The Royal Bank of Scotland Group plc and Coutts & Co. v. John Roberts
Claim Number: FA0602000638985
Complainants are The Royal Bank of Scotland Group plc and Coutts & Co. (collectively, “Complainant”), represented by James A. Thomas, of Parker Poe Adams & Bernstein LLP, Wachovia Capitol Center, 150 Fayetteville Street Mall, Suite 1400, Post Office Box 389, Raleigh, NC 27602. Respondent is John Roberts (“Respondent”), 12 wel court Queens magret Groove, islington, LO se58un, GB.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <coutts-co.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2006.
On February 3, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <coutts-co.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 2006 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@coutts-co.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 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant, founded in 1727, is an international financial services company.
Coutts & Co is the international private banking arm of Complainant.
Complainant’s primary services include consumer and commercial lending, credit card services, real estate, and investment advice.
Complainant has registered the COUTTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 2,098,866 and 2,096,845 both issued April 3, 1996).
In the United Kingdom, Complainant has also registered the COUTTS & CO. mark (Reg. No. 1,281,340 issued July 26, 1991; Reg. No. 1,281,344 issued November 17, 1989; Reg. No. 1,371,001 issued February 7, 1992).
Complainant registered the <coutts.com> domain name on January 28, 1995.
Respondent registered the <coutts-co.com> domain name on October 3, 2005.
Respondent’s domain name resolves to a website virtually identical in appearance to Complainant’s website, in that, among other things, the website displays Complainant’s logo and links to the contact information of persons associated with Complainant.
Respondent’s <coutts-co.com> domain name is confusingly similar to Complainant’s COUTTS mark.
Respondent does not have any rights or legitimate interests in the <coutts-co.com> domain name.
Respondent registered and uses the <coutts-co.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the COUTTS mark by
registering the mark with the USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.” See also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003): “Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”
Respondent’s <coutts-co.com> domain name is
confusingly similar to Complainant’s COUTTS mark within the meaning of Policy ¶
4(a)(i), because it merely adds a hyphen and the generic term “co” to the end
of the mark. Panels have held that the
addition of punctuation marks and generic words do not distinguish a domain
name from a complainant’s mark. See, for example, Health Devices Corp. v.
Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003): “[T]he
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).” See
also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb.
Forum Mar. 13, 2000) (finding that the respondent’s domain name
<marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT
mark). Therefore, the <coutts-co.com>
domain name is confusingly similar to Complainant’s COUTTS mark.
The Panel therefore
finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <coutts-co.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.” See also Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, an assertion by a complainant that a respondent has no right or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest exists).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights to or legitimate interests in the <coutts-co.com> name. See 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.” See also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent has no rights or legitimate interests in a domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).
Nonetheless, the Panel may examine
the record to determine if Respondent has rights or legitimate interests in its
domain name under Policy ¶ 4(c).
Respondent has registered the domain name under the name “John Roberts,” and there is no evidence in the record suggesting that Respondent is commonly known by the <coutts-co.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that a respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.” See also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because a respondent was not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Moreover, Complainant assets, and Respondent does not deny,
that Respondent is using the <coutts-co.com> domain name, which
includes Complainant’s COUTTS mark, to operate a website displaying information
identical to Complainant’s website, including Complainant’s logo and links to
the contact information of persons associated with Complainant. From this it is evident that Respondent is
thus attempting to pass itself off as Complainant by diverting Internet users
to its own website, presumably for the purpose of gathering personal
information from Complainant’s customers for its commercial gain. Respondent’s use of the disputed domain name
for such a purpose does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii). See
Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003): “It is neither
a bona fide offerings [sic] of goods or services, nor an example of a
legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when
the holder of a domain name, confusingly similar to a registered mark, attempts
to profit by passing itself off as Complainant . . . .”) See also Am.
Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003)
(finding that a respondent’s attempt to pass itself off as a complainant online
is a 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). Further see HOPE worldwide,
Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that
a domain name that “is confusingly similar to Complainant’s mark, redirects
Internet users to a website that imitates Complainant’s website, and is used to
acquire personal information from Complainant’s potential associates
fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or
(iii)).
For all of these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
It is clear that Respondent has registered and is using the
<coutts-co.com> domain name in bad faith pursuant to Policy ¶
4(b)(iv), because the disputed domain name resolves to a website that looks
similar to Complainant’s website and displays Complainant’s mark. Respondent is thus attempting to pass itself
off as Complainant. And, by diverting Internet users seeking Complainant’s
services to its own website, Respondent is taking advantage of the likelihood
of confusion between Respondent’s domain name, the website content, and
Complainant’s COUTTS mark, and capitalizing on the goodwill associated with the
mark, for its own commercial gain. See H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through a
respondent’s registration and use of an infringing domain name intentionally to
attract Internet users to its fraudulent website by using a complainant’s
famous marks and likeness); see also Entrepreneur Media, Inc. v.
Smith, 279 F.3d 1135, 1148 (9th Cir. 2002): "While an intent to
confuse consumers is not required for a finding of trademark infringement,
intent to deceive is strong evidence of a likelihood of confusion." Further see Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with a complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain).
In
addition, by operating a website that imitates Complainant’s website, Respondent
may be attempting fraudulently to gather personal information from
Complainant’s customers who may believe that Respondent’s website is affiliated
with Complainant. Therefore, Respondent
is engaged in “phishing,” which constitutes bad faith registration and use of a
domain name. See Juno Online Servs., Inc. v. Iza, FA
245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is
confusingly similar to Complainant’s mark, redirects Internet users to a
website that imitates Complainant’s billing website, and is used to
fraudulently acquire personal information from Complainant’s clients” is
evidence of bad faith registration and use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat.
Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because a
respondent used a disputed domain name to redirect Internet users to a website
that imitated a complainant’s website fraudulently to acquire personal
information from the complainant’s clients).
Finally under this heading, it is evident that Respondent
registered the contested domain name with either actual or constructive
knowledge of Complainant’s rights in the COUTTS mark by virtue of Complainant’s
prior registration of that mark with the pertinent authorities in both the
United States and the United Kingdom.
Registration of a confusingly similar domain name despite such actual or
constructive knowledge evidences bad faith registration and use of the domain
name pursuant to Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002); see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Therefore, it is Ordered that the <coutts-co.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 20, 2006
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