The Royal Bank of Scotland Group plc v. UBA c/o ICB011857 ICB011857
Claim Number: FA0805001189004
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 <rbsuk-online.org>, registered with Tucows Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On May 12, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of June 2, 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 <rbsuk-online.org> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsuk-online.org> domain name.
3. Respondent registered and used the <rbsuk-online.org> 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
financial services provider that operates in multiple countries and employs
over 140,000 workers. Complainant
operates its banking, insurance, and brokerage services under the RBS mark (Reg.
No. 3,185,538, issued
Respondent registered the <rbsuk-online.org>
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.
The Panel finds that Complainant’s registration of the RBS
mark with the USPTO confers sufficient rights in the mark upon Complainant
pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Respondent’s <rbsuk-online.org> domain name
places Complainant’s entire and complete RBS mark before several additions,
including the United Kingdom abbreviation “uk,” a hyphen, the generic word
“online,” and finally the generic top-level domain (“gTLD”) “.org.” Little need be said about the addition of
“.org,” as the inclusion of a gTLD is considered immaterial when conducting a
Policy ¶ 4(a)(i) analysis because all disputed domain
names must include one. The addition of
the common abbreviation for “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <rbsuk-online.org> domain name. Complainant has therefore set forth sufficient allegations supporting a prima facie, and thus Respondent bears the burden of demonstrating that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s <rbsuk-online.org> domain name merely serves to divert Internet users to a website that offers third-party links and advertisements. Some of the advertisements link to unrelated businesses, such as gaming websites. Others link to Complainant’s direct competitors in the banking and financial services industry. There are no other discernible offerings presented before the Panel, and thus it is presumed that this display of advertisements is the sole intended purpose of the disputed domain name. Respondent presumably receives the typical referral fees for the placement of these links on the corresponding website, as there is no contradictory evidence within the record. The Panel therefore finds that Respondent’s use of the disputed domain name to create such a diversion to an advertisement website for monetary benefit fails to amount to 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Because Respondent has failed to submit a Response in this
proceeding, the evidence in the record is therefore entirely drawn from
Complainant’s Complaint. The Panel notes
that nothing within this record connotes the existence of a license,
permission, or authority by Respondent to bear Complainant’s mark in any
fashion, including the disputed domain name.
Likewise, Respondent cannot fairly be said to be commonly known by the
disputed domain name at any time. What
little information the Panel can scrutinize regarding Respondent as it relates
to the disputed domain name is entirely within the registrant listing in the
WHOIS domain name registration information.
However, that listing describes the registrant as “UBA c/o ICB011857
ICB011857.” Given the nonsensical quality
that this listing bears, there can be little doubt that this listing does not
have any resemblance, likeness, or similarity to the disputed domain name at
hand. The Panel therefore finds that
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), and thus lacks rights and legitimate interests under
Policy ¶ 4(a)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest 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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <rbsuk-online.org> domain name
siphons Internet users to Respondent’s corresponding website, which presents
third-party advertisements for Complainant’s direct competitors. Under Policy ¶ 4(b)(iii),
it is not necessary for the Panel to find that Respondent is a strict
competitor in the truest sense of the word, such as a competing banking
institution, when finding bad faith registration under this element of the
Policy. Rather, it is sufficient that
Respondent’s intent to disrupt Complainant’s business is borne through
disruptive operations, such as providing a portal website via the disputed
domain name that leads Internet users to Complainant’s competitors, even if
such guidance occurs through mere advertisements. The Panel finds that this scenario fits
precisely within this definition, as Complainant’s mark provided the motivation
and intent for Respondent to create the confusingly similar disputed domain
name for this disruptive activity.
Though Respondent does not benefit from any completed competitive commerce
that may occur through these links, Complainant’s online business is disrupted
by Respondent’s registration and use of the disputed domain name at the stage
of diversion. The Panel therefore finds
that Respondent has engaged in bad faith registration and use under Policy ¶
4(b)(iii), as Respondent’s primary intent with the
disputed domain name was to utilize Complainant’s goodwill and disrupt
Complainant’s business for monetary gain.
See Mission KwaSizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Respondent’s <rbsuk-online.org> domain name is confusingly similar to Complainant’s RBS mark. Respondent also presumably receives some type of monetary or commercial benefit from the placement of these advertisements on the disputed domain name’s corresponding website. Internet users familiar with Complainant’s goodwill, and thus seeking Complainant’s current or future financial services could likely happen across the disputed domain name. Though the disputed domain name carries additional features than Complainant’s mark, it is also true that Complainant owns and operates numerous domain names that reflect this mark, as well as other elements. Thus it is not inconceivable that an Internet user could discover the disputed domain name. Respondent’s registration and use of the disputed domain name has therefore created a substantial likelihood of confusion as to Complainant’s source, endorsement, and affiliation of the disputed domain name and corresponding website. The Panel finds this to be evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Am. 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 TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
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 <rbsuk-online.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 19, 2008
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