national arbitration forum

 

DECISION

 

The Royal Bank of Scotland Group plc v. Domain Admin c/o PrivacyProtect.org

Claim Number: FA1105001387009

 

PARTIES

Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA.  Respondent is Domain Admin c/o PrivacyProtect.org (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwrbsnb.com>, registered with RegisterMatrix.com Corp.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2011; the National Arbitration Forum received payment on May 4, 2011.

 

On May 11, 2011, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <wwwrbsnb.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name.  RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com Corp. 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 May 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@wwwrbsnb.com.  Also on May 11, 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 June 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <wwwrbsnb.com> domain name is confusingly similar to Complainant’s RBS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <wwwrbsnb.com> domain name.

 

3.    Respondent registered and used the <wwwrbsnb.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The Royal Bank of Scotland Group plc, is a financial services group that offers a wide range of financial products and services, including consumer and commercial lending, credit card services, investment and advisory services, and real estate services. Complainant owns a trademark registration for the RBS mark with the United Kingdom Intellectual Property Office (“UKIPO”), the European Union Office for Harmonization in the Internal Market (“OHIM”), the United States Patent and Trademark Office (“USPTO”), and IP Australia:


UKIPO

Reg. No. 2,004,617              issued January 5, 1996;

 

OHIM

Reg. No. 000097469           issued March 23, 1998;

 

IP Australia

Reg. No. 856,518                 September 1, 2005; and

 

USPTO

Reg. No. 3,185,538              issued December 19, 2006.

 

Respondent, Domain Admin c/o PrivacyProtect.org, registered the <wwwrbsnb.com> domain name on June 26, 2010. The disputed domain name resolves to a directory website displaying various commercial links, including links to the very types of services offered by Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns a trademark registration for the RBS mark with the UKIPO, the OHIM, the USPTO, and IP Australia:

 

UKIPO

Reg. No. 2,004,617              issued January 5, 1996;

 

OHIM

Reg. No. 000097469           issued March 23, 1998;

 

IP Australia

Reg. No. 856,518                 September 1, 2005; and

 

USPTO

Reg. No. 3,185,538              issued December 19, 2006.

 

The Panel finds that these trademark registrations around the world, including in the country where Respondent lives or operates, demonstrate that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

 

Complainant alleges that Respondent’s <wwwrbsnb.com> domain name is confusingly similar to Complainant’s RBS mark. The disputed domain name differs from Complainant’s mark only in the addition of the “www” prefix without the separating period, the letters “nb,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding the prefix “www” without separating it from the rest of the domain name with a period is insufficient to distinguish the disputed domain name from Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). The Panel also determines that the addition of extra letters does not eliminate confusing similarity. See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON). Finally, the Panel concludes that the gTLD is irrelevant to a confusingly similar analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel therefore holds that Respondent’s <wwwrbsnb.com> domain name is confusingly similar to Complainant’s RBS pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant meets its burden of establishing a prima facie case, the burden then shifts to Respondent to demonstrate its  rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The Panel, however, elects to consider the evidence in record in light of the Policy      ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent is not commonly known by the <wwwrbsnb.com> domain name. The WHOIS information for the disputed domain name identifies the registrant as “Domain Admin c/o PrivacyProtect.org,” which has no apparent connection to the disputed domain name. The Panel thus concludes that Respondent has no rights and legitimate interests in the disputed domain name under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant asserts that Respondent’s <wwwrbsnb.com> domain name hosts a website that displays various commercial links, including links to the very types of financial services offered by Complainant, such as “Bank of America Cards,” “CHASE Credit Cards,” and “Credit Card Application Form.” The Panel finds that maintaining such a directory website with third-party competing links 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 under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); 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).”).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s <wwwrbsnb.com> domain name resolves to a website featuring third-party links to competing providers of financial services. Respondent’s use of the disputed domain name to redirect Internet users to this directory site interferes with Complainant’s business as Internet users seeking Complainant’s business are unknowingly diverted away from Complainant to a variety of Complainant’s competitors. The Panel finds that this disruption of business shows Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); 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)).

 

Complainant argues that Respondent uses Complainant’s RBS mark in the <wwwrbsnb.com> domain name to attract Internet users interested in Complainant’s goods and services. Complainant asserts that the presence of the mark in the disputed domain name and the similarity between the services offered by Complainant and the services offered by the third parties advertised in the pay-per-click links create a likelihood of confusion as to the source or affiliation of Respondent’s website. Complainant contends that Respondent uses this attraction and confusion in order to increase its profit from the pay-per-click links advertised on the resolving website. The Panel finds this scheme demonstrates bad faith registration and use according to 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).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wwwrbsnb.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 13, 2011

 

 

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