The Royal Bank of Scotland Group plc v. TA Funds c/o Kison Patel
Claim Number: FA0807001218036
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 <mintbanks.com>, registered with 1 & 1 Internet Ag.
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.
P-E H Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2008.
On July 30, 2008, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <mintbanks.com> domain name is registered with 1 & 1 Internet Ag and that the Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 August 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 25, 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.
A timely Response was received and determined to be complete on August 25, 2008.
Complainant submitted an Additional Submission on September 2, 2008 that was determined to be timely and complete pursuant to Supplemental Rule 7.
Respondent submitted an Additional Submission on September 7, 2008 that was determined to be timely and complete pursuant to Supplemental Rule 7.
On September 3, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed P-E H Petter Rindforth as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant claims to be one of the
world’s leading financial services groups, ranked among the top ten banks in
the world in terms of market capitalization. Complainant holds numerous
trademark registrations for its MINT mark, including in the
Complainant argues that <mintbanks.com> is identical or confusingly similar to Complainant’s mark MINT, as it incorporates the said mark with the only addition of the descriptive term “banks”—corresponding to Complainant’s business—and the TLD “.com.”
Complainant states that Respondent has no right to or legitimate interest in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use the MINT mark, or any variation thereof, in the domain name or otherwise. Respondent has never used the domain name in connection with a bona fide offering of goods or services nor made a legitimate non-commercial or fair use of the domain name. Instead, the <mintbanks.com> domain name resolves to a website featuring links to Complainant’s competitors in the financial and banking industries for, among other things, credit cards and loans (printouts from Respondent’s website and the websites resulting from links on Respondent’s website attached as Exhibit D of the Complaint).
Thus, it appears that Respondent is capitalizing on Complainant’s well-known mark by attracting Internet users to its website and redirecting them to Complainant’s competitors, presumably in exchange for click-through fees. Such use does not constitute a bona fide offering of goods or services.
Complainant further states that Respondent does not appear to be commonly known by the domain name, and refers to the fact that Respondent registered the <mintbanks.com> domain name under the name “TA Funds c/o Kison Patel.”
Finally, Complainant concludes that the domain name has been registered and used in bad faith
by Respondent. As, according to
Complainant, the MINT mark is well-known throughout the
Respondent denies Complainant’s accusations.
Respondent argues the disputed
domain name is not identical or confusingly similar to any trademarks in which
the Complainant has rights. Respondent does not deny that Complainant has demonstrated the goodwill of its mark
MINT in the
Respondent informs that the domain name is currently in use for a portal site and that therefore Complainant has failed to prove that Respondent is lacking rights and legitimate interests in respect of the <mintbanks.com> domain name.
Finally, Respondent denies that the disputed domain name is registered and used in bad faith.
C. Additional Submissions
Complainant’s Additional Submission
In its Additional Submission, Complainant maintains its accusations, pointing out that Respondent has offered no support to the contrary.
Respondent’s Additional Submission
In its Additional Submission, Respondent again denies any confusing similarity between Complainant’s mark and the disputed domain name, arguing that Complainant has no trademark rights in the jurisdiction of Respondent. Respondent further repeat its arguments filed in the first Response.
Complainant, founded in 1727, offers a wide range of financial products and services. Complainant has offices in numerous countries on four continents, and more than 140,000 employees.
Complainant is the owner of the registered trademark “MINT,” including:
U.K. National Trademark No. 2,243,024 MINT (word).
CTM No. 1,628,528 MINT (figurative).
Registered on March
Copies from the Official Trademark databases provided as Exhibit C, Tab 1 - 2 of the Complaint.
Complainant is also the holder of a number of domain name registrations featuring the MINT mark, including <mintbank.co.uk>, <mint-credit.com>, <mintbank.net> and <mintbank.org>, which all resolve to the Complainant’s website at <mint.co.uk>. (Copies of the WHOIS registration records and website screen to which they resolve provided as Exhibit C, Tab 3- 4, of the Complaint).
Respondent registered the disputed domain name on February 7, 2008
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
established rights in the MINT marks through registrations in the
The domain name at issue is <mintbanks.com>. It is distinguished from Complainant’s mark only by the addition of the generic term “banks” and the generic top-level domain “.com.” The latter is a necessary technical addition to every domain name and thus not sufficient to distinguish the disputed domain name from Complainant’s mark.
Also, the mere addition of generic terms to a mark is not only insufficient to distinguish a domain name from a corresponding trademark, they can even add to the confusion. In this case, the word “banks” refers directly to the financial services of Complainant. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
While Respondent contends that Complainant’s mark is neither famous, nor registered in the U.S. (the jurisdiction of Respondent) and therefore the domain name presumably cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only i) whether Complainant has rights in the mark and ii) whether the disputed domain name is identical or confusingly similar to that mark (see above). The fact that Complainant’s mark is registered only in the U.K. and as a Community Trademark, whereas the disputed domain name is registered by a U.S. entity may only be relevant to the assessment of bad faith pursuant to Policy ¶ 4(a)(iii), which is considered below.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark MINT. Policy ¶ 4(a)(i) has been satisfied.
Complainant states that Respondent has no right to or legitimate interest in the disputed domain name, as Respondent is not licensed or otherwise authorized by Complainant to use the MINT mark or any variation thereof, in the <mintbanks.com> domain name, or otherwise. Additionally, Complainant argues that there is nothing in the record that indicates that Respondent is or ever was commonly known by the disputed domain name.
Respondent does not contest or reply to the latter argument, but refers to the fact that the domain name is currently in use for a portal site as evidence of legitimate interest.
The Panel notes that “pay-per-click” or “sponsored search” services of the type offered by Respondent can be legitimate.
In this situation,
however, the initial and continuing use of the domain name has been to direct
users to Respondent’s site and further to web pages that are competitive with
Complainant and its financial services.
The use of the MINT mark in such a manner cannot be considered in any circumstance
to be bona fide. See Royal Bank of Scot. Group plc v. Demand Domains, FA
714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a
commercial web directory displaying various links to third-party websites was
not a use in connection with 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), as the respondent presumably earned “click-through” fees
for each consumer it redirected to other websites); see also Jerry Damson,
The Panel therefore concludes that Respondent has no rights or legitimate interests in the domain name, and finds for Complainant under Policy ¶ 4(a)(ii).
While the Complainant argues that Respondent has registered and is using the disputed domain name in bad faith, Respondent has simply denied these accusations.
Respondent refers to the fact that
Complainant’s mark is only registered in the
Legal presumption of bad faith arises when a respondent had constructive knowledge of a complainant’s trademarks. In this case, constructive knowledge of Complainant’s rights in MINT may be imputed to Respondent referring to the following circumstances:
Although not registered as a trademark in the U.S., a web search for MINT in connection with financial services should have revealed the services of Complainant, especially considering Complainant’s use of the domain names <mintbank.co.uk>, <mintbank.net> and <mintbank.org>.
It cannot be just a coincidence that Respondent registered the <mintbanks.com> domain name, a combined domain name almost identical to Complainant’s domain names, for the services offered under the registered trademark MINT.
The Complainant has registered MINT in respect of (among others) “health insurance services,” “Internet services,” and “collection and management of information services…” Respondent is using the disputed domain name for a portal site with information on financial services and links to several competitors of Complainant. In other words, Respondent is offering “Internet services” and “collect and manager information” on financial services— more or less exactly the same services covered by Complainant’s registered mark MINT.
Policy ¶ 4(b) lists four circumstances that in particular, without limitation, demonstrate evidence of the registration and use of a domain name in bad faith. The circumstances of Policy ¶ 4(b)(iv) appear to be pertinent:
By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The confusing similarity between the domain name at issue and the MINT mark makes it likely that Internet users attracted to Respondent’s web page will mistakenly believe that Respondent’s web page is sponsored by Complainant. Respondent is profiting from this confusion by advertising the sale of goods and services in competition with Complainant. Respondent’s intent in doing so is established by its knowledge and lack of bona fide offering as previously discussed. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel concludes that Respondent registered <mintbanks.com> with the Complainant and its trademark and financial services in mind, and that the Respondent thereafter created a web site with sponsored links in order to earn money from the initial confusion with Complainant’s own trademark, domain names and sites.
Accordingly, Respondent has registered and used the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mintbanks.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: September 17, 2008
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