national
arbitration forum
DECISION
The Royal Bank of Scotland Group plc v. Syberplus Online
Claim Number: FA0806001203456
PARTIES
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 <rbscot-uk.com>, registered with Estdomains, Inc.
PANEL
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2008.
On June 13, 2008, Estdomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbscot-uk.com> domain name is registered with Estdomains, Inc. and that Respondent is the current registrant of the name. Estdomains, Inc. has verified that Respondent is bound by the Estdomains, 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 June
17, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 7, 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@rbscot-uk.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 9, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant, founded in 1727,
is one of the world’s leading financial services groups.
Complainant is headquartered
in
Complainant holds numerous
trademark registrations for the RBS mark, including Reg. No. 2,004,617 issued
January 5, 1996, by the United Kingdom Intellectual Property Office (“UKIPO”);
Reg. No. 97,469, issued March 23, 1998, by the European Union’s Office For
Harmonization in the Internal Market (“OHIM”); and Reg. No. 3,185,538, issued
December 19, 2006, by the United States Patent and Trademark Office
(“USPTO”).
Complainant also registered
and uses the <rbs.com>, <rbs-asia.com>, and <rbsint.com>
domain names to promote its services online.
Respondent is not licensed or otherwise authorized to use
Complainant’s RBS mark.
Respondent registered the <rbscot-uk.com> domain name on February 12, 2008.
The disputed domain name previously led Internet users to a website purporting to be Complainant’s banking website, and displayed Complainant’s logo and marks.
The same website also solicited Internet users, including Complainant’s customers, to input their personal and financial information.
Respondent has attempted to profit from the goodwill associated with Complainant’s RBS mark by creating a likelihood of confusion as to the possible source of Respondent’s website resolving from the disputed domain name.
Currently, the disputed domain name does not resolve to an active website.
Respondent’s <rbscot-uk.com> domain name is confusingly similar to Complainant’s RBS mark.
Respondent does not have any rights to or legitimate interests in the <rbscot-uk.com> domain name.
Respondent registered and uses the <rbscot-uk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark on a complainant. Complainant has provided extensive evidence of its trademark registrations around the world, which is sufficient to satisfy the requirements of the Policy. Therefore, Complainant has established rights in its RBS mark for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <rbscot-uk.com> domain name contains
Complainant’s RBS mark in its entirety, but uses the “s” to form “scot,” a
common abbreviation for
The disputed domain name also adds the generic top-level domain “.com.” This addition is irrelevant under the Policy. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance
since use of a gTLD is required of domain name registrants . . . .
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant contends that Respondent does not have rights or legitimate interests in the <rbscot-uk.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights to or legitimate interests in its domain name under Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must make a prima facie showing that Respondent does not
have rights or legitimate interest in the subject domain names, which burden is
light. If Complainant satisfies its
burden, then the burden shifts to Respondent to show that it does have rights
or legitimate interest in the subject domain names.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in its domain name).
Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). And, because Respondent has failed to respond to the Complaint, we are entitled to conclude that Respondent has no rights or interests cognizable under the Policy. Nonetheless, we will examine the record to determine if there is any basis for concluding that Respondent has such rights or interests under the provisions of Policy ¶ 4(c).
We begin by noting that, pursuant to Policy ¶ 4(c)(ii), a respondent can demonstrate its rights or legitimate
interests in a disputed domain name by showing that it is commonly known by the
disputed domain name. However, nothing
in the record before us indicates this to be true of Respondent. Moreover, the pertinent WHOIS information
identifies Respondent as “Syberplus Online,” which bears no resemblance to the <rbscot-uk.com> domain name. In addition, Complainant alleges, and
Respondent does not deny, that Respondent is not licensed or otherwise
authorized to use Complainant’s RBS mark.
From this record, we are satisfied that Respondent is not commonly known
by the <rbscot-uk.com>
domain name pursuant to Policy ¶ 4(c)(ii). See
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that
a respondent was not commonly known by the <lilpunk.com> domain name
where there was no evidence in the record showing that that respondent was
commonly known by the domain name there in question, including the WHOIS
information); see also Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly
known by a disputed domain names where the WHOIS information, as well as other
information in the record, gave no indication that that respondent was commonly
known by the disputed domain names, and where a complainant had not authorized
that respondent to register a domain name containing its registered mark).
We also observe that the evidence presented by Complainant indicates, without contradiction from Respondent, that Respondent previously used the <rbscot-uk.com> domain name to pass itself off as Complainant in the context of Complainant’s banking business, and, in that setting, solicited Internet users, including Complainant’s customers, to input their personal and financial information, a fraudulent process called “phishing.”
See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), where a panel described “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.” Such use of the disputed domain name does not constitute 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 HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The Complaint recites that Respondent is not making any
current active use of the <rbscot-uk.com>
domain name. In the circumstances here presented, this inactive use of the
disputed domain name fails to constitute 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
George
Weston Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum Apr. 25,
2007) (finding that a respondent had no rights to or legitimate interests in a
domain name under either Policy ¶ 4(c)(i) or 4(c)(iii) where it failed to make
any active use of the domain); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003): “[T]he Panel
concludes that Respondent's [inactive use] of the [subject] domain name does
not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”
The Panel thus finds that Policy ¶
4(a)(iii) has been satisfied.
Registration and Use in Bad Faith
Bad faith registration and use of a contested domain name is readily determined where there is evidence that a respondent had actual knowledge of a complainant’s rights in a mark at the point of registration. The circumstances before us indicate such knowledge on the part of Respondent because there is no dispute as to Complainant’s allegation that the website that once resolved from the <rbscot-uk.com> domain name prominently displayed Complainant’s logo and marks. These facts fall within the parameters of Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the connection between a complainant’s mark and the content advertised on a respondent’s website was obvious, that respondent operated in bad faith in that it “must have known about the Complainant’s mark when it registered the subject domain name”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that a respondent had both actual and constructive knowledge of a complainant’s EXXON mark, given the worldwide prominence of the mark, so that that respondent registered and used a contested domain name in bad faith).
Complainant also alleges, and Respondent does not deny, that Respondent has attempted to profit from the goodwill associated with Complainant’s RBS mark by creating a likelihood of confusion as to the possible source of Respondent’s website that resolves from the disputed domain name. Such use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002): “Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.” See also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith).
Finally in this connection, it is alleged without
contradiction that Respondent has used the disputed domain name to “phish” for
Complainant’s customers’ personal and financial information. This too constitutes evidence of bad faith
registration and use of the contested domain name pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v.
For these reasons, the Panel concludes that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <rbscot-uk.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 16, 2008
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