national arbitration forum

 

DECISION

 

The Royal Bank of Scotland Group plc v. Parry, james

Claim Number: FA0901001243179

 

PARTIES

Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP, North Carolina, USA.  Respondent is Parry, james (“Respondent”), Denmark.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rbsbnksct.com>, registered with Ascio Technologies, Inc.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 19, 2009.

 

On January 19, 2009, Ascio Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsbnksct.com> domain name is registered with Ascio Technologies, Inc. and that Respondent is the current registrant of the name.  Ascio Technologies, Inc. has verified that Respondent is bound by the Ascio Technologies, 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 January 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 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@rbsbnksct.com by e-mail.

 

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

 

On February 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <rbsbnksct.com> domain name is confusingly similar to Complainant’s RBS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <rbsbnksct.com> domain name.

 

3.      Respondent registered and used the <rbsbnksct.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The Royal Bank of Scotland Group plc, was founded in 1727 and, today, is a worldwide institution in banking and investing.  Complainant has offices on four continents with more than 140,000 employees.  Complainant’s services include consumer and commercial lending, credit card services, investment and advisory services, real estate services, and a variety of other financial services.  Complainant holds numerous trademark registrations throughout the world for its RBS mark, including its registrations with the United Kingdom Intellectual Property Office (“UKIPO”) since 1996 (Reg. No. 2,004,617 issued February 28, 1996) and the United States Patent and Trademark Office (“USPTO”) since 2006 (Reg. No. 3,185,538 issued December 19, 2006).     

 

Respondent registered the <rbsbnksct.com> domain name on November 22, 2008.  The disputed domain name resolves to a website highly similar to Complainant’s own 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

 

The Panel finds that registration of Complainant’s mark with governmental trademark authorities, including the UKIPO and USPTO, establishes Complainant’s rights in the RBS mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Respondent’s <rbsbnksct.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  The use of Complainant’s complete mark in conjunction with what appears to be the abbreviation for bank (“bnk”) and Scotland (“sct”) does not nullify the confusingly similar nature of the disputed domain name.  The addition of the generic top-level domain (“gTLD”) “.com” also does nothing to differentiate the disputed domain name from Complainant’s mark.  Therefore, Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that top-level domains are irrelevant for purposes of the Policy).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the <rbsbnksct.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).

 

As Respondent did not answer the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests in the disputed domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).  However, the Panel chooses to examine the record in consideration of the factors listed under Policy ¶ 4(c).

 

Respondent’s disputed domain name resolves to a website holding itself out as being the website of The Royal Bank of Scotland by using Complainant’s RBS mark.  Respondent is attempting to pass itself off as Complainant to gain access to confidential information from confused Internet users, behavior which is defined as a “phishing” scheme.  The Panel finds that using the disputed domain name to obtain information from consumers in a fraudulent manner is 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 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 the 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 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).

 

Respondent’s WHOIS registration is evidence that Respondent is not commonly known by the <rbsbnksct.com> domain name, in that the registrant is listed as “Perry, james.”  Without further evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).

 

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

             

Registration and Use in Bad Faith

 

Respondent registered and is using the <rbsbnksct.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  The similarity between Complainant’s commercial website and the website that the disputed domain name resolves to demonstrates that Respondent is attempting to attract, for commercial gain, Internet users seeking Complainant’s services.  The assumption by confused Internet users that Respondent’s website is somehow affiliated with Complainant creates a sense of security in the Internet consumer that will lead to the revelation of confidential information.  Therefore, Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s mark to lure Internet consumers to a site in order to profit from the goodwill and long history associated with Complainant’s mark.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); 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).

 

Furthermore, Respondent is engaging in a fraudulent phishing scheme by registering and using the <rbsbnksct.com> domain name to divert Internet users to its own website displaying with Complainant’s mark and other information similar to Complainant’s own website.  Respondent further offers online forms where Internet users may reveal personal and financial information.  Respondent’s attempts to fraudulently acquire this information provides evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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 <rbsbnksct.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist

Dated:  March 2, 2009

 

 

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