national arbitration forum

 

DECISION

 

Citizens Financial Group, Inc. and The Royal Bank of Scotland Group plc v. Bips Real Estate

Claim Number: FA0811001235769

 

PARTIES

Complainant is Citizens Financial Group, Inc. and The Royal Bank of Scotland Group plc (collectively “Complainant”), represented by James A. Thomas, North Carolina, USA.  Respondent is Bips Real Estate (“Respondent”), New Jersey.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cfg-rbs.com>, registered with Godaddy.com, Inc.

 

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.

 

James A. Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 26, 2008.

 

On November 26, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cfg-rbs.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 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 postmaster@cfg-rbs.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary as Panelist.

 

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:

 

1.      Respondent’s <cfg-rbs.com> domain name is confusingly similar to Complainant’s CITIZENS FINANCIAL GROUP, INC. and RBS marks.

 

2.      Respondent does not have any rights or legitimate interests in the <cfg-rbs.com> domain name.

 

3.      Respondent registered and used the <cfg-rbs.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The Royal Bank of Scotland Group plc, was founded in 1727 and holds several trademark registrations in the RBS mark, including registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617 issued January 6, 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 December 12, 2006) in relation to its banking services.  Complainant, Citizens Financial Group, Inc., a wholly-owned subsidiary of The Royal Bank of Scotland Group plc, was founded in 1828 and is one of the ten largest commercial banks in the United States.  It has used the CITIZENS FINANCIAL GROUP, INC. mark since at least 1985 when it formed a holding company for Citizens Savings Bank and Citizens Trust Company under the “Citizens Financial Group, Inc.” name.

 

Respondent, Bips Real Estate, registered the <cfg-rbs.com> domain name on October 5, 2008.  As of November 7, 2008, the disputed domain name was being used to redirect Internet users to Complainant’s website.  Currently, the disputed domain name resolves to a website with links to third-party websites that directly compete with Complainant.

 

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 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.

 

Identical and/or Confusingly Similar

 

Under the Policy, Complainant must first establish that it has rights in the mark pursuant to Policy ¶ 4(a)(i).  Complainant’s multiple trademark registrations with the UKIPO, OHIM, and USPTO establish its rights in the RBS mark pursuant to Policy ¶ 4(a)(i).  See Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (“Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (‘USPTO’).”); see also Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).

 

However, trademark registration is not necessary to establish rights in the CITIZENS FINANCIAL GROUP, INC. mark pursuant to Policy ¶ 4(a)(i) provided that Complainant can show its common law rights through secondary meaning.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

 

Complainant has used the CITIZENS FINANCIAL GROUP, INC. mark since at least 1985, when it created a holding company by that name.  The CITIZENS FINANCIAL GROUP, INC. mark is used in connection with more than 1,600 branches, more than 3,500 ATMs and more than 24,000 employees.  Articles have been written about Complainant, using the CITIZENS FINANCIAL GROUP, INC. mark, in the Pittsburgh Business Times, Boston Business Journal, and Philadelphia Business Journal.  The Panel finds that Complainant has established common law rights in the CITIZENS FINANCIAL GROUP, INC. mark pursuant to Policy ¶ 4(a)(i).  See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).

 

Having established that Complainant has rights in the CITIZENS FINANCIAL GROUP, INC. and RBS marks, the Panel will next consider whether the <cfg-rbs.com> domain name is identical or confusingly similar to the marks pursuant to Policy ¶ 4(a)(i).  The disputed domain name is composed of an acronym of the CITIZENS FINANCIAL GROUP, INC. mark, “cfg,” and the RBS mark in its entirety, separated by a hyphen and followed by the generic top-level domain (gTLD) “.com.”  The inclusion of a gTLD is necessary for all domain names and is therefore irrelevant in a Policy ¶ 4(a)(i) analysis.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).  The abbreviation of the CITIZENS FINANCIAL GROUP, INC. mark in the acronym “cfg” results in the domain name being confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).  The addition of a hyphen and the RBS mark in its entirety does not dispel this confusing similarity.  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).  Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.  If the Panel finds that Complainant has established such a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”).  The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the <cfg-rbs.com> domain name pursuant to Policy ¶ 4(a)(ii).  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <cfg-rbs.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the CITIZENS FINANCIAL GROUP, INC. or RBS marks, and the WHOIS information identifies Respondent as “Bips Real Estate.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

As of November 7, 2008, Respondent was using the disputed domain name to redirect Internet users to Complainant’s website.  The Panel infers that Respondent received click-through fees for redirecting Internet users to Complainant’s website.  Respondent’s use of the <cfg-rbs.com> domain name to redirect Internet users to Complainant’s official website is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy  ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>).

 

Respondent is currently using the <cfg-rbs.com> domain name to promote third-party businesses, some of which directly compete with Complainant.  This is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).  See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s use of Complainant’s CITIZENS FINANCIAL GROUP, INC. and RBS marks in the <cfg-rbs.com> domain name to advertise for Complainant’s competitors suggests that Respondent registered the disputed domain name intending to disrupt Complainant’s business.  The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

The Panel infers that Respondent receives click-through fees for diverting Internet users to Complainant’s competitors.  Because Respondent’s domain name is confusingly similar to Complainant’s CITIZENS FINANCIAL GROUP, INC. and RBS marks, Internet users accessing Respondent’s disputed domain name may come to the conclusion that Complainant endorses the resulting website.  Respondent is attempting to profit from this misconception.  Thus, Respondent’s use of the <cfg-rbs.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <cfg-rbs.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

James A Crary, Panelist

Dated:  January 6, 2009

 

 

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