The Royal Bank of Scotland Group plc v. The Auction Scout
Claim Number: FA1005001326061
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 <rbscout.com>,
registered with GoDaddy.com, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2010.
On May 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbscout.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2010 by which Respondent could file a response to the Complaint, via e-mail to all persons and entities listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rbscout.com. Also on May 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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" through submission of a Written Notice, as defined in Rule 1. 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 <rbscout.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbscout.com> domain name.
3. Respondent registered and used the <rbscout.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, is a financial services group providing a wide range of financial services and products, including consumer and commercial lending, credit card services, investment and advisory services, and real estate services. Complainant owns multiple trademark registrations worldwide for the RBS mark, including with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2,004,617 issued January 5, 1996), the European Union Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 97,469 issued March 23, 1998), and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,185,538 issued December 19, 2006), along with 70 other countries/regions worldwide.
Respondent, The Auction Scout, registered the <rbscout.com> domain name on February 18, 2010. The disputed domain name resolves to a web page hosting numerous links to financial products and services that compete with Complainant’s products.
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 worldwide for the RBS mark, including with the UKIPO (e.g., Reg. No. 2,004,617 issued January 5, 1996), the OHIM (e.g., Reg. No. 97,469 issued March 23, 1998), and the USPTO (e.g., Reg. No. 3,185,538 issued December 19, 2006), along with 70 other countries/regions worldwide. The Panel finds that Complainant’s extensive trademark registrations, including registration with such recognized bodies as the USPTO, conclusively proves Complainant’s rights in the RBS mark for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <rbscout.com> domain name is
confusingly similar to Complainant’s RBS mark because the disputed domain name
uses Complainant’s mark in full, combined with the letters “cout” and the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that adding letters to Complainant’s mark is
insufficient to differentiate the disputed domain name from Complainant’s mark
according to Policy ¶ 4(a)(i). See Am.
Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat.
Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was
confusingly similar to the complainant’s AOL mark because “…the addition of a
string of indiscriminate letters to a famous mark in a second level domain does
not differentiate the domain name from the mark.”); see also
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. According to Policy ¶ 4(a)(ii), Complainant must only present a prima facie case before the burden then shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in these proceedings. As Respondent failed to respond to the allegations made against it, the Panel may assume that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2009-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel, however, elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <rbscout.com> domain name, concluding that Respondent therefore lacks rights and legitimate interests. The Panel finds that the WHOIS information does not reflect that Respondent is commonly known by the disputed domain name. The lack of information provided by the WHOIS record, combined with the absence of any further evidence showing that Respondent is commonly known by the disputed domain name, is sufficient to conclude that Respondent lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent’s <rbscout.com> domain name resolves to a directory website listing numerous links that offer financial products and banking services in competition with Complainant. The Panel finds that advertising competing links on a website resolving from the disputed domain name which appropriates Complainant’s mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See 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 confusingly similar 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)); see also 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 confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant alleges that the primary purpose of the <rbscout.com> domain
name is to profit from a revenue-generating list of pay-per-click links. As Respondent’s primary goal is presumably
profit, posting links related to and in competition with Complainant is likely
more lucrative for Respondent since Respondent is using Complainant’s mark to
attract Internet users to its website in the first place. The links to competing financial services and
products posted on Respondent’s website undoubtedly disrupt Complainant’s
business as many Internet users may successfully be diverted to a competitor’s
site if the competitor offers similar products as Complainant. The Panel finds that operating pay-per-click
links to competing financial services websites disrupts Complainant’s business
and illustrates bad faith registration and use according to Policy ¶ 4(b)(iii). See 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).”); see also
Complainant alleges that Respondent uses Complainant’s RBS mark in the <rbscout.com> domain name to attract Internet users seeking Complainant’s financial services and products to Respondent’s site. Complainant asserts that Respondent’s site is designed with the goal only of generating profit for Respondent via click-through fees. By displaying links relating to Complainant’s line of business in the financial services industry, Respondent increases the likelihood that Internet users will be confused about an affiliation between Respondent’s website and Complainant. Posting numerous links relating to financial services also increases the likelihood that Internet users will subsequently click on any of the links since they were initially seeking a financial services provider and intending to reach Complainant’s online presence. The Panel finds that Respondent’s efforts to attract and confuse Internet users with its use of Complainant’s RBS mark and then profit from the misleading use of such mark reveals bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds 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 <rbscout.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 25, 2010
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