The Royal Bank of Scotland Group plc v. saint last
Claim Number: FA0902001248996
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 <rbsuk-bank.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 24, 2009.
On February 23, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsuk-bank.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 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@rbsuk-bank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 25, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a worldwide leader in banking and financial services.
Complainant has a number of trademarks around the world for the RBS mark, including one with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617, issued January 5, 1996).
Complainant has not licensed or otherwise authorized Respondent to use the RBS mark or any variation thereof.
Respondent registered the <rbsuk-bank.com> domain name on January 10, 2009.
In an effort to divert Internet users seeking to do business with Complainant, the disputed domain resolves to a website that is a fraudulent copy of Complainant’s official website.
Complainant’s unsuspecting customers who arrived at this site and wanted to access their RBS account by clicking on the “Login” link were asked to provide their “Account No.” and “Access Pin.”
Respondent’s <rbsuk-bank.com> domain name is confusingly similar to Complainant’s RBS mark.
Respondent does not have any rights to or legitimate interests in the <rbsuk-bank.com> domain name.
Respondent registered and uses the <rbsuk-bank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Registration of Complainant’s mark with governmental trademark
authorities, including the UKIPO, establishes Complainant’s rights in the RBS
mark pursuant to Policy ¶ 4(a)(i). See Trip
Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(finding that a 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
Complainant alleges that Respondent’s <rbsuk-bank.com> domain name is confusingly similar to
Complainant’s RBS mark pursuant to Policy ¶ 4(a)(i). Respondent’s domain name contains
Complainant’s mark in its entirety, adds the generic term “bank,” adds the
geographic abbreviation “
The same is true with regard to a disputed domain name that contains a complainant’s entire registered mark and adds a geographic location descriptor. See Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding the <sunkistasia.com> domain name confusingly similar to a complainant’s SUNKIST mark); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between a complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names).
Finally, the additions of a hyphen and a gTLD are irrelevant in distinguishing a disputed domain name from a competing mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a competing mark); 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, Respondent’s disputed domain name is confusingly similar to Complainant’s RBS mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <rbsuk-bank.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or legitimate interests); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):
Complainant
must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and then the burden
shifts to Respondent to show it does have rights or legitimate interests.
From our review of the Complaint, we are satisfied that Complainant has established a prima facie case in support of its contentions. Respondent, for its part, has failed to respond to the allegations of the Complaint. Accordingly, we are free to conclude that Respondent has no rights or interests cognizable under the Policy. See 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.
However, we elect to examine the record to determine whether there is any basis for concluding that Respondent has rights or legitimate interests in the contested domain by reference to the factors outlined in Policy ¶ 4(c).
We begin by observing that there is no dispute as to Complainant’s allegations that Respondent’s domain name resolves to a website holding itself out as being the website of Complainant by using Complainant’s RBS mark, and that Complainant’s unsuspecting customers who arrived at this site wishing to access their account by clicking on the “Login” link were asked to provide their “Account No.” and “Access Pin”. Respondent is thus plainly attempting to pass itself off as Complainant in an apparent attempt to gain access to confidential information from confused Internet users, behavior which is defined as a “phishing” scheme. Using the disputed domain name fraudulently thus to obtain the personal information of consumers is 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 Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that a respondent’s use of the <allianzcorp.biz> domain name fraudulently to acquire the personal and financial information of Internet users seeking a 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 Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated a complainant’s credit application website and attempted fraudulently to acquire personal information from that complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
We also note that Respondent’s WHOIS registration offers evidence that Respondent is not commonly known by the <rbsuk-bank.com> domain name, in that the registrant is listed merely as “saint last.” Moreover, Respondent does not dispute Complainant’s allegation that Complainant has not licensed or otherwise authorized Respondent to use the RBS mark, or any variation thereof. We are therefore compelled to conclude that 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 a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as all other information in the record, gave no indication that a respondent was commonly known by the disputed domains, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by a disputed domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
On the record before us, there is no dispute Respondent
registered and is using the <rbsuk-bank.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). The similarity between Complainant’s
commercial website and the website to which the disputed domain name resolves
demonstrates that Respondent uses the disputed domain to attract, for
commercial gain, Internet users seeking Complainant’s services by passing
itself off as Complainant. In this way Respondent
is taking advantage of the confusing similarity between the disputed domain
name and Complainant’s mark to lure Internet consumers to a site in order to
profit from the goodwill associated with Complainant’s mark. See G.D. Searle &
Furthermore, Respondent
is engaging in a fraudulent “phishing” scheme by registering and using the <rbsuk-bank.com> domain name to divert Internet users to a
website that displays Complainant’s mark and other information in imitation of
Complainant’s own website in order to induce such Internet users to reveal
personal and financial information.
Respondent’s attempts fraudulently to acquire such information provides
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum
Aug. 11, 2004) (finding bad faith registration and use of a domain name where a
respondent used a domain to redirect Internet users to a website that imitated a
complainant’s website fraudulently to acquire personal information from that
complainant’s clients); see also Juno Online Servs., Inc. v. Nelson, FA
241972 (Nat. Arb. Forum Mar. 29, 2004): “The domain name
<billing-juno.com> was registered and used in bad faith by using the name
for fraudulent purposes.”
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <rbsuk-bank.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 8, 2009
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