The Royal Bank of Scotland Group plc v. Mark Segal c/o Namegiant.com
Claim Number: FA0908001277679
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 <rbsgroup.net>, registered with Enom, 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 August 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2009.
On August 5, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsgroup.net> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 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@rbsgroup.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 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, founded in 1727,
is one of the world’s leading financial services groups.
Complainant uses its RBS trade
mark in promoting and providing banking, financial planning, insurance, and
brokerage services worldwide.
Complainant holds
registrations of its RBS trade mark with governmental trademark authorities,
including the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No.
2,004,617, issued January 5, 1996).
Complainant has not
authorized Respondent to use the RBS mark.
Respondent registered the <rbsgroup.net> domain name on August 7, 2003.
The disputed domain name resolves to a website that displays links to third-party websites that offer financial services competing with the business of Complainant.
The resolving website also features a banner ad stating that the disputed domain name may be for sale.
Respondent’s <rbsgroup.net> domain name is confusingly similar to Complainant’s RBS mark.
Respondent does not have any rights or legitimate interests in the <rbsgroup.net> domain name.
Respondent registered and used the <rbsgroup.net> 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 trade mark 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 has established rights in the RBS trade mark under Policy ¶ 4(a)(i) by virtue of the registration of its mark with the pertinent governmental trademark authorities. See, for example, 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 The Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006): “Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”
Respondent’s <rbsgroup.net> domain name contains Complainant’s RBS mark in its entirety, and merely adds the generic term “group” and the generic top-level domain “.net.” These additions to Complainant’s mark do not sufficiently distinguish the disputed domain name from Complainant’s mark for purposes of the proper application of he Policy. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity or confusing similarity for purposes of the
Policy despite the addition of other words to such marks.
See also Warner Bros.
Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21,
2004) (finding that the addition of the generic term “collection” to a complainant’s
HARRY POTTER mark failed to distinguish the domain name from the mark); further
see Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a
domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that the <rbsgroup.net> domain name is
confusingly similar to Complainant’s RBS mark under Policy ¶ 4(a)(i).
At the outset, Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name. The burden then shifts to Respondent, who must establish that it has such rights or interests. See, for example, Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Complainant has sufficiently made out a prima facie showing under Policy ¶ 4(a)(ii), while Respondent, for its part, has failed to respond to the Complaint. We are therefore free to conclude that Respondent has no rights or interests in the dispute domain name cognizable under the Policy. 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).
We will nonetheless examine the record before us to determine if there is in it any basis for concluding that Respondent has rights to or interests in the contested domain name sufficient to satisfy the requirements of the Policy.
We begin by noting that the pertinent WHOIS information lists Respondent as “Mark Segal c/o Namegiant.com,” which does not indicate that Respondent is commonly known by the <rbsgroup.net> domain name. Moreover, Respondent does not deny the allegation of the Complaint to the effect that Complainant has not authorized Respondent to use the RBS mark. Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests in a contested domain where a respondent was not commonly known by the mark there in issue and never applied for a license or permission from a complainant to use the trademarked name).
We also observe that there is no dispute as to Complainant’s assertion that Respondent’s <rbsgroup.net> domain name resolves to a website that features links to competing financial services websites. We may presume from the circumstances presented that Respondent receives click-through fees for visits to the web sites associated with these links. Therefore, we conclude that Respondent’s use of the disputed domain name as alleged does not represent a bona fide offering of good or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a challenged domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was not 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)).
Finally under this heading, we take note of the undenied allegation of the Complaint that the website resolving from the <rbsgroup.net> domain name features a banner ad stating that the disputed domain name may be for sale. We take this banner ad to be an offer to sell the disputed domain name , which stands as further evidence that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to a complainant suggests that that respondent has no rights to or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that, under the circumstances there in evidence, a respondent’s apparent willingness to dispose of a disputed domain name suggested that it lacked rights to or legitimate interests in the domain).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s banner ad which offers to sell the disputed domain name, constitutes proof of bad
faith registration and use of the contested domain under Policy ¶ 4(b)(i). See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003):
Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).
See also Little Six, Inc. v.
Domain For
Also on the point of bad faith, Complainant asserts, and Respondent does not deny, that Respondent has uses the <rbsgroup.net> domain name and its resolving website to display links to third-party websites that offer competing financial services. We conclude therefore that Respondent’s conduct disrupts Complainant’s financial services business, and that such disruption represents evidence of bad faith registration and use of the disputed domain pursuant to 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 domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also 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 domains to operate a commercial search engine with links to the products of a complainant’s competitors).
Moreover, because Respondent presumably uses the <rbsgroup.net>
domain name to collect click-through
fees from the aforementioned links, we conclude that Respondent’s use of the
disputed domain name in this manner creates a likelihood of confusion as to
Complainant’s possible affiliation with the disputed domain name, and that
Respondent’s presumed commercial gain from this likelihood of confusion evidences
bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using it to offer links to third-party websites that offered services similar to those offered by a complainant).
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 <rbsgroup.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 15, 2009
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