The Royal Bank of Scotland Group plc v. N/A c/o Bryan
I.
Claim Number: FA0806001199346
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas of Troutman Sanders LLP,
North Carolina, USA. Respondent
is N/A c/o Bryan I. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbsonlinecore.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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 June 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 6, 2008.
On June 6, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <rbsonlinecore.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 June 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 1, 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@rbsonlinecore.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rbsonlinecore.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsonlinecore.com> domain name.
3. Respondent registered and used the <rbsonlinecore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, provides financial products and services to individual and corporate customers. Complainant utilizes its RBS mark to offer these financial products and services. Additionally, Complainant uses its RBS mark to operate online banking services for Internet customers at its <rbs.com> domain name. Complainant holds trademark rights for its RBS mark with multiple governmental authorities including: (1) the United Kingdom Intellectual Property Office (“UKIPO”) registered on January 5, 1996 (Reg. No. 2,004,167); (2) the European Union’s Office for Harmonization in the Internal Market (“OHIM”) registered on March 23, 1998 (Reg. No. 97,469); and (3) the United States Patent and Trademark Office (“USPTO”) registered on December 19, 2006 (Reg. No. 3,185,538).
Respondent’s <rbsonlinecore.com> domain name previously resolved to a website which imitated Complainant’s website resolving from its <rbs.com> domain name. Respondent’s website resolving from the disputed domain name displayed logos, color schemes, pictures and graphics similar to Complainant’s primary website at its <rbs.com> domain name. The website resolving from Respondent’s disputed domain name also prompted Internet users to input their confidential account information, including their account and pin numbers. Presently, Respondent’s disputed domain name does not resolve to an active website.
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 provided evidence it registered its RBS mark
with multiple governmental authorities including the UKIPO, the OHIM and the
USPTO. The Panel finds these
registrations adequately establish Complainant’s rights in its RBS mark
pursuant to Policy ¶ 4(a)(i). See
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); see also
Respondent’s <rbsonlinecore.com>
domain name fully incorporates Complainant’s mark with the additions of the
generic term “online core” and the generic top-level domain “.com.” The addition of the generic term “online core”
does not deflect attention from the dominant portion of the disputed domain
name, Complainant’s RBS mark. Also,
previous panels have held top-level domains such as “.com” are considered
irrelevant for the purposes of evaluating whether a disputed domain name is
confusingly similar pursuant to Policy ¶ 4(a)(i). Therefore, the Panel finds Respondent’s <rbsonlinecore.com> domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must establish a prima facie case to support these assertions, and the Panel finds Complainant has done so in these proceedings. Once Complainant has produced a sufficient prima facie case, the burden shifts to Respondent to establish it does have rights or legitimate interests in the disputed domain name. Respondent failed to submit a response to these proceedings, thus the Panel may infer Respondent lacks rights and legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent was using the <rbsonlinecore.com>
domain name to resolve to a website which attempts to imitate Complainant’s
primary website through graphics, logos, color scheme, graphics and pictures. The Panel finds Respondent was attempting to
“pass itself off” as Complainant, which is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Kmart of
Additionally, Respondent was using the website resolving from the disputed domain name, to “phish” for Internet users’ confidential information by requesting them to provide their account and pin numbers. The Panel finds Respondent’s use was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to 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); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Currently, the disputed domain name does not resolve to an active website. The Panel finds Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely failed to make an active use of the domain name).
Additionally, Respondent does not appear to be commonly
known by the <rbsonlinecore.com>
domain name. The WHOIS information lists
Respondent as “N/A c/o Brian I,” and the record does not indicate Complainant
has authorized Respondent to use its RBS mark.
Therefore, the Panel finds Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent is
not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolved to a website which imitated Complainant’s primary website through the use of similar logos, color scheme, graphics and pictures. Respondent was using the <rbsonlinecore.com> domain name to pass itself off as Complainant and phish for Internet users’ confidential information. The Panel finds Respondent’s prior use of the disputed domain name constituted bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also 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).
In addition, the Panel finds Respondent was using the
confusingly similar <rbsonlincore.com>
domain name to profit from the goodwill Complainant has established in its RBS
mark by phishing for Internet users’ confidential information. The
Panel finds Respondent’s previous use of the disputed domain name was evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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 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).
Respondent’s disputed domain name does not currently resolve
to an active website. The Panel finds
Respondent’s failure to make an active use of the disputed domain name is
further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI
The Panel finds 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 <rbsonlinecore.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 21, 2008
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