The Royal Bank of Scotland Group plc v. Steve Acord
Claim Number: FA1103001378746
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA. Respondent is Steve Acord (“Respondent”), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rbsdrive.com>, registered with GO CANADA DOMAINS, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2011; the National Arbitration Forum received payment on March 21, 2011.
On March 18, 2011, GO CANADA DOMAINS, INC. confirmed by e-mail to the National Arbitration Forum that the <rbsdrive.com> domain name is registered with GO CANADA DOMAINS, INC. and that Respondent is the current registrant of the name. GO CANADA DOMAINS, INC. has verified that Respondent is bound by the GO CANADA DOMAINS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rbsdrive.com. Also on March 22, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <rbsdrive.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsdrive.com> domain name.
3. Respondent registered and used the <rbsdrive.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, provides financial services on six continents under its RBS mark. Complainant holds multiple trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2,004,617 issued January 5, 1996) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,185,538 issued October 14, 2004) for its RBS mark.
Respondent, Steve Acord, registered the <rbsdrive.com> domain name on June 22, 2010. Respondent’s disputed domain name resolves to a website containing hyperlinks to third-party providers of financial services.
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.
Policy ¶ 4(a)(i) requires a complainant to prove that a disputed “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” This Panel’s first step is to determine whether Complainant has established rights in its RBS mark. Complainant provides evidence of its trademark registrations with the UKIPO (e.g., Reg. No. 2,004,617 issued January 5, 1996) and USPTO (e.g., Reg. No. 3,185,538 issued October 14, 2004) for its RBS mark. In DatingDirect.com Ltd. v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004), the panel found that a trademark registration with the UKIPO was sufficient to establish rights in the mark. Similarly, in Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the complainant had established rights in its mark by registering the mark with the USPTO. Based on the findings in DatingDirect.com Ltd. and Intel Corp., this Panel concludes that Complainant has established rights in its RBS mark, satisfying the first part of Policy ¶ 4(a)(i).
As this Panel has concluded that Complainant holds rights in its RBS mark, the second portion of Policy ¶ 4(a)(i) requires the determination of whether the disputed domain name is identical or confusingly similar to the mark. Respondent’s <rbsdrive.com> domain name contains Complainant’s RBS mark in its entirety to which Respondent has added the generic term “drive” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. It has been well established by previous panels that the addition of a generic term and a gTLD do not alter the fact that a disputed domain name is confusingly similar to a complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Consequently, the Panel holds that Respondent’s <rbsdrive.com> domain name is confusingly similar to Complainant’s RBS mark for the purposes of Policy ¶ 4(a)(i).
Thus, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires a complainant to make a prima facie case that a respondent has “no rights or legitimate interests in respect of the domain name.” See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c), which provides three alternatives for a respondent to demonstrate rights and legitimate interests under Policy ¶ 4(a)(ii).
Under Policy ¶ 4(c)(ii), a complainant has failed to satisfy Policy ¶ 4(a)(ii) if the complainant fails to prove the respondent is not commonly known by the disputed domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels found that a respondent was not commonly known by the disputed domain name if the WHOIS information is not similar to the domain name and the respondent failed to present any supporting evidence. The WHOIS information identifies the registrant of the <rbsdrive.com> domain name as “Steve Acord,” which is not similar to the disputed domain name. Respondent has not provided any evidence, and the Panel fails to find any evidence in the record, that Respondent is commonly known by the disputed domain name. Consequently, the Panel concludes that Respondent is not commonly known by the <rbsdrive.com> domain name pursuant to Policy ¶ 4(c)(ii).
Under Policy ¶¶ 4(c)(i) and (iii), a complainant has also failed to satisfy Policy ¶ 4(a)(ii) if the complainant fails to prove that the respondent is not using the disputed “domain name in connection with a bona fide offering of goods or services” or is not “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” In this case, Respondent uses the <rbsdrive.com> domain name to resolve to a website featuring commercial links to third-party providers of financial services that compete with products of Complainant. The Panel determines that such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”).
As Complainant has demonstrated that Respondent has not satisfied the elements of Policy ¶ 4(c), the Panel determines Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii) requires a complainant to demonstrate that the respondent’s disputed “domain name has been registered and is being used in bad faith.” Policy ¶ 4(b) contains four, non-limiting circumstances that satisfy the bad faith standard of Policy ¶ 4(a)(iii).
The third such circumstance, Policy ¶ 4(b)(iii), instructs the Panel to find bad faith registration and use if the complainant has proven that respondent “registered the domain name primarily for the purpose of disrupting the business of a competitor.” In the case at hand, Respondent’s <rbsdrive.com> domain name resolves to a website hosting hyperlinks to Complainant’s competitors. Internet users interested in Complainant’s financial services may purchase similar financial services of Complainant’s competitors due to Respondent’s registration and use of the disputed domain name. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels found that a similar use of a disputed domain name constituted bad faith registration and use under Policy ¶ 4(b)(iii). Just as the panels did in Tesco Pers. Fin. Ltd. and St. Lawrence Univ., this Panel holds that Respondent registered and uses the <rbsdrive.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
A complainant may also satisfy Policy ¶ 4(a)(iii) by proving that a respondent has “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [its] web site or location” under Policy ¶ 4(b)(iv). As noted previously, Respondent’s <rbsdrive.com> domain name resolves to a website hosting competing hyperlinks. The Panel infers that Respondent receives click-through fees from these hyperlinks. Thus, Respondent likely receives a fee each time an Internet user clicks on one of the hyperlinks. By using a confusingly similar domain name, Respondent is attempting to profit by creating confusion as to Complainant’s affiliation with the disputed domain name, thus increasing Internet user traffic and the amount of hyperlinks clicks. Therefore, the Panel concludes that Respondent’s registration and use of the disputed domain name was, and is, in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
As Complainant has satisfied Policy ¶¶ 4(b)(iii) and (iv), the Panel finds Complainant has established 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 <rbsdrive.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 28, 2011
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