The Royal Bank of Scotland Group plc v. RBS and Associates
Claim Number: FA0812001238853
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by Eileen
DD. Pontaoe, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbsandassociates.com>, registered with Godaddy.com, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 17, 2008.
On December 16, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsandassociates.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 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2009 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@rbsandassociates.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 Louis E. Condon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rbsandassociates.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsandassociates.com> domain name.
3. Respondent registered and used the <rbsandassociates.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, is a financial services provider. Complainant operates its banking, insurance, and brokerage services under the RBS mark, which has been registered with multiple governmental authorities including: (1) the United Kingdom Intellectual Property Office (“UKIPO”) registered on January 5, 1996 (Reg. No. 2,004,617); (2) the European Union’s Office for Harmonization in the Internal Market (“OHIM”) registered on March 23, 1998 (Reg. No. 97,469); and (3) the United States Patent and Trademark Office (“USPTO”) registered on December 19, 2006 (Reg. No. 3,185,538). Complainant also owns and operates numerous domain names in conjunction with its Internet operations, including the <rbs.com> domain name.
Respondent registered the disputed <rbsandassociates.com> domain name on August 15, 2008. The disputed domain name resolves to a click-through website that routes Internet users to Complainant’s competitors.
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 Complainant’s registrations of the RBS
mark with various governmental trademark authorities establish Complainant’s
rights in the mark under 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 Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s
disputed <rbsandassociates.com>
domain name differs from Complainant’s RBS mark in the following ways: (1) the
generic top-level domain “.com” has been added; and (2) the generic terms “and”
and “associates” have been added. The
Panel notes that the addition of a top-level domain is irrelevant; while the
addition of the generic phrase “and associates” creates no meaningful
distinction between Complainant’s mark and the disputed domain name. The Panel considers such added words to
heighten the degree of confusing similarity, as it may raise the question amongst
Internet users that Respondent is affiliated with Complainant in some
form. Therefore, the Panel finds that
the disputed domain name is confusingly similar to Complainant’s mark under
Policy ¶ 4(a)(i).
See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001)
(finding that the respondent’s domain names were confusingly similar to
Complainant’s GOOGLE mark where the respondent merely added common terms such as
“buy” or “gear” to the end); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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 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.”).
Though the WHOIS information lists Respondent as “RBS and
Associates,” there is no evidence before the Panel corroborating this
identity. Moreover, Complainant alleges
that Respondent lacks the authority to use Complainant’s mark. Therefore, the
Panel finds that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA
964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent
listed itself as “AIM Profiles” in the WHOIS contact information, there was no
other evidence in the record to suggest that the respondent was actually
commonly known by that domain name); see
also City News & Video v.
Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although
Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is
no evidence before the Panel to indicate that Respondent is, in fact, commonly
known by the disputed domain name <citynewsandvideo.com> pursuant to
Policy ¶ 4(c)(ii).”).
Respondent’s disputed domain name
resolves to a website that displays links and advertisements for Complainant’s
direct competitors. Complainant alleges,
and the Panel so infers, that Respondent receives commercial benefit through
the receipt of referral fees for the advertisements listed. The Panel finds that Respondent has not
created a bona fide offering of goods
or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit
Group, LLC v. LSO, Ltd., FA
758981 (Nat. Arb. Forum
Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE
LOUNGE mark to redirect Internet users to respondent’s own website for
commercial gain 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 also ALPITOUR S.p.A. v. balata inc, FA
888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly
similar <viaggidea.com> domain
name to operate a website that
features links to various commercial websites from which Respondent presumably
receives referral fees….is neither a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair
use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain name to host a website with advertisements for third-parties in direct competition with Complainant constitutes disruption of Complainant’s business, which therefore demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See 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)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The Panel also finds that Respondent has intentionally attempted to attract Internet users for commercial gain via its use of the confusingly similar disputed domain name and corresponding website, which features click-through advertisements. The Panel also finds that this constitutes bad faith registration and use on the part of Respondent under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <rbsandassociates.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 26, 2009
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