The Royal Bank of Scotland Group plc v. John Doe as holder of the domain name
Claim Number: FA0901001243181
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 <rbos-uk.com>, registered with Domainpeople, Inc.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 19, 2009.
On January 19, 2009, Domainpeople, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbos-uk.com> domain name is registered with Domainpeople, Inc. and that Respondent is the current registrant of the name. Domainpeople, Inc. has verified that Respondent is bound by the Domainpeople, 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 January 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 11, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on February 10, 2009.
On February, 17, 2008, an Additional Submission was submitted by the Complainant to the Center. The Additional Submission complies with Supplemental Rule 7.
On February 13, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that:
· It is one of the world’s leading financial services groups.
· It holds numerous trademark registrations for its “RBS” mark, including in the United Kingdom Intellectual Property Office (“UKIPO”) since 1996, the EU Office for Harmonization in the Internal Market (“OHIM”) since 1998 and the United States Patent and Trademark Office (“USPTO”) since 2006.
· An important part of RBS’s business today is its online banking business and services.
The disputed domain name is confusingly similar
to Complainant’s Mark because it fully incorporates Complainant’s “RBS” mark
and merely adds to it the letter “o”, a hyphen, a geographic indicator “
· Additionally, Respondent’s Domain Name fully incorporates Complainant’s Mark with a slight variation in spelling – with the intended result of an acronym recognized as being associated with the Complainant
· Respondent has no rights or legitimate interests in respect of the Domain Name that is the subject of this Complaint.
· Respondent has never used the Domain Name in connection with a bona fide offering of goods or services nor made a legitimate non-commercial or fair use of the Domain Name, as it was using the Domain Name to resolve to a website that intentionally imitated Complainant’s genuine website in virtually all respects, including imitations of Complainant’s marks and logos, in an obvious effort to mislead users into believing that they were in fact at Complainant’s website.
· There is no evidence that Respondent has ever been commonly known by the Domain Name.
· The disputed domain name had been registered and used in bad faith, as the Complainant’s “RBS” mark is a registered trademark and well-known around the world. Respondent is thus deemed to have actual or constructive knowledge of this mark and the Respondent was using the Domain Name to operate a fraudulent imitation of Complainant’s legitimate website.
· denies that he registered the disputed domain name in November 2008.
· alleges that his credit card number had been stolen in November 2008 and that it was used for fraudulent activities including the registration of the disputed domain name.
· requests that for the said reason the remedy invoked by the Complainant is denied.
C. Additional Submissions
By Additional Submission, the Complainant replies that:
· the Respondent has not presented any evidence to rebut the Complainant’s assertion as to the confusing similarity of the disputed domain name with the Complainant’s trademark and in connection to the nonexistence of any rights and legitimate interests of the Respondent in connection to the disputed domain name
· on the WHOIS registration details for the Domain Name, Respondent is the registered owner, and that Respondent’s address is the address given, which makes, Respondent the proper Respondent, for the purposes of this proceeding
· Respondent’s claims regarding the theft of its credit card are not sufficient to overcome the case proved by Complainant that the Domain Name was registered and is being used in bad faith.
· The issue of Respondent’s purported identity theft is irrelevant as a basis for denying Complainant’s requested relief, the transfer of the Domain Name.
The Panel finds that the Respondent in these proceedings used a fake identity to register the disputed domain name, which is a further element of bad faith to be considered in the connection with the bad faith in performing activities and actions under the disputed domain name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Preliminary Issue: Redaction of Respondent’s Identity
Respondent contends that he has been the victim of identity theft. Respondent alleges that his credit card number was stolen in November 2008, and that one of the fraudulent charges made using the card was to the registrar, DomainPeople, Inc. Respondent contends he had no knowledge of this until after the fact. Respondent provides evidences for its allegations: a letter of fraud investigation as well as his November 2008 bank statement as supporting evidence of his contentions.
The Panel does not find any reason to not consider the allegations of the Respondent.
On the other hand the Respondent requests that the Panel denies the remedy which the Complainant seeks. The Panel cannot agree with such request. Even though the Respondent’s identity is in discussion, the disputed domain name is still registered and in use by a Respondent (with probably other personal data) which under a fake identity is taking advantage of the Complainant’s trademark.
In this sense, the Panel shall consider the contentions of the Complainant under the Policy against the Respondent as listed in the Administrative contacts of the Registrar.
In order to protect the Respondent
and to prevent his further victimization, the Panel chooses to redact
Respondent’s personal information from the decision. In Wells
The redaction does not have the purpose to protect the real holder of the disputed domain name, which for the purposes of these proceedings shall be the Respondent who is using probably false information data.
Complainant asserts rights to the RBS mark by virtue of its corresponding trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617 issued January 5, 1996), Office of 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 19, 2006).
The Panel considers that these trademark registrations adequately confer rights in the RBS mark to Complainant pursuant to Policy ¶ 4(a)(i). See DatingDirect.com Ltd. v. Tabish Umar Siddiqui, FA 1139945 (Nat. Arb. Forum Mar. 11, 2008) (“Complainant asserts rights in its DATING DIRECT mark by virtue of its Trademark Registration with the United Kingdom Intellectual Property Office (“UKIPO”) .… see also Seiko Epson Corp. & Epson Am., Inc. v. AOS Web Com, Inc., FA 823033 (Nat. Arb. Forum Nov. 27, 2006) (“Seiko Epson has long established rights in the distinctive mark EPSON through use and through numerous United States and other trademark and service mark registrations.”).
Respondent’s <rbos-uk.com> domain name contains the
RBS mark with an added “o,” as well as a hyphen followed by the letters “
The Panel agrees with the Complainant that adding a
single letter to a complainant’s mark—in this case “o” to RBS and also adding
the hyphen and the letters “
Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s RBS mark pursuant to Policy ¶ 4(a)(i).
Complainant contends and the Panel agrees that Respondent is probably not commonly known by the <rbos-uk.com> domain name. Using false identity data as contact information in the disputed domain name registration can be considered a strong indication in this direction. The identity theft of the Respondent may be considered further evidences in this sense. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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 <rbos-uk.com> domain name previously
resolved to a website that allegedly imitated Complainant’s official banking
website and displayed Complainant’s business name, mark, and logo. Complainant further contends that Internet
users were encouraged to submit their personal identification and banking
information, thus giving customers the illusion that they had reached
Complainant’s official website.
According to Complainant, Respondent was attempting to pass himself off
as Complainant and phish for its customers’ sensitive confidential
information. The Complainant submitted
evidence in this sense. Such use of the <rbos-uk.com>
domain name constitutes neither 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).
The <rbos-uk.com> domain name does not currently resolve to an active website. The Panel considers this to be further evidence that Respondent lacks rights and legitimate interests in the <rbos-uk.com> domain name pursuant to Policy ¶ 4(a)(ii). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely inactively held the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).
Following the findings above, the Panel decides that the Complainant has established the second element of the Policy.
Respondent alleges that his credit card number was stolen in November 2008 and the Panel accepted this defense. In this sense, the Panel decided to redact the Respondent’s personal information.
On the other side, the fact that the real Respondent’s personal information may be considered fake is an element for the Panel to be appreciated in the bad faith analysis under the Policy.
Under the Policy, the Panel cannot
ignore that the disputed domain name is still registered and in use by a
Respondent which probably under a fake identity has registered the disputed
domain name in order to take advantage of the Complainant’s trademark. Moreover
the confusing similarity of the disputed domain name with the Complainant’s
trademark together with the phishing activities alleged to take place under the
disputed domain name have persuaded the Panel about the bad faith in
registration of the disputed domain name. See Wells
Fargo & Co. v.
The Panel cannot imagine another situation than bad faith for which a Respondent would register a domain name under a fake identity in order to perform under this domain name activities by which it takes advantage of a third party trademark.
As the Respondent previously attempted to pass himself off as Complainant, the Panel considers that Respondent was attempting to create a likelihood of confusion as to the source of the <rbos-uk.com> domain name and its resolving website. Complainant contends that Respondent was attempting to profit from this likelihood of confusion and the Panel agrees to such contentions.
The Panel therefore concludes that Respondent registered and was using the <rbos-uk.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Finally, the Panel determines that Respondent’s current inactive use of the <rbos-uk.com> domain name demonstrates registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbos-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: February 27, 2009
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