The Royal Bank of Scotland Group plc, Citizens Financial Group Inc. and Direct Line Insurance plc v. H.W. Barnes
Claim Number: FA0904001259783
Complainant is The Royal Bank of
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <rbsmastercard.com>, <citizensbankautofinance.com> and <directlinelifeinsurance.com>, registered with Moniker Online Services, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 26, 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@rbsmastercard.com, postmaster@citizensbankautofinance.com, and postmaster@directlinelifeinsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rbsmastercard.com> domain name is confusingly similar to Complainant’s RBS mark. Respondent’s <citizensbankautofinance.com> domain name is confusingly similar to Complainant’s CITIZENS BANK mark. Respondent’s <directlinelifeinsurance.com> domain name is confusingly similar to Complainant’s DIRECT LINE mark.
2. Respondent does not have any rights or legitimate interests in the <rbsmastercard.com>, <citizensbankautofinance.com> and <directlinelifeinsurance.com> domain names.
3. Respondent registered and used the <rbsmastercard.com>, <citizensbankautofinance.com> and <directlinelifeinsurance.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, is comprised of Citizens Financial Group, Inc.
and Direct Line Insurance plc, which are both owned by The Royal Bank of
Scotland Group, plc. These entities will
be referred to collectively as Complainant.
Complainant uses its RBS, CITIZENS BANK and DIRECT
Respondent’s disputed domain names resolve to websites that display
commercial links to third-party websites offering goods and services, some of
which compete with Complainant’s businesses.
Respondent registered the <rbsmastercard.com>, <citizensbankautofinance.com>
and <directlinelifeinsurance.com> domain names on
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.
Complainant has provided evidence of the registration of its
RBS, CITZENS BANK and DIRECT LINE marks with multiple governmental
organizations including the UKIPO and/or the USPTO. The Panel finds these registrations
sufficiently establish Complainant’s rights in its marks under Policy ¶ 4(a)(i). See 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).”); see also Expedia, Inc.
v. Tan, FA 991075 (Nat. Arb. Forum
Complainant contends Respondent’s <rbsmastercard.com> domain name contains the RBS mark with the addition of
the term “mastercard,” which is descriptive of Complainant’s services because
Complainant is authorized to issue financial services using the third-party
MASTERCARD mark. Furthermore,
Respondent’s <citizensbankautofinance.com> domain name contains
the CITIZENS BANK mark in its entirety, with the deletion of the space between
the terms, the addition of the descriptive phrase “auto finance,” and the
addition of the generic top-level domain “.com.” Additionally, Respondent’s <directlinelifeinsurance.com>
domain name contains the DIRECT LINE mark with the addition of the descriptive
term “life insurance,” and the addition of the generic top-level domain name
“.com.” The Panel finds the addition of
generic top-level domains; the deletion of spaces; and/or the addition of
descriptive terms are all insufficient to avoid a finding of confusing
similarity. Therefore the Panel finds
that the <rbsmastercard.com> is confusingly similar to
Complainant’s RBS mark; Respondent’s <citizensbankautofinance.com>
domain name is confusingly similar to Complainant’s CITIZENS BANK mark; and
Respondent’s <directlinelifeinsurance.com> domain name is
confusingly similar to Complainant’s DIRECT LINE mark under Policy ¶ 4(a)(i). See Bond
& Co. Jewelers, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain names. Complainant is required to produce a prima facie case in support of its
allegations and then the burden shifts to Respondent to prove it possesses
rights or legitimate interests in the disputed domain names. The Panel finds Complainant has adequately
established a prima facie case. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume Respondent does not possess rights or
legitimate interests in the disputed domain names. The Panel, however, will examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Complainant asserts Respondent is using the disputed domain names to display commercial click-through links to third-party websites offering competing products for sale. The Panel finds Respondent’s use of the disputed domain names is not a bona fide offering of goods under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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 also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).
Furthermore, Complainant contends Respondent is not commonly
known by the disputed domain names. The
WHOIS information lists Respondent as “H.W.
Barnes.” The record provides no evidence supporting the conclusion that
Respondent is or ever has been commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not
commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends Respondent is using the disputed domain names to disrupt Complainant’s business through the operation of websites that displays links to Complainant’s competitors. The Panel finds Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also 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)).
Furthermore, Complainant contends Respondent has engaged in
its use of the confusingly similar disputed domain names presumably with the
intent to profit from the receipt of referral fees through its creation of a
likelihood of confusion as to Complainant’s affiliation with the disputed
domain names. The Panel presumes Respondent is receiving referral fees for its
use of the confusingly similar disputed domain names. Therefore, the Panel
finds Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See
The Panel finds Policy ¶
4(a)(iii) has been satisfied.
ADDITIONAL SUBMISSION
The Complainant has submitted a timely Additional
Submission that it had received correspondence from the Respondent that he
would like to settle the matter by transferring the Domain name to the
Complainant. However, the Complainant is
“hesitant to simply accept a transfer from the Respondent, who has and
continues to register infringing domain names…” and has failed to indicate that
it will not do so again. The “consent-to-transfer” approach is but one way
for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v.
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy. In addition the aforesaid correspondence has not been interposed in accordance with ICANN Rule #5, and although considered, the request is denied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbsmastercard.com>, <citizensbankautofinance.com> and <directlinelifeinsurance.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
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