The Royal Bank of Scotland Group plc v. street c/o street
Claim Number: FA0804001175305
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue are <rbs-online-uk.net>, <rbs-uk.org>, and <rbsuk-online.info>, registered with Estdomains, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April
16, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 6, 2008
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@rbs-online-uk.net, postmaster@rbs-uk.org, and
postmaster@rbsuk-online.info 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rbs-online-uk.net>, <rbs-uk.org>, and <rbsuk-online.info> domain names are confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbs-online-uk.net>, <rbs-uk.org>, and <rbsuk-online.info> domain names.
3. Respondent registered and used the <rbs-online-uk.net>, <rbs-uk.org>, and <rbsuk-online.info> domain names 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 groups. Complainant offers a wide range of financial products and services, including consumer and commercial lending, credit card services, investment and advisory services, and real estate services under its RBS mark. Complainant registered the RBS mark with the United Kingdom Intellectual Property Office (“UKIPO”) on February 28, 1996 (Reg. No. 2,004,617); with the Office for Harmonization in the Internal Market (“OHIM”) on March 23, 1998 (Reg. No. 97,469); with the United States Patent and Trademark Office (“USPTO”) on December 19, 2006 (Reg. No. 3,185,538); as well as numerous registrations with other governmental trademark authorities.
Respondent registered the <rbs-online-uk.net>
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
Complainant has registered the RBS mark with the UKIPO, the
OHIM, and the USPTO, thereby establishing rights to the mark under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also 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.”).
Complainant contends that the <rbs-online-uk.net>, <rbs-uk.org>,
and <rbsuk-online.info> domain names are confusingly
similar to Complainant’s RBS mark because the disputed domain names fully
incorporate the RBS mark with addition of hyphens, the geographic term “uk,”
and in the case of the <rbs-online-uk.net> and <rbsuk-online.info>
domain names, the generic term “online.”
Previous panels have concluded that combining a geographic term with a
complainant’s mark does not sufficiently distinguish the disputed domain name
from the mark. Here, “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first demonstrate that Respondent lacks all
rights and legitimate interests in the disputed domain names. The burden shifts to Respondent to show rights
and legitimate interests once Complainant has made a prima facie case under Policy ¶ 4(a)(i). The panel in Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Respondent has not responded to the Complaint. Therefore, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain names. In Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000), the panel found that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise. The Panel, however, will consider all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c). See 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”).
Complainant maintains that it has never authorized Respondent to use the RBS mark. In addition, the WHOIS information does not suggest that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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); 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).
Respondent was previously using the disputed domain names to
host a website that imitated Complainant’s legitimate website. The panel in American
International Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May
30, 2003) found that the respondent attempted to pass itself off as the complainant
online, which the panel held to be a blatant unauthorized use of the
complainant’s mark and evidence that the respondent had no rights or legitimate
interests in the disputed domain name.
This Panel concludes that Respondent’s previous use of the disputed
domain names to pass itself off as Complainant was neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Crow v.
LOVEARTH.net, FA 203208 (Nat. Arb. Forum
Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”).
Previously, Respondent was also
using the disputed domain names to acquire personal information from
Complainant’s current and potential customers.
The Panel finds this behavior is further evidence that Respondent lacks
rights and legitimate interests in the disputed domain names under Policy ¶¶
4(c)(i) and (iii).
See Juno Online Servs.,
Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that
using a domain name in a fraudulent scheme to deceive Internet users into
providing their credit card and personal information is not a bona fide offering of goods or services
nor a legitimate noncommercial or fair use); see also Capital One Fin.
Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding
that using a domain name to redirect Internet users to a website that imitated
the complainant’s credit application website and attempted to fraudulently
acquire personal information from the complainant’s clients was not a bona
fide offering of goods or services or a legitimate noncommercial or fair
use).
The disputed domain names do not currently resolve to active
websites. Previous panels have
maintained that holding disputed domain names without actively using them does
not demonstrate any rights or legitimate interests. The Panel finds that Respondent’s failure to
actively use the disputed domain names is evidence of lack of rights and
legitimate interests under 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
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent was previously using the <rbs-online-uk.net>, <rbs-uk.org>,
and <rbsuk-online.info> domain names to operate a website
imitating Complainant’s website; Complainant contends that this use evidences
registration and use in bad faith. The Panel
finds that Respondent’s use of the disputed domain names was capable of
creating confusion as to the source or affiliation of the website that resolved
from the disputed domain names.
Moreover, Respondent was commercially benefiting from the goodwill
associated with the RBS mark. In H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat.
Arb. Forum Jan. 8, 2003), the panel found 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. Here, the Panel finds that Respondent’s use
demonstrates registration and use in bad faith 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.”).
Furthermore,
by using the disputed domain names to acquire personal information,
Respondent’s use further evidences registration and use in bad faith under
Policy ¶ 4(a)(iii).
See HOPE worldwide,
Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the
respondent registered and used the domain name in bad faith because it
redirected Internet users to a website that imitated the complainant’s website
and was used to fraudulently acquire personal information from the
complainant’s potential associates); see
also 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).
Respondent’s previous use of the disputed domain names also evidence registration and use in bad faith under Policy ¶ 4(b)(iii) because it was capable of disrupting Complainant’s business. See 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).”); see also 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.
Finally, Respondent’s current inactive use of the disputed
domain names demonstrates bad faith registration and use. In Clerical
Medical Investment Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000), the panel found that merely holding an infringing domain name
without active use can constitute use in bad faith. The Panel concludes that Respondent’s use
shows registration and use in bad faith under Policy ¶ 4(a)(iii). See DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <rbs-online-uk.net>, <rbs-uk.org>, and <rbsuk-online.info> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 23, 2008
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