The Royal Bank of Scotland Group plc v. Alfred Mcson
Claim Number: FA0902001247047
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 <rbs-uk.info>, registered with GoDaddy.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 11, 2009.
On February 11, 2009, GoDaddy confirmed by e-mail to the National Arbitration Forum that the <rbs-uk.info> domain name is registered with GoDaddy and that Respondent is the current registrant of the name. GoDaddy has verified that Respondent is bound by the GoDaddy 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 February 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 4, 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@rbs-uk.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <rbs-uk.info> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbs-uk.info> domain name.
3. Respondent registered and used the <rbs-uk.info> 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 group that markets those services under the RBS mark, which Complainant registered with the United Kingdom Intellectual Property Office (“UKIPO”) on January 5, 1996 (Reg. No. 2,004,617). Complainant was founded in 1727, and now has offices in numerous countries on four continents and is ranked among the top ten banks in the world.
Respondent registered the <rbs-uk.info> domain name on June 2, 2008. The disputed domain name resolves to a website
that purports to be Complainant’s own website and solicits the confidential
personal information of Internet visitors.
The disputed domain name is also being used in unsolicited e-mail
messages that direct e-mail recipients to the website resolving from the
disputed 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 Complainant has established rights in
the RBS mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the UKIPO.
See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); 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).”).
Complainant contends that
Respondent’s <rbs-uk.info> domain
name is confusingly similar to its RBS mark.
The <rbs-uk.info> domain
name differs from Complainant’s mark in three ways: (1) a hyphen has been added
to the end of the mark; (2) the geographic term “uk” has been added to the end
of the mark; and (3) the generic top-level domain (“gTLD”) “.info” has been
added. The Panel finds that neither the
addition of a hyphen nor the addition of a geographic term sufficiently
distinguish a domain name from an incorporated mark for the purposes of Policy
¶ 4(a)(i). See Gen. Elec. Co. v. Bakhit, D2000-0386
(WIPO June 22, 2000) (finding that placing a hyphen in domain name between
“General” and “Electric” is confusingly similar to the complainant’s mark); see also Expedia, Inc. v. Mandanice, FA 146598 (Nat. Arb. Forum Apr. 7, 2003)
(finding that the <expedia-uk.com> domain name was confusingly similar to
the complainant’s EXPEDIA mark). The Panel also finds that the addition of a gTLD does not
reduce the likelihood of confusion between the domain name and the mark because
every domain name must contain a gTLD. See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <rbs-uk.info> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See 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 Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”).
Complainant contends that Respondent is not commonly known
by the <rbs-uk.info> domain
name nor has it ever been the owner or licensee of the RBS
mark. The WHOIS record for the disputed
domain name lists Respondent as “Alfred Mcson.”
Because Respondent is not identified as any variant on the RBS mark and
has failed to show any evidence contrary to Complainant’s contentions, the
Panel finds that Respondent is not commonly known by the <rbs-uk.info> domain name
pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
The <rbs-uk.info> domain name resolves to a
website that fraudulently purports to be Complainant’s official website,
pretending to offer the same financial services as Complainant. The Panel finds Respondent’s attempt to pass itself
off as Complainant to be part of an elaborate phishing scheme. A phishing scheme is a practice “intended to
defraud consumers into revealing personal and proprietary information.” Capital One Fin. Corp. v.
Howel, FA 289304 (Nat. Arb.
Forum Aug. 11, 2004). The Panel presumes
that Respondent is attempting to extract this personal information from
unsuspecting consumers in order to defraud Internet users and Complainant. The Panel considers this use to constitute
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 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 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 Juno Online Servs.,
Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that
using a domain name to redirect “Internet users to a website that imitates
Complainant’s billing website, and is used to fraudulently acquire personal
information from Complainant’s clients,” is neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant also contends that Respondent is intentionally
disrupting Complainant’s business by diverting confused customers to Respondent’s
website. The Panel finds that
Respondent’s use of the disputed domain name disrupts Complainant’s business,
and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Moreover, the passing off scheme Respondent engaged in for commercial gain is sufficient on its own under Policy ¶ 4(b)(iv) to establish bad faith registration and use of the <rbs-uk.info> domain name, as Respondent created a likelihood of confusion as to Complainant’s source of the disputed domain name. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use.”).
Additionally, Respondent’s fraudulent use of the disputed
domain name is part of a phishing scheme.
The Panel may presume that Respondent did or attempted to financially
benefit from the personal financial information Respondent obtained through
this scheme. Consequently, this is
further evidence of Respondent’s bad faith registration and use of the <rbs-uk.info>
domain name pursuant to Policy ¶ 4(a)(iii). See Wells Fargo &
Co. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbs-uk.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 25, 2009
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