The Royal Bank of Scotland Group plc v. Onete Philip
c/o Domain Registrar
Claim Number: FA0809001222782
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 <rbsliverpool.com>, registered with Name.com LLC.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 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@rbsliverpool.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <rbsliverpool.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsliverpool.com> domain name.
3. Respondent registered and used the <rbsliverpool.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Founded in 1727, Complainant is one of the leading financial
services groups in the world.
Complainant currently owns trademark registrations of the RBS mark with
the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617
issued January 5, 1996), the European Union 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
Respondent’s <rbsliverpool.com> domain name
was registered on
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 sufficiently established rights in the RBS
mark through registration with the UKIPO, the OHIM, and the USPTO pursuant to
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. Arb.
Forum Apr. 21, 2005) (finding the complainant had established rights in the
OXICLEAN mark by virtue of trademark registrations with entities including the
Office for Harmonization in the Internal Market (“OHIM”)); see also Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO).
The <rbsliverpool.com> domain name contains
Complainant’s RBS mark in its entirety followed by the city name “liverpool”
and the generic top-level domain (“gTLD”) “.com.” Complainant conducts business in the city of
The Panel concludes that Complainant has established Policy ¶ 4(a)(i).
The first step in a Policy ¶ 4(a)(ii) analysis is to
determine whether Complainant has established a prima facie case against Respondent demonstrating that Respondent
lacks rights and legitimate interests in the disputed domain name. The Panel finds that this threshold has been
met and accordingly the burden is shifted upon Respondent to prove that it does
have rights or legitimate interests in the disputed domain name. See Towmaster, Inc. v. Hale, FA
973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii)
of the Policy shows that the burden of proof shifts from the Complainant to the
Respondent once the Complainant has made out a prima facie case that the
Respondent has no rights or interests in the domain names.”).
No response has been filed.
Therefore, the Panel may presume that Respondent lacks rights and
legitimate interests in the disputed domain name. Nonetheless, the Panel will proceed to
examine the record in consideration of the factors listed under Policy ¶
4(c). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Vanguard Group, Inc.
v. Collazo, FA 349074 (Nat. Arb. Forum
The WHOIS information for the <rbsliverpool.com>
domain name lists Respondent under the alias “Onete Philip c/o Domain Registrar.” Further, Complainant states that it has at no
time authorized or otherwise given permission to Respondent to use the RBS mark
in any way. Without any additional information,
the Panel finds that Respondent is not commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See 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); see
also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum
Respondent’s <rbsliverpool.com> domain name
resolves to a website that is attempting to pass off as Complainant. The website contains Complainant’s logo and
mark and links titled “contact us” and “log in.” These links redirect Internet
users to false information about Complainant.
Complainant contends this constitutes a phishing attempt in which
Respondent is attempting to obtain personal information of current and
potential customers of Complainant. See HOPE
worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004)
(defining “phishing” as fooling “Internet users into sharing personal financial
data so that identities can be stolen, fraudulent bills are run up, and spam
e-mail is sent”). The Panel finds that
this does not constitute either 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 Allianz of Am. Corp. v. Bond, FA
690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of
the <allianzcorp.biz> domain name to fraudulently acquire the personal
and financial information of Internet users seeking Complainant’s financial
services was not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed
domain name pursuant to Policy ¶ 4(c)(iii)); 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).
The Panel concludes that Complainant has established Policy ¶ 4(a)(ii).
With the <rbsliverpool.com> domain name,
Respondent is attempting to pass itself off as Complainant. The disputed domain name resolves to a
website purporting to be Complainant, containing Complainant’s RBS mark and
logo, and additional information about how to contact Complainant that is false
and misleading. The Panel determines
that this establishes that Respondent registered and used the <rbsliverpool.com>
domain name in bad faith for the purpose of disrupting Complainant’s business
pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum
Additionally, this fraudulent use of the disputed domain
name is part of a phishing scheme. The
Panel may presume that Respondent is attempting to financially benefit from the
personal financial information obtained through this scheme. Consequently, this is further evidence of
Respondent’s bad faith registration and use of the <rbsliverpool.com>
domain name pursuant to Policy ¶ 4(b)(iv).
See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a
domain name that incorporates another's mark with the intent to deceive
Internet users in regard to the source or affiliation of the domain name is
evidence of bad faith [under Policy ¶ 4(b)(iv).”); see also H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding
that the disputed domain name was registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv) through the respondent’s registration and use of the
infringing domain name to intentionally attempt to attract Internet users to
its fraudulent website by using the complainant’s famous marks and likeness); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum
Moreover, besides the examples given in Policy ¶¶ 4(b)(iii) and (iv), the passing off scheme Respondent has engaged in is sufficient on its own under Policy ¶ 4(a)(iii) to establish bad faith registration and use of the <rbsliverpool.com> domain name. See Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).
The Panel concludes that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbsliverpool.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 20, 2008
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