The Royal Bank of Scotland Group plc v. Prompt Advertising Solutions
Claim Number: FA1009001348140
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas, North Carolina, USA. Respondent is Prompt Advertising Solutions (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rbsmortgagerelief.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2010.
On September 23, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsmortgagerelief.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 September 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@rbsmortgagerelief.com by e-mail. Also on September 24, 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 October 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <rbsmortgagerelief.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsmortgagerelief.com> domain name.
3. Respondent registered and used the <rbsmortgagerelief.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, owns the exclusive rights to its RBS mark which it uses in connection with its financial services business, including; online banking, and mortgage and loan offerings. Complainant holds countless trademark registrations worldwide and with the United States Patent and Trademark Office (“USPTO”) for its RBS mark (e.g., Reg. No. 3,185,538 issued December 19 2006).
Respondent, Prompt Advertising Solutions, registered the <rbsmortgagerelief.com> domain name on May 21, 2010. The disputed domain name resolves to a website which features an “application” for loan offers that, upon the Internet user entering their information, redirects them to various competitors of Complainant. The website also displays information on mortgages, loans, and loan rates.
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 contends it has established rights in the RBS mark. The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark. 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the RBS mark through Complainant’s registrations with the USPTO (e.g., Reg. No. 3,185,538 issued December 19 2006).
Complainant contends Respondent’s <rbsmortgagerelief.com> domain name is confusingly similar to Complainant’s RBS mark. The disputed domain name contains Complainant’s entire RBS mark, adds the descriptive words “mortgage relief” and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of terms descriptive of a complainant’s business and the addition of a gTLD do not sufficiently distinguish a disputed domain name from a complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Am. Online, Inc. v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing similarity where “[t]he domain name includes Complainant’s mark with the addition of the descriptive word “hot,” which does not dispel any confusion arising from the inclusion of Complainant’s mark in the domain name.”). Therefore, the Panel concludes that Respondent’s <rbsmortgagerelief.com> domain name is confusingly similar to Complainant’s RBS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <rbsmortgagerelief.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Complainant makes a prima facie case. Due to Respondent’s failure to respond, the Panel may infer that Respondent does not have rights or legitimate interests in the <rbsmortgagerelief.com> domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will still examine the record to determine whether or not Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
When there is no evidence or information set forth in the record to indicate that a respondent is commonly known by a disputed domain name, the Panel may conclude that Respondent has not established any rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). Such is the case at present. Complainant asserts that Respondent is not authorized to use the RBS mark. The WHOIS information identifies the domain name registrant as “Prompt Advertising Solutions.” There is no other evidence to show that Respondent is commonly known by the <rbsmortgagerelief.com> domain name. Therefore, the Panel may conclude that Respondent has not established any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent uses the <rbsmortgagerelief.com> domain name to offer a “loan application” that redirects Internet users to websites of Complainant’s competitors. The Panel finds that this competing use 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 ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Internet users, likely searching for Complainant’s official site, mistakenly reach Respondent’s site where there is an input field for a “loan application.” When Internet users enter their information into this field, they are redirected to various sites of Complainant’s competitors. The Panel finds this use is a disruption of Complainant’s business and is in bad faith pursuant 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 Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses the <rbsmortgagerelief.com> domain name to offer a “loan application” which redirects Internet users to sites of Complainant’s competitors. Respondent likely capitalizes on the disputed domain name’s confusing similarity with Complainant’s RBS mark, as Internet users are likely to input their information thinking they are at Complainant’s reputable site. When Internet users enter this information, Respondent likely gains a referral fee from their redirection to sites of Complainant’s competitors. The Panel finds that Respondent’s creation of confusion in an attempt to commercially gain is in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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).”).
The Panel finds Policy ¶ 4(a)(iii) is 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 <rbsmortgagerelief.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 5, 2010
National Arbitration Forum
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