The Royal Bank of Scotland Group plc v. PARRY
Claim Number: FA0512000615243
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas of Parker Poe Adams & Bernstein LLP, Wachovia Capitol Center, 150 Fayetteville Street Mall, Suite 1400, Post Office Box 389, Raleigh, NC 27602. Respondent is PARRY (“Respondent”), 13 Gereher St., Mordialloc, VIC 3000, US.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <roylinedirect.com>, registered with Fabulous.com Pty Ltd.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2005.
On December 30, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <roylinedirect.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 2006 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@roylinedirect.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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." 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 <roylinedirect.com> domain name is identical to Complainant’s ROYLINE DIRECT mark.
2. Respondent does not have any rights or legitimate interests in the <roylinedirect.com> domain name.
3. Respondent registered and used the <roylinedirect.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
leading financial services group, which was founded in 1727. Complainant has offices in many countries on
four continents and has over 140,000 employees so that it may offer its clients
a wide range of financial products and services. Complainant’s services include consumer and commercial lending,
credit card services, investment and advisory services, real estate services
and many other financial services.
Complainant owns several registrations for its ROYLINE (i.e. Reg. No. 1,306,724 issued June 15, 1990) and ROYLINE DIRECT (Reg. No. 2,165,929 issued November 13, 1998) marks with the United Kingdom Patent Office. Complainant also owns domain name registrations for <royline.com> (created May 27, 1999) and <roylinedirect.co.uk> (registered August 27, 1999). The mark is used in association with online banking services designed for small businesses. This service allows Complainant’s customers to efficiently manage their finances online. In addition, Complainant holds domain name registrations that feature its ROYLINE mark, including the <royline.com> domain name.
Respondent registered the <roylinedirect.com> domain name on November 7, 2004. Respondent is using the disputed domain name to operate a directory website that displays links to various third-party products and services, predominantly to Complainant’s competitors in the banking 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 has presented its registration of the ROYLINE DIRECT mark with trademark authorities in the United Kingdom. The Panel finds that this is sufficient to support a finding that Complainant has rights in the mark for the purposes of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning”).
The <roylinedirect.com> domain name incorporates Complainant’s ROYLINE DIRECT mark in its entirety, adding only the generic top-level domain (“gTLD”) “.com.” The use of a gTLD is irrelevant to the Panel’s similarity analysis under Policy ¶ 4(a)(i), because TLDs are required to register a domain name. Therefore, the Panel concludes that the disputed domain name is identical to the mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Consequently, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <roylinedirect.com> domain name. Nothing in the record, including the WHOIS information, suggests otherwise and Respondent has not come forward with any evidence rebutting Complainant’s contentions. Therefore, the Panel concludes that Respondent has failed to establish that it is commonly known by the <roylinedirect.com> domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent is using the <roylinedirect.com>
domain name to garner profit from click-through fees. The domain name resolves to a generic search engine website that
displays links to various third-party websites, including several that compete
with Complainant, presumably for the purpose of earning commissions for
diverting Internet users to the third-party businesses. The Panel does not find a bona fide offering of goods or services
under Policy ¶ 4(c)(i) where Respondent is using Complainant’s ROYLINE DIRECT
mark to operate a commercial website for Respondent’s benefit. Furthermore, such use for Respondent’s commercial
gain does not constitute a legitimate noncommercial or fair use of the domain
name under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's
registration and use of the <gayaol.com> domain name with the intent to
divert Internet users to Respondent's website suggests that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to
Policy Paragraph 4(a)(ii).”); see also
WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona
fide offering of goods or services as contemplated by the Policy).
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <roylinedirect.com>
domain name to divert Internet users searching for Complainant’s banking
products and services to Respondent’s directory website demonstrates
Respondent’s intent to attract Internet users to its website by creating
confusion with Complainant’s marks. The
registration and use of a domain name containing Complainant’s ROYLINE DIRECT
mark to divert Internet users for Respondent’s commercial gain is evidence of
bad faith registration and use under Policy ¶ 4(b)(iv). See
Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003) (“Registration and use of a domain name that incorporates another's mark
with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb.
Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com>
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the
domain name provided links to Complainant's competitors and Respondent
presumably commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
Thus, the Panel finds that 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 <roylinedirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 10, 2006
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