The Royal Bank of Scotland Group plc and National Westminster Bank plc v. Ho Nim
Claim Number: FA1002001306772
Complainant is The Royal Bank of
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <rbsbroking.com>,
<rbsesporte.com>, <searchnatwest.com>, <natwestcommercial.com>,
<bnatwest.com>, <natwest-co-uk.com>, <natwest-offshore.com>,
<natweststockbrockers.com>, and <natwestyourpointsprivate.com>,
registered with Above, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 8, 2010.
On February 11, 2010, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsbroking.com>, <rbsesporte.com>, <searchnatwest.com>, <natwestcommercial.com>, <bnatwest.com>, <natwest-co-uk.com>, <natwest-offshore.com>, <natweststockbrockers.com>, and <natwestyourpointsprivate.com> domain names are registered with Above, Inc. and that Respondent is the current registrant of the names. 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 February 23, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 2010 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@rbsbroking.com, postmaster@rbsesporte.com, postmaster@searchnatwest.com, postmaster@natwestcommercial.com, postmaster@bnatwest.com, postmaster@natwest-co-uk.com, postmaster@natwest-offshore.com, postmaster@natweststockbrockers.com, and postmaster@natwestyourpointsprivate.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2010, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rbsbroking.com> and <rbsesporte.com> domain names are confusingly similar to Complainant’s RBS mark. Respondent’s <searchnatwest.com>, <natwestcommercial.com>, <bnatwest.com>, <natwest-co-uk.com>, <natwest-offshore.com>, <natweststockbrockers.com>, and <natwestyourpointsprivate.com> domain names are confusingly similar to Complainant’s NATWEST mark.
2. Respondent does not have any rights or legitimate interests in the <rbsbroking.com>, <rbsesporte.com>, <searchnatwest.com>, <natwestcommercial.com>, <bnatwest.com>, <natwest-co-uk.com>, <natwest-offshore.com>, <natweststockbrockers.com>, and <natwestyourpointsprivate.com> domain names.
3. Respondent registered and used the <rbsbroking.com>, <rbsesporte.com>, <searchnatwest.com>, <natwestcommercial.com>, <bnatwest.com>, <natwest-co-uk.com>, <natwest-offshore.com>, <natweststockbrockers.com>, and <natwestyourpointsprivate.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank
of Scotland Group plc, owns Complainant, National Westminster Bank plc. Complainants have joined together as one for
this proceeding and will hereinafter be referred to as “Complainant.” Complainant is a leading provider of financial services
throughout the world, including consumer and commercial lending, personal and
business banking, credit card services, investment and advisory services, and
real estate services. Complainant owns
multiple trademark registrations for the RBS and related marks, including with
the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2,004,617 issued January 5, 1996), the EU Office for
Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 000,097,469 issued March 23, 1998), and the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,185,538
issued December 19, 2006) and many other countries worldwide. Complainant also owns multiple trademark
registrations for the NATWEST and related marks, including with the United
Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 1,021,601 filed December 3, 1973), the EU Office for
Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 004,319,067 issued April 18, 2006), and the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,241,454 issued June 7, 1983) and many other
countries worldwide.
Respondent, Ho Nim,
registered the disputed domain names on the following dates: <rbsbroking.com>
on November 10, 2009; <rbsesporte.com>
on November 16, 2009; <searchnatwest.com>
on December 11, 2009; <natwestcommercial.com>
on December 5, 2009; <bnatwest.com>
on November 15, 2009; <natwest-co-uk.com>
on November 29, 2009; <natwest-offshore.com>
on November 27, 2009; <natweststockbrokers.com>
on November 16, 2009; and <natwestyourpointsprivate.com>
on November 30, 2009. Respondent’s
disputed domain names all resolve to websites featuring a directory of links to
third-party hosted websites, many of which compete with services or products
offered by Complainant.
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 owns multiple trademark registrations for the RBS and NATWEST marks with the UKIPO, the OHIM, the USPTO and other countries worldwide (e.g., U.S. Reg. Nos. 3,185,538 issued December 19, 2006 and 1,241,454 issued June 7, 1983, respectively). The Panel finds that Complainant’s trademark registrations with the USPTO and various other trademark authorities around the world are sufficient to establish Complainant’s rights in the RBS and NATWEST marks, even when Complainant’s marks are registered in a country other than where Respondent lives or operates. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that the following of Respondent’s
disputed domain names are confusingly similar to Complainants’ RBS mark: <rbsbroking.com>
and <rbsesporte.com>. Both disputed domain names contain Complainant’s
mark and add a generic term (“broking” or “esporte”) and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that adding a generic term to Complainant’s mark fails to prevent confusing
similarity under Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (
Complainant argues that the following of Respondent’s
disputed domain names are confusingly similar to Complainant’s NATWEST
mark: <searchnatwest.com>, <natwestcommercial.com>,
<natweststockbrokers.com>,
<natwestyourpointsprivate.com>,
<natwest-offshore.com>, <natwest-co-uk.com>, and <bnatwest.com>. All of these
disputed domain names include Complainant’s complete NATWEST mark and add one
or more of the following elements: 1) a
generic term, such as “search,” “commercial,” etc., 2) a hyphen, 3) an
additional letter, and/or 4) the gTLD “.com.”
The Panel finds that adding a generic term to Complainant’s mark does
not sufficiently differentiate the disputed domain name from Complainant’s mark
for the purposes of Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks and legitimate interests in the disputed domain names. According to Policy ¶ 4(a)(ii), Complainant is required to present a prima facie case supporting that argument; once this burden has been met, the burden shifts to Respondent to demonstrate that it does have rights and legitimate interests in the disputed domain names. The Panel finds that Complainant has adequately presented a prima facie case in these proceedings, and the burden has accordingly shifted to Respondent. Respondent, however, has not met this burden due to its failure to respond. As a result, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain names. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also 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.”). The Panel, however, elects to review the evidence presented in light of the Policy ¶ 4(c) in order to determine whether Respondent possesses any rights or legitimate interests in the disputed domain names.
Complainant asserts that Respondent is not commonly known by
the disputed domain names since the WHOIS information for the disputed domain
names lists the registrant for all nine disputed domain names as “Ho Nim.” The Panel finds that the lack of nominal
association between the Respondent and the disputed domain names as evidenced
by the WHOIS information demonstrates that Respondent is not commonly known by
the disputed domain names and accordingly has no rights and legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also
Respondent’s disputed domain names all redirect Internet users to directory websites advertising an array of third-party web pages, including many that compete with Complainant. The Panel finds that such use of the disputed domain names does not comport with the requirement of a bona fide offering or goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s disputed domain names all resolve to web pages featuring commercial links to other websites and companies, many of which compete with Complainant. Diverting Internet users to such pages disrupts Complainant’s business because Internet users may be distracted from their original intention to seek Complainant and continue on to a competitor’s site instead. The Panel finds that Respondent’s efforts to divert Internet users and disrupt Complainant’s business reveal bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
Respondent incorporates Complainant’s marks in the disputed domain names in order to attract Internet users seeking Complainant. This attraction generates higher traffic to Respondent’s websites, resulting in increased profit to Respondent through “pay-per-click” fees when any of the Internet users click on the displayed links. The Panel finds that this situation clearly fits within the attraction-for-commercial-gain element of Policy ¶ 4(b)(iv) and therefore constitutes bad faith registration and use on the part of Respondent. See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
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 <rbsbroking.com>, <rbsesporte.com>, <searchnatwest.com>, <natwestcommercial.com>, <bnatwest.com>, <natwest-co-uk.com>, <natwest-offshore.com>, <natweststockbrockers.com>, and <natwestyourpointsprivate.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 6, 2010
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