The Royal Bank of Scotland Group plc v. MR OGSTON
Claim Number: FA0809001222641
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbsscot.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 2, 2008.
On September 2, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <rbsscot.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 25, 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@rbsscot.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <rbsscot.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsscot.com> domain name.
3. Respondent registered and used the <rbsscot.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Founded in 1727, Complainant is one of the leading financial services groups in the world. Complainant currently owns trademark registrations of the RBS mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,004,617 issued January 5, 1996), the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 97,469 issued March 23, 1998), and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,185,538 issued December 19, 2006). Complainant uses the RBS mark in connection with promoting and providing banking, financial planning, insurance and brokerage services.
Respondent’s <rbsscot.com> domain name was registered on July 18, 2008. It originally resolved to a website which purported to be Complainant’s official website, containing the RBS mark, and claiming to offer the same banking and financial services as Complainant. Currently, no active use is being made of the disputed domain name.
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 rights in the RBS
mark through registration with the UKIPO, the OHIM, and the USPTO pursuant to
Policy ¶ 4(a)(i). 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 Orange Glo Int’l v. Roswell Int’l Ltd, FA 440119 (Nat.
Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in
the OXICLEAN mark by virtue of trademark registrations with entities including
the Office for Harmonization in the Internal Market (“OHIM”)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26,
2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The <rbsscot.com> domain name contains
Complainant’s RBS mark in its entirety followed by the abbreviation “scot” and the
generic top-level domain (“gTLD”) “.com.”
It is well-established that the inclusion of a gTLD is irrelevant to a
Policy ¶ 4(a)(i) analysis. See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Furthermore, the abbreviation “scot” is short
for “
The Panel concludes that Complainant has established Policy ¶ 4(a)(i).
Before the Panel may proceed under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name. See
AOL LLC v. Gerberg, FA
780200 (Nat.
Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interest in the subject domain
names.”). The Panel finds that
Complainant has met this threshold and accordingly recognizes that Respondent
now bears the burden of demonstrating that it has rights or legitimate
interests in the disputed domain name. See
Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a
prima facie case has been established by the complainant under Policy ¶
4(c), the burden then shifts to the respondent to demonstrate its rights or
legitimate interests in the disputed domain name).
Respondent has failed to reply in this case. Therefore, the Panel may presume that
Respondent lacks rights and legitimate interests in the disputed domain
name. Nonetheless, the Panel will
proceed to examine the record in consideration of the elements listed under
Policy ¶ 4(c). 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).
Respondent’s <rbsscot.com> domain name lists
Respondent in its WHOIS information under the alias “Mr. Ogston.” Further, Complainant contends that it has not
licensed or otherwise authorized Respondent to use the RBS mark, or any
variation thereof, in the disputed domain name or otherwise. Without any additional information, the Panel
finds that Respondent is not commonly known by the <rbsscot.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to establish rights and
legitimate interests in the <emitmortgage.com> domain name as the respondent
was not authorized to register domain names featuring the complainant’s mark
and failed to submit evidence of that it is commonly known by the disputed
domain name); see also 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).
The <rbsscot.com> domain name was originally
resolving to a website that fraudulently purported to be Complainant’s official
website, duplicating Complainant’s RBS mark and pretending to offer the same
financial services as Complainant.
Respondent was attempting to pass off as Complainant. The Panel finds this to have been a part of
an elaborate phishing scheme. A phishing
scheme is a practice “intended to defraud consumers into revealing personal and
proprietary information.” Capital One Fin. Corp. v. Howel, FA 289304
(Nat. Arb. Forum Aug. 11, 2004). The
Panel presumes Respondent was attempting to extract this personal information
from unsuspecting consumers in order to defraud Internet users and
Complainant. The Panel considers this
use to constitute 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 Allianz of Am. Corp. v. Bond, FA
690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of
the <allianzcorp.biz> domain name to fraudulently acquire the personal
and financial information of Internet users seeking Complainant’s financial
services was not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed
domain name pursuant to Policy ¶ 4(c)(iii)); see also Juno Online Servs.,
Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that
using a domain name to redirect “Internet users to a website that imitates
Complainant’s billing website, and is used to fraudulently acquire personal
information from Complainant’s clients,” is neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use).
Currently, no active use is being made of the disputed
domain name. The Panel finds this to be
further evidence that Respondent lacks rights and legitimate interests in the
disputed domain name 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 Feb. 19,
2001) (finding no rights or legitimate interests in the domain name
<solgarvitamins.com> where the respondent inactively held the domain
name).
The Panel concludes that Complainant has established Policy ¶ 4(a)(ii).
When the disputed domain name originally resolved to a website fraudulently purporting to be Complainant’s website, containing Complainant’s mark and claiming to offer the same or similar financial services as what Complainant offers under the RBS mark, the Panel may presume this to be a competitive use. As a result, the Panel finds this to establish that Respondent registered and used the <rbsscot.com> domain name in bad faith for the purpose of disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). 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 Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Additionally, this fraudulent use of the disputed domain
name is part of a phishing scheme. The
Panel may presume that Respondent did or attempted to financially benefit from
the personal financial information Respondent obtained through this
scheme. Consequently, this is further
evidence of Respondent’s bad faith registration and use of the <rbsscot.com>
domain name pursuant to 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 [under Policy ¶ 4(b)(iv).”); 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); see also Wells Fargo & Co. v.
Moreover, besides the examples giving in Policy ¶¶ 4(b)(iii) and (iv), the passing off scheme Respondent engaged in is sufficient on its own under Policy ¶ 4(a)(iii) to establish bad faith registration and use of the <rbsscot.com> domain name. See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).
Currently, no active use of the <rbsscot.com> domain name is being made. The Panel concludes that this further satisfies Policy ¶ 4(a)(iii) in demonstrating that Respondent registered and is using the disputed domain name in bad faith. See 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); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel concludes that Complainant has established 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 <rbsscot.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
October 20, 2008
National
Arbitration Forum
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