The Royal Bank of Scotland Group plc v. issa mawba
Claim Number: FA0811001235766
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 <royalbos.org>, registered with Wild West Domains, Inc..
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 December 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 23, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <royalbos.org> domain name is confusingly similar to Complainant’s THE ROYAL BANK OF SCOTLAND mark.
2. Respondent does not have any rights or legitimate interests in the <royalbos.org> domain name.
3. Respondent registered and used the <royalbos.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc (“RBS”),
is a leader in the global marketplace of financial services, providing services
in banking, credit, and investment advising.
Complainant was founded in 1727 and currently has offices in numerous
countries. Complainant has held its THE
ROYAL BANK OF SCOTLAND mark with the United Kingdom Intellectual Property
Office (“UKIPO”) since 1996 (Reg. No. 1,290,954 issued February 2, 1996). Complainant’s mark is registered with many
other governmental trademark authorities, such as the European Union Office for
Harmonization in the Internal Market (“OHIM”) (Reg. No. 000097402 issued June
15, 1998) and the United States Patent and Trademark Office (“USPTO”) (Reg. No.
Respondent, issa mawba, registered
the <royalbos.org> domain name
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.
The Panel finds that registration of Complainant’s mark with
numerous governmental trademark authorities, including the UKIPO, the OHIM, and
the USPTO, establishes Complainant’s rights in the THE ROYAL BANK OF SCOTLAND mark
pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding
that the complainant’s federal trademark registrations for the CHEAPTICKETS and
CHEAPTICKETS.COM marks were adequate to establish its rights in the mark
pursuant to Policy ¶ 4(a)(i)); see also Metro.
Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum
Respondent’s <royalbos.org> domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The abbreviation
of Complainant’s mark (“bos” for “Bank of Scotland”) does not nullify the
confusingly similar nature of the disputed domain name. Respondent’s disputed domain name also omits
the article “THE” and adds the generic top-level domain (“gTLD”) “.org.” Neither of these superficial alterations of
Complainant’s mark differentiates Respondent’s disputed domain name from
Complainant’s mark. Therefore, Respondent’s
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <royalbos.org> domain name. Once Complainant makes a prima facie case in support of its allegations the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
As Respondent did not answer the Complaint, the Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). However, the Panel chooses to examine the record in consideration of the factors listed under Policy ¶ 4(c).
Respondent’s disputed domain name resolves to a website
holding itself out as being the website of The Royal Bank of
Respondent’s WHOIS registration is evidence that Respondent
is not commonly known by the <royalbos.org>
domain name, in that the registrant is listed as “issa mawba.” Without further evidence to the contrary, the
Panel finds that Respondent is not commonly known by the disputed domain name pursuant
to Policy ¶ 4(c)(ii).
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding
that the respondent was not commonly known by the disputed domain names where
the WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and is using the <royalbos.org>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Respondent is attempting to attract, for
commercial gain, Internet users seeking Complainant’s services. Internet users assuming that Respondent’s
website belongs to Complainant are given the chance to divulge confidential
information that may be used by Respondent.
Therefore, Respondent is taking advantage of the confusing similarity
between the disputed domain name and Complainant’s mark to lure Internet
consumers to a site in order to profit from the goodwill and long history
associated with Complainant’s mark. See G.D. Searle &
In addition, Respondent
has engaged in a fraudulent phishing scheme by registering and using the <royalbos.org>
domain name to divert Internet users to its own website that prominently
displays Complainant’s mark and has online forms requesting Internet users’
personal and financial information.
Respondent’s attempts to fraudulently acquire this information provides
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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); see also Juno Online Servs., Inc. v. Nelson, FA
241972 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied 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 <royalbos.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 14, 2009
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