The Royal Bank of Scotland Group plc v. Linda Metcalfe
Claim Number: FA0710001094633
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas, of Troutman Sander LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <loan-lombarddirect.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 18, 2007.
On October 17, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <loan-lombarddirect.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 October 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 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@loan-lombarddirect.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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
<loan-lombarddirect.com>
domain name is confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <loan-lombarddirect.com> domain name.
3. Respondent registered and used the <loan-lombarddirect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of
Respondent’s <loan-lombarddirect.com> domain name was registered on January 23, 2007, and previously resolved to a website featuring advertisements and links to direct competitors of Complainant. Currently, the disputed domain name resolves to a website featuring the words “under construction.”
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 sufficiently established its rights in the
Respondent’s <loan-lombarddirect.com> domain name contains Complainant’s LOMBARD
DIRECT mark in its entirety preceded by a hyphen and the generic term “loan,”
which has a direct correlation to the products and services offered under
Complainant’s mark. The disputed domain
name also contains the generic top-level domain (“gTLD”) “.com.” It is well-established that the inclusion of a
gTLD, a hyphen and a generic term that is directly correlated to a complainant’s
business does not distinguish a disputed domain name. Therefore, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO
June 25, 2000) (finding that the top level of the domain name such as “.net” or
“.com” does not affect the domain name for the purpose of determining whether
it is identical or confusingly similar); see
also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18,
2000) (holding “that the use or absence of punctuation marks, such as hyphens,
does not alter the fact that a name is identical to a mark"); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where the respondent’s domain name
combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See VeriSign Inc. v. VeneSign
No Response has been submitted. As a result, the Panel presumes that
Respondent has no rights or legitimate interests in the disputed domain name,
but will nonetheless examine the record in consideration of the factors under
Policy ¶ 4(c). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”); see also
BIC Deutschland GmbH & Co. KG v.
Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response,
Respondent has failed to invoke any circumstance which could demonstrate,
pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the
domain name”).
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate that Respondent is or ever was commonly known by
the <loan-lombarddirect.com> domain name. Furthermore, the
Respondent has not sought nor received permission to use Complainant’s mark in
any way. Consequently, the Panel finds
that Respondent is not commonly known by the disputed domain name pursuant to
Policy ¶ 4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
Respondent’s <loan-lombarddirect.com> domain name contains Complainant’s mark in its entirety and previously resolved to a website featuring links and advertisements to direct competitors of Complainant. The Panel finds that this 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Furthermore, the disputed domain name currently resolves to
a website featuring the words “under construction.” The Panel finds this to constitute an
inactive use of the disputed domain name and is further evidence that
Respondent has no rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters.,
FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that
Respondent's passive holding of the domain name does not establish rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb.
Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the
disputed domain name, did not support a claim of rights or legitimate interests
under Policy ¶ 4(a)(ii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <loan-lombarddirect.com> domain name previously resolved to advertisements
and links to third-parties, most all of which offered loan products and
services in direct competition with those offered under Complainant’s LOMBARD
DIRECT mark. The Panel finds this to
establish that Respondent has registered and used the disputed domain name in
bad faith in an attempt to disrupt Complainant’s business pursuant to Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
Moreover, Respondent
is assumed to have commercially benefited from these advertisements and links
through the use of “click-through” fees.
The Panel finds this to be additional evidence of Respondent’s bad faith
registration and use in an attempt to profit from the disputed domain name’s
confusingly similarity to Complainant’s mark pursuant to Policy ¶ 4(b)(iv). See 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.’”); see also 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)).
Lastly, the disputed domain name currently resolves to a website featuring the words “under construction.” The Panel finds this to constitute an inactive use of the disputed domain name and is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 <loan-lombarddirect.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 30, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum