national arbitration forum

 

DECISION

 

The Royal Bank of Scotland Group PLC v. Willams c/o Willams

Claim Number: FA0711001105825

 

PARTIES

Complainant is The Royal Bank of Scotland Group PLC (“Complainant”), represented by James A. Thomas, of Troutman Sander LLP, 434 Fayetteville Street, Two Hannover Square, Suite 1900, Raleigh, NC 27601.  Respondent is Willams c/o Willams (“Respondent”), emt street california, San Diego, CA 92711.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rbsuk-online.net>, registered with Estdomains, Inc.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2007.

 

On November 5, 2007, Estdomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsuk-online.net> domain name is registered with Estdomains, Inc. and that Respondent is the current registrant of the name.  Estdomains, Inc. has verified that Respondent is bound by the Estdomains, 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 November 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 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@rbsuk-online.net by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 13, 2007, the National Arbitration Forum received an Additional Submission from Complainant that was determined to be complete.

 

On December 17, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

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 <rbsuk-online.net> domain name is confusingly similar to Complainant’s RBS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <rbsuk-online.net> domain name.

 

3.      Respondent registered and used the <rbsuk-online.net> 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 one of the world’s leading financial services groups.  Complainant is based in the United Kingdom and has offices on four continents.  Complainant has used the RBS mark in connection with its financial services, and has registered numerous domain names for use of its online banking services, including <rbs.com>, <rbs.co.uk>, <rbsdigital.com>, and <rbsbanking.com>.  Complainant registered the mark with the United Kingdom Intellectual Property Office (“UKIPO”) on January 5, 1996 (Reg. No. 2,004,617); with the European Union Office for Harmonization in the Internal Market (“EUOHIM”) on March 23, 1998 (Reg. No. 97,469); and with the United States Patent and Trademark Office (“USPTO”) on January 16, 2007 (Reg. 3,198,052).  Complainant has registered the mark in numerous other countries as well.  In a November 10, 2007 email correspondence to Complainant’s counsel, Respondent offered the disputed domain name for sale to Complainant for $400,000. 

 

Respondent registered the <rbsuk-online.net> domain name on August 18, 2007.  Respondent previously used the disputed domain name to redirect Internet users to a fraudulent banking website imitating Complainant’s official homepage, and attempted to entice Internet users into entering their account numbers and PIN information.  The disputed domain name currently does not resolve to an active website.

 

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 has registered the RBS mark with the UKIPO, the EUOHIM, and the USPTO, and therefore established rights to the mark under Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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.”).

 

The <rbsuk-online.net> domain name is confusingly similar to the RBS mark because it incorporates the entire mark and adds the generic terms “uk,” a common abbreviation for the United Kingdom, and “online.”  The addition of these generic terms does not sufficiently distinguish the disputed domain name from Complainant’s mark because the terms describe Complainant’s business and generic terms usually do not sufficiently distinguish a disputed domain name from a registered mark.  Moreover, the addition of the generic top-level domain (“gTLD”) “.net” does not sufficiently distinguish the disputed domain name from the RBS mark because all domain names are required to have a top-level domain.  Thus, the Panel finds the disputed domain name confusingly similar to Complainant’s RBS mark pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); 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); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar").

 

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

  

Rights or Legitimate Interests

 

Complainant asserts that Respondent has neither rights nor legitimate interests in the <rbsuk-online.net> domain name.  Complainant must first present a prima facie case establishing that Respondent lacks all rights and legitimate interests in the disputed domain name.  Once Complainant has met the burden and made a prima facie case supporting the assertion that Respondent lacks rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has demonstrated that Respondent lacks rights and legitimate interests in the <rbsuk-online.net> domain name, and thus made a prima facie case pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).

 

Because Respondent failed to respond to the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  However, the Panel will examine all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c).

 

Complainant asserts that Respondent is not commonly known by the disputed domain name and has never been authorized to use the RBS mark.  Furthermore, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <rbsuk-online.net> 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 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).

 

Previously, Respondent used the <rbsuk-online.net> domain name as an attempt to “pass itself off” as Complainant in order to defraud Complainant’s customers.  Respondent’s domain name resolved to a website that imitated Complainant’s genuine online financial services website and asked for personal and financial information of Internet users interested in Complainant’s banking services.  Complainant has alleged that Respondent was using this website to “phish” for confidential financial information in an attempt to defraud Complainant’s customers.  The Panel finds that Respondent’s attempt to pass itself off as Complainant and phish for customers’ private information 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 HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).

 

Currently, Respondent is not actively using the disputed domain name.  The Panel finds that such non-active use further evidences Respondent’s lack of rights and legitimate interests 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 [inactive use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent made no active us of the domain name).

 

Moreover, Respondent offered to sell the disputed domain name to Complainant, and such behavior is evidence that Respondent lacks rights and legitimate interests in the <rbsuk-online.net> domain name.  See Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).

 

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

 

Registration and Use in Bad Faith

 

The website that resolved from the disputed domain name previously imitated Complainant’s website and requested that RBS account holders enter their account number and access PIN.  Respondent has capitalized on Complainant’s well-known RBS mark by attracting Internet users to its website.  Respondent’s use of the disputed domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the <rbsuk-online.net> domain name.  The Panel finds that Respondent’s use of the disputed domain name is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv).  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).

 

Respondent used the <rbsuk-online.net> domain name to engage in a phishing scam, misdirecting Internet users seeking Complainant’s genuine website to Respondent’s website.  Respondent was deceiving Complainant’s Internet customers and manipulating them into divulging sensitive personal information by imitating Complainant’s genuine financial website.  Thus, Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).

 

Respondent is not currently using the disputed domain name, further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s non-active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

Furthermore, Respondent has offered to sell the disputed domain name to Complainant for $400,000.  The Panel finds that Respondent’s attempt to sell the <rbsuk-online.net> domain name demonstrates bad faith registration and use under Policy ¶ 4(b)(i).  See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

The Panel finds that 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 <rbsuk-online.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Sandra J. Franklin, Panelist

Dated:  December 27, 2007

 

 

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