The Royal Bank of Scotland Group plc v. Vietnam Domain Privacy Services
Claim Number: FA1103001378748
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA. Respondent is Vietnam Domain Privacy Services (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rbslogin.com>, registered with APRIL SEA INFORMATION TECHNOLOGY CORPORATION.
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.
James A. Carmody, Esq., 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 24, 2011, APRIL SEA INFORMATION TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <rbslogin.com> domain name is registered with APRIL SEA INFORMATION TECHNOLOGY CORPORATION and that Respondent is the current registrant of the name. APRIL SEA INFORMATION TECHNOLOGY CORPORATION has verified that Respondent is bound by the APRIL SEA INFORMATION TECHNOLOGY CORPORATION 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 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 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@rbslogin.com. Also on March 25, 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 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <rbslogin.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbslogin.com> domain name.
3. Respondent registered and used the <rbslogin.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, is a worldwide provider of financial services. Complainant owns the RBS mark and uses the mark in promoting and providing banking, financial planning, insurance, and brokerage services. Complainant holds a number of trademark registrations around the world including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,185,538 issued December 19, 2006).
Respondent, Vietnam Domain Privacy Services, registered the <rbslogin.com> domain name on July 28, 2010. The disputed domain name resolves to a directory website with third-party links to financial products and services in direct competition with Complainant’s business.
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 asserts that it has established rights in the RBS mark. In Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), the panel found that complainant established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the USPTO. See also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel determines that it is not necessary for Complainant to register its mark within the country where Respondent is located or operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Here, Complainant holds a trademark registration for its RBS mark with the USPTO (Reg. No. 3,185,538 issued December 19, 2006). Therefore, the Panel finds that Complainant has demonstrated its rights in the RBS mark, under Policy ¶ 4(a)(i), through its registration with a trademark authority.
Complainant maintains that Respondent’s <rbslogin.com> domain name is confusingly similar to its RBS mark. The disputed domain name uses the RBS mark in its entirety and only differentiates from the mark by adding the generic term “login,” and the generic top-level domain (“gTLD”) “.com.” The Panel determines that the addition of a generic term does not remove the disputed domain name from the realm of confusing similarity for the purposes the Policy. 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). The Panel also finds that the affixation of a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s RBS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent lacks rights and legitimate interests in the <rbslogin.com> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel found that once a complainant has made out a prima facie case in support of its allegations, the burden shifts to the respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. Here, Complainant has presented a prima facie case in support of its claims. Due to Respondent’s failure to submit a response, the Panel may assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <rbslogin.com> domain name. The WHOIS information indicates Respondent is using a privacy protection service and therefore there is no indication that Respondent’s own name is similar to the disputed domain name. Complainant additionally points out that it has not licensed or otherwise authorized Respondent to use its RBS mark within the domain name. The Panel finds that Respondent is not commonly known by the <rbslogin.com> domain name, pursuant to Policy ¶ 4(c)(ii), as there is no information in the record to indicate otherwise. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent’s disputed domain name redirects Internet users to a directory website featuring links to providers of banking and financial services which directly compete with Complainant’s business. Respondent likely generates click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to operate a commercial search engine with links to Complainant’s competitors is not 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant contends that Respondent’s <rbslogin.com> domain name disrupts its business in the financial and banking industry. Potential customers searching for Complainant may find Respondent’s website due to the confusingly similar domain name. The resolving website contains numerous links to competing financial websites and users may decide to purchase similar services from a competitor and not Complainant. The Panel finds that Respondent’s use of the domain name does disrupt Complainant’s business, which constitutes bad faith use and registration under Policy ¶ 4(b)(iii). See 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)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel infers that Respondent receives click-through fees from the aforementioned third-party links on the resolving website. Internet users looking for Complainant online may find Respondent’s website and due to the use of Complainant’s mark within the domain name, there is a substantial likelihood of confusion as to Complainant’s sponsorship of, or association with, the domain name and featured links. Respondent attempts to commercially gain from this confusion through the receipt of click-through fees. The Panel finds that such use is evidence of bad faith under Policy ¶ 4(b)(iv). See 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); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that Policy ¶4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbslogin.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 16, 2011
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