The Royal Bank of Scotland
Group plc v.
Claim Number: FA0708001072911
PARTIES
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 <rbsus.com>, registered with Compana, Llc.
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 30, 2007; the
National Arbitration Forum received a hard copy of the Complaint on August 31, 2007.
On September 6, 2007, Compana, Llc confirmed by e-mail to the
National Arbitration Forum that the <rbsus.com> domain name is registered
with Compana, Llc and that the Respondent
is the current registrant of the name. Compana, Llc has verified that Respondent is
bound by the Compana, 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 September 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 2, 2007 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@rbsus.com by e-mail.
A timely Response was received and determined to be complete on October 2, 2007.
Complainant’s additional submission was timely received on October 9,
2007.
On October 11, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
On October 17, 2007, an Additional Submission was
submitted by Respondent. It was determined to be deficient. The Panel has
decided not to consider this Additional Submission in its Decision.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
developed the following arguments.
The domain name is identical or confusingly similar to
Complainant’s mark “RBS” because it fully incorporates Complainant’s mark and
the mere addition of a geographic term and top-level domain name extension does
not make the domain name distinct.
Respondent has no right to or legitimate interest in the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the “RBS” mark, or any variation thereof, in the domain name or otherwise.
Respondent has never used the domain name in connection
with a bona fide offering of goods or services nor made a legitimate
non-commercial or fair use of the domain name.
Instead the domain name resolves to a website featuring
links to Complainant’s competitors in the financial and banking
industries.
It appears that Respondent is capitalizing on
Complainant’s well-known mark by attracting Internet users — including
Complainant’s current and prospective customers — to its website and
redirecting them to Complainant’s competitors, presumably in exchange for click-through fees.
Respondent has never been commonly known by the name <rbsus.com>. To the contrary,
Respondent registered the domain name under the name Texas International
Property Associates with an address in
Further, there is no indication on Respondent’s website that Respondent
has ever been commonly known by this name.
Complainant’s mark “RBS” is a registered trademark and well-known around the world. Respondent is thus deemed to have actual or constructive knowledge of the mark.
Respondent registered the domain name in 2005, almost ten years after Complainant registered “RBS” as a trademark. There can be little doubt that Respondent had knowledge of Complainant’s mark when it registered the domain name and was trying to take advantage of Complainant’s goodwill. Respondent’s registration and use of the confusingly similar domain name therefore was and is in bad faith.
Further, it can be inferred that Respondent profits through referral
fees by diverting Internet users seeking Complainant’s services to competitors’
websites.
Respondent is disrupting Complainant’s business by diverting current
and prospective RBS customers to competitors’ websites, thus causing
Complainant to suffer loss of business and revenue.
Such conduct constitutes bad faith regardless of whether Respondent
itself is the competitor to whose website the domain name resolves or whether
Respondent appears to be a third party not formally affiliated with the
competitors.
Finally, the issue of Respondent’s bad faith should be considered in
light of Complainant’s status as a well-known financial institution and in
light of the particular sensitivities and dangers that status raises. Companies today, especially those conducting
business online, are increasingly targeted by those wishing to exploit, for
their own commercial gain, the goodwill and notoriety built up by the companies
in their trademarks and trade names. Due
to the sensitive nature of the confidential information that is routinely
exchanged between online companies and their customers, such companies are
consistently exposed to online threats and schemes, such as “webjacking” and
“phishing.”
B. Respondent
Respondent developed
the following arguments.
The domain
name primarily consists of a three letter acronym and is not identical or confusingly
similar to any mark in which complaint has enforceable rights under the Policy.
Complainant concedes that the domain name <rbsus.com> is merely a
geographically descriptive term which the public is free to use. Therefore, as
the .com and “us” are essentially irrelevant to the analysis, the panel is
faced with a three character domain name dispute.
Furthermore, it appears that Complainant does
not even use the “RBS” mark standing alone in the
In this case, Respondent does not have
exclusive rights to use RBS in the
There are a number of federal trademark
registrations that incorporate RBS yet have no connection to Complainant. The
registered marks cover diverse areas such as building materials and clothing.
There is no intent to target Complainant by
seeking business in
Respondent has no control over what terms
advertisers bid on at Google and what terms appear on its website.
Respondent registered the domain name
<rbsus.com> because it believed it was a descriptive acronym to which no
party had exclusive rights.
The principle that the mere ownership of a
common term domain should, in and of itself, establish the owner’s rights and
legitimate interest has been recognized by several ICANN panels.
It is well established that, where a mark is
a common term with substantial third party use, as it is here, the complainant
must proffer evidence that demonstrates that respondent has specifically
intended to confuse consumers seeking out complainant. There is no such proof here.
Respondent had no actual knowledge of
Complainant’s mark and the mere registration without actual knowledge does not
impute a finding of bad faith.
Further, the Panel must disregard superficial arguments that links on
the disputed webpage to retail banking services in the
Complainant also makes knowingly false, malicious and defamatory
statements regarding phishing, identity theft and other allegations of criminal
conduct against Respondent.
C. Additional Submissions
Respondent has been ordered to transfer
infringing domain names to brand owners in 46 UDRP proceedings in 2007
alone. Moreover, Respondent expressly
admits in its Response that:
a. The disputed domain name, <rbsus.com> “primarily consists
of” Complainant’s registered “RBS” mark;
b. Complainant has registered rights in
its “RBS” mark both in the
c.
Links on the website to which the domain
name resolves lead Internet users to banking-related websites of Complainant’s
competitors so that Respondent may benefit commercially; and
d. Respondent intended the domain name to attract Internet users searching for
goods and services utilizing the acronym “RBS.”
FINDINGS
Complainant, The Royal Bank of Scotland Group plc (“RBS”), was founded in 1727, and is one of the world’s leading
financial services groups.
The trademark
on which this Complaint is based is the “RBS” mark. Complainant holds numerous
trademark registrations for its “RBS” mark, including
in the United Kingdom Patent Office since 1996, the EU Office for Harmonization
in the Internal Market since 1998 and the United States Patent and Trademark
Office since 2006.
Respondent is well known as having demonstrated a pattern
of registering domain names that infringe on another's legitimate trade mark
rights.
In this case, Respondent registered the domain name and attracted visitors to a website, redirecting them to Complainant’s competitors.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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’s trademark registrations for its
“RBS” mark establish Complainant’s rights in the mark for purposes of ICANN
Policy.
Respondent admitted that Complainant has
registered marks in the
Respondent also admitted that the domain name
“primarily consists of” Complainant’s "RBS" mark. Respondent
confirmed that "the .com and “us” are essentially irrelevant to the
analysis."
Therefore, Respondent at least implicitly conceded
that Complainant has established that the domain name is confusingly similar to
Complainant’s “RBS” mark under Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to show that it does possess rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); 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).
Complainant has demonstrated that the <rbsus.com>
domain name resolves to a website
featuring links to Complainant’s competitors in the financial and banking
industries.
The Panel therefore finds that
Respondent’s use is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat.
Arb. Forum July
17, 2006) (finding that the respondent’s use of a domain name that was
confusingly similar to the complainant’s mark to display links to the
complainant’s competitors did not constitute 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 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)).
Complainant
further alleges that Respondent has never been commonly known by the disputed domain
name. Complainant further points out
that Respondent’s WHOIS registration for the <rbsus.com> domain name lists “Texas International Property
Associates” as the registrant. In light
of this, the Panel finds that Respondent is not commonly known by the <rbsus.com>
domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS
information and other evidence in the record); 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).
As indicated above, the <rbsus.com> domain name resolves to a website featuring, inter alia, links to Complainant’s competitors.
The Panel decides that such use constitutes a
disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used
the disputed domain name to operate a commercial search engine with links to
the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Services, FA 877982 (Nat.
Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar
domain name to attract Internet users to a website containing commercial links
to the websites of the complainant’s competitors represented bad faith
registration and use under Policy ¶ 4(b)(iii)).
Respondent likely profits from its diversionary use of the domain name
through the acquisition of click-through advertising fees.
The Panel therefore finds that Respondent’s use amounts to an attraction
for commercial gain, which evinces registration and use in bad faith pursuant
to Policy ¶ 4(b)(iv). See 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 from
click-through fees); see also AltaVista
Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that
offered links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes).
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 <rbsus.com> domain name be TRANSFERRED
from Respondent to Complainant.
Flip Petillion, Panelist
Dated: November 5, 2007
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