The Royal Bank of Scotland Group plc v. Felix Cooper
Claim Number: FA0909001286249
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 <rbsmails.net>, registered with Tucows 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 21, 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@rbsmails.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <rbsmails.net> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsmails.net> domain name.
3. Respondent registered and used the <rbsmails.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, founded
in 1727, is one of world’s leading financial services groups. Complainant offers a wide range of financial
products and services, including consumer and commercial lending, credit card
services, investment and advisory services, and real estate services. Complainant offers these services under the
RBS mark. Complainant holds numerous
registrations of the RBS mark with various governmental trademark authorities,
including the United Kingdom Intellectual Property Office (“UKIPO”) (e.g.,
2,004,617 issued
Respondent, Felix Cooper, registered the <rbsmails.net>
domain name on
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 submitted evidence of its numerous
registrations of the RBS mark with various governmental authorities throughout
the world including the UKIPO (e.g., 2,004,617 issued
Respondent’s <rbsmails.net> domain name contains Complainant’s entire RBS mark, adds the generic term “mails,” and adds the generic top-level domain (“gTLD”) “.net.” The Panel finds that the <rbsmails.net> domain name is confusingly similar to Complainant’s RBS mark under Policy ¶ 4(a)(i) because none of Respondent’s additions to Complainant’s mark sufficiently distinguish the disputed domain name from Complainant’s mark. 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 [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); 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).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent
lacks rights and legitimate interests in the disputed domain name. Upon
making such a showing, the burden then shifts to Respondent and Respondent must
establish that it has rights or legitimate interests in the disputed domain
name. The Panel finds that Complainant
has sufficiently made its prima facie
showing under Policy ¶ 4(a)(ii). The
burden now shifts to Respondent, from which no response was received. See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
The WHOIS information for the <rbsmails.net> domain name lists “Felix Cooper” as the registrant, which does not indicate that
Respondent is commonly known by the disputed domain
name. Respondent has not offered any
evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron
Corp. v. Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was
not commonly known by the <shoredurometer.com> and <shoredurometers.com>
domain names because the WHOIS information listed Andrew Kaner c/o Electromatic
a/k/a Electromatic Equip't as the registrant of the disputed domain names and
there was no other evidence in the record to suggest that the respondent was
commonly known by the domain names in dispute); see also M. Shanken Commc’ns
v. WORLDTRAVELERSONLINE.COM,
FA 740335 (Nat. Arb. Forum
Respondent’s <rbsmails.net>
domain name resolves to a website that contains hyperlinks to unrelated
third-party websites. The Panel presumes
that Respondent receives click-through fees for these hyperlinks. Therefore, the Panel finds that Respondent’s
use of the disputed domain name is 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). See Constellation
Wines
Respondent is using the <rbsmails.net>
domain name to circulate fraudulent e-mails, purportedly from Complainant, to
collect personal information from the e-mail recipients. Accordingly, the Panel finds that
Respondent’s use of the <rbsmails.net>
domain name for a phishing scheme is 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). 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. Nelson, FA 241972 (Nat. Arb.
Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme
to deceive Internet users into providing their credit card and personal
information is not a bona fide offering
of goods or services nor a legitimate noncommercial or fair use).
Moreover, the Panel finds that Respondent’s use of the
disputed domain name to send the fraudulent e-mails that appear to be from
Complainant is an attempt to pass itself off as Complainant. The Panel further finds that Respondent’s
attempt to pass itself as Complainant is further evidence that Respondent lacks
rights and legitimate interests in the <rbsmails.net>
domain name under Policy ¶ 4(a)(ii). See Am.
Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003)
(finding that the respondent attempts to pass itself off as the complainant
online, which is blatant unauthorized use of the complainant’s mark and is
evidence that the respondent has no rights or legitimate interests in the
disputed domain name); see also Mortgage
Research Center LLC v. Miranda, FA
993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case
is also attempting to pass itself off as [the] complainant, presumably for
financial gain, the Panel finds the respondent is not using the
<mortgageresearchcenter.org> domain name for 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds
that Respondent’s uses of the confusingly similar <rbsmails.net> domain name to link to
third-party unrelated websites and to phish for personal information creates a
likelihood of confusion as to Complainant’s affiliation with the disputed
domain. The Panel finds that
Respondent’s commercial gain from this likelihood of confusion through it
presumed collection of click-through fees or fraudulent of us of personal
information constitutes bad faith registration and use under Policy ¶
4(b)(iv). See The Ass’n of Junior
Leagues Int’l Inc. v. This Domain Name My Be For
Furthermore, the Panel finds that Respondent’s use of the <rbsmails.net> domain name for its
phishing scheme is further evidence of bad faith registration and use under
Policy ¶ 4(a)(iii). See Hess Corp. v. GR,
FA 770909 (Nat. Arb. Forum
Finally, Respondent is using the <rbsmails.net> domain name to circulate fraudulent e-mails that purport to be from Complainant. The Panel finds that Respondent’s attempt to pass itself off as Complainant is also evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbsmails.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 6, 2009
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