The Royal Bank of Scotland Group plc v. UCI Media, Inc.
Claim Number: FA0812001238866
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 <rbsolutionscorp.com>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 17, 2008.
On December 16, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsolutionscorp.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 December 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2009 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@rbsolutionscorp.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a financial services provider that operates in many countries in the banking, insurance, and brokerage industries.
Complainant operates under the RBS mark, which has been registered with multiple governmental trademark authorities including: (1) the United Kingdom Intellectual Property Office (“UKIPO”) registered on January 5, 1996 (Reg. No. 2,004,617); (2) the European Union’s Office for Harmonization in the Internal Market (“OHIM”) registered on March 23, 1998 (Reg. No. 97,469); and (3) the United States Patent and Trademark Office (“USPTO”) registered on December 19, 2006 (Reg. No. 3,185,538).
Complainant also owns and operates numerous domain names in conjunction with its Internet operations, including the <rbs.com> domain name.
Respondent is not affiliated with Complainant in any way, and it has not been licensed or otherwise authorized to use Complainant’s RBS mark in any fashion.
Respondent registered the disputed <rbsolutionscorp.com> domain name on or about August 23, 2008.
The disputed domain name resolves to a website displaying links to and advertisements for Complainant’s business competitors, presumably so that Respondent may receive click-through revenues for each Internet user who makes contact with the site.
Respondent’s <rbsolutionscorp.com> domain name is confusingly similar to Complainant’s RBS mark.
Respondent does not have any rights or legitimate interests in the domain name <rbsolutionscorp.com>.
Respondent registered and uses the <rbsolutionscorp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registrations of the RBS mark with the USPTO, UKIPO, and OHIM demonstrate Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005): “Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”
Respondent’s disputed domain name differs from Complainant’s
mark in the following ways: (1) the generic top-level domain “.com” has been
added; (2) the generic misspelled term “olutions,” presumably for “solutions,”
has been added; and (3) the generic abbreviation “corp” for “corporation” has
been included. The presence of the generic
top-level domain makes no relevant distinction.
See Jerry Damson,
Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Moreover, the addition of misspelled or abbreviated generic terms does not eliminate confusing similarity where, as here, the mark remains the dominant element of the disputed domain name. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” so that Policy ¶ 4(a)(i) is satisfied).
Therefore the Panel finds that the disputed domain name is
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. From our review of the allegations made in the Complaint, we conclude that Complainant has established a prima facie case under this heading pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. 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.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that a complainant must first make out a prima facie
case that a respondent lacks rights to and legitimate interests in a disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent
to show that it does have such rights or legitimate interests).
Because Respondent has not responded to the Complaint, we may presume that Respondent lacks rights to and legitimate interests in the disputed domain name for purposes of Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
We elect nonetheless to examine the record to determine whether there is any basis for finding that Respondent has any rights to or legitimate interests in the disputed domain in light of the considerations outlined in Policy ¶ 4(c).
We begin by noting that the pertinent WHOIS information lists Respondent not as the disputed domain name but as “UCI Media, Inc.” Moreover, Complainant alleges, and Respondent does not deny, that Respondent is not affiliated with Complainant in any way and has not been licensed or otherwise authorized to use Complainant’s RBS mark in any fashion. In the absence of any evidence to the contrary, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent has no rights to or legitimate interests in a disputed domain name where there is no evidence in the record indicating that that respondent is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, including the WHOIS information as well as a complainant’s assertion that it did not authorize or license that respondent’s use of its mark in a domain name).
We also observe that there is no dispute as to Complainant’s
assertion to the effect that Respondent’s domain name resolves to a parked web
page that features third-party click-through advertisements for Complainant’s business
competitors. In the circumstances
illuminated in the Complaint, we therefore conclude that Respondent has not used
the contested domain in a bona fide offering of goods or services under
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd.,
FA 758981 (Nat. Arb. Forum
Sept. 14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE
LOUNGE mark to redirect Internet users to that respondent’s own website for
commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to
Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group,
Inc., FA 949608 (Nat. Arb. Forum May 18, 2007): “Respondent is using the <skycaddy.com>
domain name to display a list of hyperlinks, some of which advertise
Complainant and its competitors’ products.
The Panel finds that this use of the disputed domain name does not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
In placing competitors’ advertisements on the resolving web
page, as alleged in the Complaint, Respondent has disrupted Complainant’s business
operations by diverting Internet users away from Complainant. Therefore, Respondent has engaged in bad
faith registration and use of the contested domain name under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb.
Forum July 24, 2006) (finding that a respondent engaged in bad faith
registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using the domain names to operate a commercial
search engine with links to the products of a complainant and to that complainant’s
competitors, as well as by diverting Internet users to several other domains); see
also David Hall Rare Coins v.
Moreover, there is no dispute as to Complainant’s allegation to the effect that Respondent benefits financially, through the receipt of referral fees, from its placement of competitive links and advertisements on the resolving web page. In the circumstances described in the Complaint, Respondent has thus created a likelihood of confusion as to the possibility that Complainant is the source, affiliate or endorser of the disputed domain name and corresponding website. This is evidence of Respondent’s bad faith registration and use of the contested domain under 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 of a domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting from this activity); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005):
[T]he
Panel finds that Respondent is capitalizing on the confusing similarity of its
domain names to benefit from the valuable goodwill that Complainant has
established in its marks. Consequently,
it is found that Respondent registered and used the domain names in bad faith
under Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <rbsolutionscorp.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 23, 2009
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