national arbitration forum

 

DECISION

 

The Royal Bank of Scotland Group plc v. ann marchieson

Claim Number: FA0812001238118

 

PARTIES

Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by Eileen D. Pontaoe of Troutman Sanders LLP, North Carolina, USA.  Respondent is ann marchieson (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rbsonlinenet.com>, registered with Enom, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically December 11, 2008; the National Arbitration Forum received a hard copy of the Complaint December 12, 2008.

 

On December 16, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsonlinenet.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has 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 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 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@rbsonlinenet.com by e-mail.

 

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

 

On January 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.      The domain name that Respondent registered, <rbsonlinenet.com>, is confusingly similar to Complainant’s RBS mark.

 

2.      Respondent has no rights to or legitimate interests in the <rbsonlinenet.com> domain name.

 

3.      Respondent registered and used the <rbsonlinenet.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, provides a variety of banking and financial products and services to its customers under its RBS mark.  Complainant has registered its RBS mark with multiple governmental trademark authorities including: the United Kingdom Intellectual Property Office (“UKIPO”) November 23, 1994 (Reg. No. 2,004,617); the European Union Office for Harmonization in the Internal Market (“OHIM”) March 23, 1998 (Reg. No. 97,469); and the United States Patent and Trademark Office December 19, 2006 (Reg. No. 3,185,538). 

 

Respondent registered the <rbsonlinenet.com> domain name November 2, 2008.  Respondent uses the disputed domain name to operate a website that mimics Complainant’s primary website and seeks to obtain confidential information from Internet users. 

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant provided evidence of the registration of its RBS mark with the UKIPO, the OHIM, and the USPTO.  The Panel finds each of these registrations sufficiently establishes Complainant’s rights in its RBS mark pursuant to Policy ¶ 4(a)(i).  See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).

 

Complainant asserts that Respondent’s <rbsonlinenet.com> domain name is confusingly similar to Complainant’s RBS mark because it copies Complainant’s mark in its entirety and merely adds the generic terms “online” and “net,” as well as the generic top-level domain “.com.”  The Panel finds these alterations do not detract from the dominant portion of the <rbsonlinenet.com> domain name, which is Complainant’s RBS mark.  Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to the complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent does not possess rights to or legitimate interests in the disputed domain name.  Initially, the burden of proof lies with Complainant to establish a prima facie case that Respondent lacks such rights and legitimate interests in the disputed domain name.  Once Complainant makes a prima facie case, the burden then shifts to Respondent to prove otherwise.  The Panel finds that Complainant established a prima facie case under Policy ¶ 4(a)(ii).  Respondent failed to file a Response in these proceedings and thus the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name.  The Panel, however, will examine the record to determine if the record suggests that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Respondent’s <rbsonlinenet.com> domain name resolves to a website imitating Complainant’s primary website in its appearance and that it uses Complainant’s logos and color schemes.  The Panel finds this is an attempt by Respondent to pass itself off as Complainant, which is not 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).

 

Respondent is using the website resolving from its <rbsonlinenet.com> domain name to pass itself off as Complainant and collect confidential information from Internet users by encouraging users to enter such information in provided fields.  The Panel finds Respondent is attempting to “phish” for Internet users; confidential information, which is not 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 the 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 HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).

 

Complainant maintains also that Respondent is not commonly known by the <rbsonlinenet.com> domain name, and that Complainant has never authorized Respondent to use its RBS mark in any manner.  The Panel finds that based on the WHOIS information, which lists Respondent as “ann marchieson,” and the other information in the record, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Braun 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent presumably profits from its use of the confusingly similar disputed domain name containing Complainant’s protected mark.  The Panel finds that Respondent’s attempt to profit by misleading Internet users as to Complainant’s affiliation with the disputed domain name and corresponding website is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

Furthermore, Respondent is using the disputed domain name in an attempt to “pass itself off” as Complainant and “phish” for Internet users’ confidential information.  The Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See 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); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).

 

The Panel finds that Complainant satisfied the elements of ICANN 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 <rbsonlinenet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: January 26, 2008.

 

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