The Royal Bank of Scotland Group plc v. Novacek Martin
Claim Number: FA1007001335286
Complainant is The Royal Bank of Scotland Group plc (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbsmorgan.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2010.
On July 19, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD confirmed by e-mail to the National Arbitration Forum that the <rbsmorgan.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD 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 July 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rbsmorgan.com. Also on July 27, 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 August 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <rbsmorgan.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsmorgan.com> domain name.
3. Respondent registered and used the <rbsmorgan.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 that offers consumer and
commercial lending, credit card services, investment and advisory services, and
real estate services. Complainant uses
its RBS mark in connection with these financial products and services. Complainant also holds numerous trademark
registrations around the world for its RBS mark, including registrations with
the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,185,538 registered on December 19, 2006) and with
the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2,004,617 registered on January 5, 1996).
Respondent, Novacek Martin, registered the <rbsmorgan.com> domain name on September 16, 2009. The disputed domain name resolves to a website featuring a directory of third-party links to Complainant’s competitors in the financial services 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.
Complainant asserts rights in the RBS mark through its
numerous registrations of the mark around the world, including with the USPTO (e.g.,
Reg. No. 3,185,538 registered on December 19, 2006) and with the UKIPO (e.g., Reg. No. 2,004,617 registered on
January 5, 1996). The Panel finds these
registrations sufficiently prove Complainant’s rights in the RBS mark pursuant
to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum June 29, 2007)
(“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).”); see also DatingDirect.com Limited v.
Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004) (finding that the panel
recognizes the distinctive nature of the complainant’s DATINGDIRECT.COM mark
through registration with the United Kingdom Patent Office). Furthermore, the Panel finds a complainant
need not have rights in the country in which the respondent operates. See Renaissance Hotel Holdings, Inc. v. Renaissance
Complainant argues
Respondent’s <rbsmorgan.com> domain name is confusingly
similar to its RBS mark. Respondent
fully incorporates Complainant’s mark in the disputed domain name. Respondent then adds the generic term
“morgan” and the generic top-level domain (“gTLD”) “.com” to Complainant’s RBS
mark. The Panel finds the additions do
not negate a finding of confusingly similar.
See Arthur Guinness Son & Co.
(
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first establish Respondent lacks rights and legitimate interests in the <rbsmorgan.com> domain name according to Policy ¶ 4(a)(ii). After Complainant makes this prima facie case, the burden shifts to Respondent to demonstrate it has rights or legitimate interests. The Panel may infer Respondent lacks rights or legitimate interests based on its failure to submit a Response. However, the Panel will analyze the record to determine whether Respondent possess rights or legitimate interests under Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Complainant asserts Respondent is not commonly known by the disputed domain name. Complainant claims it has not authorized Respondent to use its RBS mark in a domain name. In addition, the WHOIS information lists “Novacek Martin” as the registrant of the disputed domain name, which the Panel finds is not similar to the <rbsmorgan.com> domain name. Thus, without evidence to the contrary, the Panel finds Respondent is not commonly known by the <rbsmorgan.com> domain name 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 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).
Complainant also contends Respondent’s disputed domain name does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. Screen shots of Respondent’s resolving website show a directory website that displays hyperlinks with titles such as “Bank of America” and “American Express Bank FSB.” The hyperlinks of Respondent’s resolving website redirect Internet users to third-party websites, many of which provide financial products and services that compete with those Complainant offers. Furthermore, Complainant alleges Respondent profits from its use of the disputed domain name through the receipt of click-through fees. Based on the evidence in the record and Complainant’s assertions, the Panel finds Respondent is using a confusingly similar domain name to redirect Internet users to third-party competing websites in order to profit from click-through fees. Accordingly, the Panel finds Respondent is not using the disputed domain name to make 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); 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 finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent is using the disputed domain name to reroute Internet users seeking its products and services to Respondent’s website and, subsequently, redirecting online consumers to Complainant’s competitors. The Panel agrees. Therefore, the Panel finds Respondent’s disputed domain name disrupts Complainant’s business, which constitutes registration and use in bad faith 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Additionally, Complainant claims Respondent is intentionally
attempting to attract Internet users to its website, for commercial gain, by
creating a likelihood of confusion with Complainant’s RBS mark as to the
source, sponsorship, affiliation, or endorsement of Respondent’s site. As previously discussed, Respondent uses a
confusingly similar domain name to reroute Internet users to its website so
that it can receive click-through revenue.
Consequently, the Panel finds Respondent’s behavior qualifies as
registration and use in bad faith under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll.
Dist. v. College.com, LLC, FA 536190 (Nat. Arb.
Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through
fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical
to Complainant’s
The Panel finds 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 <rbsmorgan.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 30, 2010
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