The Royal Bank of Scotland Group plc v. Kenneth McMillan
Claim Number: FA1003001314030
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR
The domain name at issue is <rbs-uk-online.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
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" through submission of a Written Notice, as defined in Rule 1. 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-online.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbs-uk-online.com> domain name.
3. Respondent registered and used the <rbs-uk-online.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, has registered its RBS mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2004617 issued January 5, 1996), the European Union 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). Complainant has used the mark in connection with financial and banking services. Complainant operates numerous domain names related to its marks including but not limited to the <rbs.com>, <rbsuk.net>, and <rbsbank.com> domain names.
Respondent, Kenneth McMillan,
registered the disputed 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 has registered its RBS mark with the UKIPO (Reg.
No. 2004617 issued January 5, 1996), the OHIM (Reg. No. 97,469 issued March 23,
1998) and the USPTO (Reg. No. 3,185,538 issued
Complainant claims Respondent’s <rbs-uk-online.com> domain name is confusingly similar to
Complainant’s RBS mark. The disputed domain name incorporates the entirety of
Complainant’s mark, adds hyphens, the geographic abbreviation “
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie case showing Respondent lacks rights or legitimate interests in the <rbs-uk-online.com> domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. Nevertheless, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”).
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information does not indicate that Respondent is commonly known by the <rbs-uk-online.com> domain name, and Respondent has not offered any affirmative evidence to suggest otherwise. Further, Complainant asserts no license or other authorization has been given to Respondent to use the RBS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also 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).
Respondent’s disputed domain name resolves to a website that asks Internet users seeking Complainant’s banking website for their banking account and access information. The Panel finds that “phishing” for 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 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 the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Further, Respondent’s <rbs-uk-online.com> domain name
resolves to a website that closely resembles
Complainant’s website and displays duplications of Complainant’s RBS mark. The
Panel finds that Respondent is attempting to pass itself off as Complainant by
imitating Complainat’s website, which does not create Respondent’s rights or legitimate interests in
the disputed domain name under Policy ¶ 4(a)(ii).
See Kmart of
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant asserts that Respondent is using the confusingly
similar disputed domain name in order to intentionally attract Internet users
to its website to “phish” for users’ personal information by creating a strong
likelihood of confusion with Complainant’s RBS mark. Thus, the Panel finds
Respondent’s use of the disputed domain name is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See Wells Fargo & Co. v.
Complainant further contends that Respondent is using the <rbs-uk-online.com> domain name to
pass itself off as Complainant by using an imitation of Complainant’s official
website on Respondent’s commercial website. Respondent’s disputed domain name
resolves to a website that closely resembles
Complainant’s website and displays duplications of Complainant’s RBS mark. The
Panel finds Respondent’s attempt to pass itself off as Complainant constitutes
bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb.
Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain
name was registered, Respondent arranged for it to resolve to a web site
closely resembling a legitimate site of Complainant, called a ‘doppelganger’
(for double or duplicate) page, the purpose of which is to deceive
Complainant’s customers into providing to Respondent their login identification,
social security numbers, and/or account information and Personal Identification
Numbers…. The Panel finds that
Respondent’s behavior, as alleged, constitutes bad faith registration and use
of the subject domain name pursuant to Policy ¶ 4(a)(iii).”); 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 pursuant to Policy ¶ 4(a)(iii).”); American 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
The Panel finds 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-online.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 23, 2010
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