The Royal Bank of Scotland
Group plc v. TA Funds c/o Kison Patel
Claim Number: FA0807001218036
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 <mintbanks.com>, registered with 1 & 1
Internet Ag.
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.
P-E H Petter Rindforth as Panelist.
PROCEDURAL HISTORY
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 postmaster@mintbanks.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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
B. Respondent
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.
FINDINGS
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).
Registered on
January 26,
CTM No. 1,628,528 MINT (figurative).
Registered on March
8,
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
DISCUSSION
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.
Complainant has
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,
Inc. v.
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.
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 <mintbanks.com> domain name be TRANSFERRED
from Respondent to Complainant.
P-E H
Dated: September 17, 2008
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