The Royal Bank of Scotland Group plc v. Webcraft
Claim Number: FA0806001198999
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 <rbsfinance.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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
9, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 30, 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 firstname.lastname@example.org 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 <rbsfinance.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsfinance.com> domain name.
3. Respondent registered and used the <rbsfinance.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 a world-renowned financial institution that was founded in 1727. Complainant offers a wide range of financial services, including consumer and credit lending, credit card services, investment and advisory services, and real estate services. In connection with these services, Complainant uses its RBS mark, for which it holds trademark registrations with several governmental authorities, including the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617 issued January 5, 1996), the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 97,469 issued March 23, 1998) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,185,538 issued December 19, 2006). Additionally, Complainant utilizes the Internet as a tool in conducting its business, and accordingly owns several domain names, including the <rbs.com>, <rbsassetfinance.com> and <rbs.co.uk> domain names.
Respondent registered the <rbsfinance.com> domain name on March 21, 2008. Respondent’s disputed domain name resolves to a website that imitates Complainant’s websites by displaying Complainant’s marks and logos and attempts to gain personal and financial information from Internet users.
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 demonstrated possession of several
registrations with various governmental authorities as evidence of its rights
to the RBS mark. The Panel finds these registrations
demonstrate Complainant’s rights in the RBS mark, and thus satisfy this portion
of Policy ¶ 4(a)(i).
See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat.
Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s
registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom
Patent Office as evidence of Complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i).”); see also Orange Glo Int’l v. Roswell Int’l Ltd, FA 440119 (Nat.
Having found Complainant to have sufficient rights in the RBS mark, the Panel must next determine whether the <rbsfinance.com> domain name is confusingly similar to this mark under the parameters of Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s RBS mark in its entirety, and adds the generic term “finance,” which in this context has a direct relationship to Complainant’s business. Moreover, the addition of the generic top-level domain “.com” does not distinguish the disputed domain name from Complainant’s mark, as all domain names must have some form of top-level domain. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Reed Elsevier Inc. & Reed Elsevier Props. Inc. v. Christodoulou, FA 97321 (Nat. Arb. Forum June 26, 2001) (finding that the <legallexis.com> and <legallexus.com> domain names were confusingly similar to the complainant’s LEXIS mark because the term “legal” described the type of services the complainant offers under the LEXIS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of the Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on 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 does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The WHOIS information for the <rbsfinance.com> domain name identifies Respondent as “Webcraft.” Additionally, Complainant has asserted that Respondent is not associated with Complainant or authorized to use its RBS mark. Thus, the Panel finds no indication that Respondent is commonly known by the disputed domain name as required to demonstrate rights under Policy ¶ 4(c)(ii). See eLuxury.com, Inc. v. Sandulli, FA 960178 (Nat. Arb. Forum June 7, 2007) (finding that the respondent was not commonly known by the <eluxury.mobi> domain name where it was not known by the name at the time of registration and the complainant had not given the respondent a license); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The <rbsfinance.com> domain name resolves to a website which imitates Complainant’s websites, and as such, the evidence indicates that Respondent is attempting to pass itself off as Complainant. In addition, Respondent is attempting to gain personal and financial information from Internet users who mistakenly think the disputed domain name is associated with Complainant for Respondent’s own commercial gain, a fraudulent use commonly referred to as “phishing.” The Panel finds that Respondent’s use of the <rbsfinance.com> domain name in this way is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As previously discussed, Respondent is using the disputed domain name in connection with a phishing scheme. Such a fraudulent use of the <rbsfinance.com> domain name is more than satisfactory to establish bad faith registration and use under Policy ¶ 4(a)(iii). 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 HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
While Respondent’s use of the <rbsfinance.com>
domain name in connection with phishing is adequate to satisfy Policy ¶ 4(a)(iii), the Panel also chooses to find that Respondent’s use
further qualifies as bad faith registration and use under Policy ¶
4(b)(iv). Under this portion of the
Policy, the disputed domain name must be registered and used in an attempt to
commercially gain from creating a likelihood of confusion with the
complainant’s mark and business. As
Respondent is using the <rbsfinance.com> domain name to display a
website that imitates Complainant and its financial business in connection with
a phishing scheme, this element is also met.
See Perot Sys. Corp.
v. Perot.net, FA 95312 (Nat. Arb.
Forum Aug. 29, 2000) (finding bad faith where the domain name in question is
obviously connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain); see
also Monsanto Co. v. Decepticons,
FA 101536 (Nat. Arb. Forum
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 <rbsfinance.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 16, 2008
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