The Royal Bank of Scotland Group plc v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA0906001268679
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 <rsbworldpay.com>, registered with Above, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 17, 2009.
On June 17, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <rsbworldpay.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 June 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 15, 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@rsbworldpay.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 21, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <rsbworldpay.com> domain name is confusingly similar to Complainant’s RBSWORLDPAY mark.
2. Respondent does not have any rights or legitimate interests in the <rsbworldpay.com> domain name.
3. Respondent registered and used the <rsbworldpay.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, was founded in 1727 and holds several trademark registrations for the RBSWORLDPAY mark, including registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,433,675 issued June 29, 2007), the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 914,090 issued November 20, 2006), and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,505,441 issued September 23, 2008) in relation to its banking services. In addition, Complainant operates the <rbsworldpay.com> domain name and resolving website in conjunction with Complainant’s financial services.
Respondent registered the <rsbworldpay.com> domain name on March 25, 2009. The disputed domain name is being used to resolve to a website featuring click-through links that further resolve to the websites of Complainant’s competitors in the financial industry.
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.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i) based on the multiple registrations of its RBSWORLDPAY mark with the UKIPO, the OHIM, the USPTO, and other governmental trademark authorities throughout the world. Moreover, it is not necessary under Policy ¶ 4(a)(i) for Complainant to have registered its RBSWORLDPAY mark in the country of Respondent’s residence. See The Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s <rsbworldpay.com> domain name is confusingly similar to Complainant’s RBSWORLDPAY mark. The <rsbworldpay.com> domain name incorporates the dominant portion of Complainant’s mark with the only variations being the transposition of the letters “s” and “b” in “RBS” and the addition of the generic top-level domain “.com.” The Panel finds that these alterations fail to alleviate the confusing similarities between Complainant’s RBSWORLDPAY mark and Respondent’s <rsbworldpay.com> domain name. See GMAC LLC v. indian domainer, FA 1262254 (Nat. Arb. Forum July 1, 2009) (finding that the respondent’s <gmacsf.com> domain name was confusingly similar to the complainant’s GMAC mark because “. . . Respondent merely transposed the “f” and “s” in the disputed domain name.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s <rsbworldpay.com> domain name is confusingly similar to Complainant’s RBSWORLDPAY mark pursuant to Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <rsbworldpay.com> domain name. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). In these proceedings, the Panel finds that Complainant has presented a sufficient prima facie case. However, Respondent has failed to respond to the allegations against it. Based on this failure, the Panel may choose to accept Complainant’s allegations as true. See 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). The Panel now chooses to examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
According to the WHOIS information, Respondent registered the disputed domain name under the name “Transure Enterprise Ltd c/o Host Master,” which has no apparent relation to Complainant’s RBSWORLDPAY mark. Moreover, there is no evidence in the record to suggest otherwise. Thus, 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 was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s disputed domain name, which resolves to a website featuring click-through links promoting competitors of Complainant, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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 agrees and finds that such use, presumably for financial gain, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.
Furthermore, Complainant contends that Respondent has
engaged in the practice of typosquatting.
Respondent is taking advantage of Internet users attempting to reach
Complainant but mistakenly misspelling Complainant’s RBSWORLDPAY mark by
juxtaposing the letters “b” and “s.” The
Panel finds that Respondent’s engagement in the practice of typosquatting is
evidence that Respondent lacks rights and legitimate interests in the <rsbworldpay.com>
domain name under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also Microsoft Corp. v. Domain Registration
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using a confusingly similar domain name to attract Internet users to Respondent’s website featuring links which resolve to websites of Complainant’s competitors. The Panel concludes that appropriating Complainant’s RBSWORLDPAY mark to divert Internet users is likely disrupting Complainant’s disputed domain name and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent is intentionally attempting to attract Internet users to its confusingly similar domain name for financial gain by creating a likelihood of confusion with Complainant’s RBSWORLDPAY mark. The disputed domain name’s resolving website contains click-through links which promote Complainant’s competitors. The Panel presumes that Respondent is profiting from such use. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Finally, the Panel
finds that Respondent is engaging in typosquatting because Respondent is taking
advantage of a common misspelling of Complainant’s RBSWORLDPAY mark by diverting Internet users to its
website. Thus, the Panel finds this as
evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Canadian
Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and
used the domain name in bad faith because the respondent “created ‘a likelihood
of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s web site or location’. . .
through Respondent’s persistent practice of ‘typosquatting’”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20,
2007) (finding bad faith registration and use of the <microssoft.com>
domain name as it merely misspelled the complainant’s MICROSOFT mark).
Complainant has satisfied 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 <rsbworldpay.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 5, 2009
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