The Royal Bank of Scotland Group plc v.
Claim Number: FA0611000849147
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbsjobs.com>, registered with Domaindoorman, Llc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On November 22, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <rbsjobs.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc 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 November 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 18, 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@rbsjobs.com by e-mail.
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." 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 <rbsjobs.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsjobs.com> domain name.
3. Respondent registered and used the <rbsjobs.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 one of the world’s leading financial services companies. Complainant maintains offices around the world and employs more than 140,000 people. Complainant’s main services include consumer and commercial lending, credit card services, investment and advisory services, real estate services and various other financial services. Complainant offers online banking services at the <rbs.com>, <rbsdigitalbanking.co.uk> and <rbsdigital.com> domain names.
Complainant has registered the RBS mark with the United Kingdom Patent Office (“UKPO”) (Reg. No. 2,004,617 issued January 5, 1996; Reg. No. 2,366,760 issued January 21, 2005) and holds numerous trademark registrations for the RBS mark with trademark offices around the world.
Respondent registered the <rbsjobs.com>
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 established rights in the RBS mark pursuant
to Policy ¶ 4(a)(i) through registration of the mark with the UKPO. See The Royal Bank of Scot. Group plc v.
TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts
Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the
United Kingdom Patent Office as evidence of Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i).”); see also Thermo Electron Corp et al. v. Xu,
FA 713851 (Nat. Arb. Forum
The <rbsjobs.com>
domain name incorporates Complainant’s entire RBS mark and merely adds the term
“jobs.” The Panel finds this addition to
Complainant’s registered mark insufficient to differentiate the disputed domain
name from the mark pursuant to Policy ¶ 4(a)(i). 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
Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the subject domain name incorporates the VIAGRA mark in its entirety,
and deviates only by the addition of the word “bomb,” the domain name is
rendered confusingly similar to the complainant’s mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent has no rights or legitimate interests in the <rbsjobs.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the panel and the respondent did not come forward to suggest any
right or interest it may have possessed).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent is not commonly known by the <rbsjobs.com> domain name, because
the WHOIS information lists “Caribbean Online International Ltd.” as the
registrant of the domain name, and there is no other evidence in the record
suggesting that Respondent is commonly known by the disputed domain name. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See The 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum
Respondent is using the disputed domain name to maintain a commercial web directory displaying links to other financial services companies that compete with Complainant. The Panel infers that Respondent is generating click-through fees for each consumer it diverts to these competing websites. As a result, the Panel concludes that Respondent is not using the <rbsjobs.com> 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 under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)); see also The Royal Bank of Scot. Group plc 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 concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using a domain name confusingly similar to
Complainant’s RBS mark to operate a commercial web directory featuring links to
other financial and banking companies providing competing services. The Panel finds such use to indicate bad
faith according to Policy ¶ 4(b)(iii), for it appears that Respondent has registered
and is using the <rbsjobs.com>
domain name for the primary purpose of disrupting Complainant’s business. See S. Exposure v. S. Exposure,
Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding that the respondent registered the domain
name in question to disrupt the business of the complainant, a competitor of
the respondent); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites).
Respondent is using the <rbsjobs.com> domain name, which is confusingly similar to Complainant’s RBS mark, to redirect Internet users seeking Complainant’s financial and banking services to a commercial web directory featuring links to Complainant’s direct competitors. The Panel infers that Respondent earns click-through fees for each consumer it diverts to these third-party websites. Therefore, Respondent is taking advantage of the confusing similarity between Respondent’s <rbsjobs.com> domain name and Complainant’s RBS mark, and profiting from the goodwill associated with the mark. Use of the disputed domain name for this purpose suggests bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel concludes 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 <rbsjobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 8, 2007
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