The Royal Bank of Scotland Group plc v. Rose Tapia
Claim Number: FA0908001278546
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 <intlrbs.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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 August
14, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 3, 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@intlrbs.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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <intlrbs.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <intlrbs.com> domain name.
3. Respondent registered and used the <intlrbs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers banking and related financial services. Complainant offers these services under the RBS mark, which Complainant has registered with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617, issued January 5, 1996), the European Union Office for 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). Complainant was founded in 1727, and now has offices on six continents and has more than 140,000 employees.
Respondent registered the <intlrbs.com>
domain name 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 registered with the United Kingdom Intellectual
Property Office (“UKIPO”) (Reg. No. 2,004,617, issued January 5, 1996), the
European Union Office for 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
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i) based on its registrations of the RBS mark with the UKIPO, the OHIM,
and the USPTO. See Royal Bank of Scot. Group plc, Direct Line Ins. plc, &
Privilege Ins. Co. Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat.
Arb. Forum
Complainant alleges that Respondent’s <intlrbs.com> domain name is
confusingly similar to Complainant’s RBS mark.
The <intlrbs.com> domain
name differs from Complainant’s mark only in that the generic term “intl,”
which is a shortened form of the generic term “international,” and the generic
top-level domain (“gTLD”) “.com” have been added to the mark. The Panel finds that these changes do not
sufficiently distinguish Respondent’s <intlrbs.com>
domain name from Complainant’s mark. See Am.
Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and
legitimate interests in the <intlrbs.com>
domain name. For the purposes of a
Policy ¶ 4(a)(ii) analysis, Complainant must first make a prima facie case
in support of its allegations, and then the burden shifts to Respondent to show
that it does have rights or legitimate interests pursuant to Policy ¶
4(c). The Panel finds that Complainant
has presented a sufficient prima facie
case. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Complainant contends that Respondent is not commonly known by the <intlrbs.com> domain name nor has it ever been the owner or licensee of the RBS mark. According to the WHOIS information, Respondent registered the disputed domain name under the name “Rose Tapia.” Moreover, there is no evidence in the record to suggest Respondent has ever been commonly known by the RBS mark. Thus, the Panel finds 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 the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant contends that Respondent’s use of the disputed domain name to send e-mails soliciting confidential personal information does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The Panel agrees and finds that this activity, known as “phishing” for confidential personal information, does 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). 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. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is intentionally
attempting to use the <intlrbs.com> domain
name for financial gain by creating a likelihood of confusion with
Complainant’s RBS mark. The disputed
domain name is being used to send e-mails that solicit the confidential
personal information of Internet users, as part of a “phishing” scheme. The Panel presumes that Respondent is
profiting from such use, and therefore, the Panel finds that Respondent has
engaged in bad faith registration and use of the disputed domain name under
Policy ¶ 4(b)(iv). See Wells Fargo & Co. v.
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <intlrbs.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 24, 2009
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