intentionally trying to acquire personal informaition of Internet users by its links to its contact information and “Login” pages both listed on the website resolving from the disputed domain name. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. 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.”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
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-manchester.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 13, 2008
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