national arbitration forum

 

DECISION

 

The Royal Bank of Scotland Group plc v. UBA c/o ICB011857 ICB011857

Claim Number: FA0805001189004

 

PARTIES

Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA.  Respondent is UBA c/o ICB011857 ICB011857 (“Respondent”), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rbsuk-online.org>, registered with Tucows Inc.

 

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 6, 2008.

 

On May 6, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsuk-online.org> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

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 postmaster@rbsuk-online.org by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 December 19, 2006), which was registered with the United States Patent and Trademark Office (“USPTO”).  Complainant also owns and operates numerous domain names in conjunction with its Internet operations, including the <rbs.com>, <rbs.co.uk>, <rbs-europe.com>, <rbsmarkets.com>, and <rbsint.com> domain names.  Founded in 1727, Complainant has spent considerable monies on building and developing the goodwill surrounding its mark.

 

Respondent registered the <rbsuk-online.org> domain name on October 18, 2007.  Respondent is currently using the disputed domain name to divert Internet users to a website that features third-party links and advertisements, some of which lead to Complainant’s direct competitors in the financial services industry.

 

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 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.

 

Identical and/or Confusingly Similar

 

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 Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).

 

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 “United Kingdom,” or “uk,” does not distinguish the disputed domain name in this case, especially since Complainant’s multi-national business is based in the United Kingdom.  Moreover, the addition of the hyphen will likewise fail to distinguish the disputed domain name, as it is entirely insufficient to overturn a Policy ¶ 4(a)(i) finding of confusing similarity between the disputed domain name and the mark.  Finally, the generic word “online” can fairly be called descriptive of Complainant’s operations, as Complainant has significant operations over the Internet and operates numerous domain names in conjunction with such business.  Though there are several additions to Complainant’s mark in the disputed domain name, the Panel is inclined to find that the whole lot of inclusions is insufficient to distinguish the disputed domain name.  Complainant’s mark remains the most prominent feature of the disputed domain name, and therefore the Panel finds that the <rbsuk-online.org> domain name is confusingly similar to Complainant’s RBS mark under Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant. . . . Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(ii).”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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 Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

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. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).

 

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.

 

DECISION

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

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum