The Royal Bank of Scotland Group plc v. 123register.com c/o Aravind Kumar
Claim Number: FA0602000649493
Complainant is The Royal Bank of Scotland Group plc (“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 123register.com c/o Aravind Kumar (“Respondent”), Fourth Floor, Pancha Sheela Towers, Park Lane, Secunderabad, WA 500003, IN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <royalscotbank.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2006.
On February 22, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <royalscotbank.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 March 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 27, 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@royalscotbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 3, 2006, 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." 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 <royalscotbank.com> domain name is confusingly similar to Complainant’s ROYAL BANK OF SCOTLAND mark.
2. Respondent does not have any rights or legitimate interests in the <royalscotbank.com> domain name.
3. Respondent registered and used the <royalscotbank.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 founded in 1727. Complainant currently employs 140,000 people in numerous countries on four continents. In February 2005 Complainant ranked fifth in the world in total market capitalization. Complainant has registered the ROYAL BANK OF SCOTLAND mark with trademark authorities in several countries, including the United Kingdom (Reg. No. 1,283,138 issued October 1, 1986) and India (Reg. No. 372437 issued September 24, 1996). Complainant also holds numerous domain name registrations that reflect its ROYAL BANK OF SCOTLAND mark, including <royalbankscotland.com>, <rbs.com> and <royalbankscot.co.uk>.
Respondent registered the <royalscotbank.com> domain name on November 5, 2005. Internet users who accessed that domain name were originally directed to an imitation of the website Complainant owned at the <rbs.com> domain name. Complainant asserts that Respondent used the website to obtain cash payments from job seekers interested in obtaining positions at a bank, which did not in fact exist. Respondent’s website contained several links by which Internet users could contact persons associated with Respondent’s website. Respondent’s website is no longer active, and now displays a message stating that it is “under scrutiny for fraudulent activities.”
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 has registered the ROYAL BANK OF SCOTLAND mark with trademark authorities in India and the United Kingdom and has, therefore, established rights in this mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Respondent’s <royalscotbank.com> domain name rearranges three of the terms in Complainant’s mark, and abbreviates one of the terms. The Panel finds that inverting words in Complainant’s mark does not adequately distinguish Respondent’s domain name from Complainant’s mark. In addition, abbreviating a term in Complainant’s mark fails to distinguish the domain name from the mark. See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also Perot Systems Corp. v. Hall, FA 95310 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent’s <perotsys.com> domain name was confusingly similar to the complainant’s PEROT SYSTEMS mark because it was clearly an abbreviation of or reference to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has presented a prima facie case, and will consider whether the evaluation of the evidence on record demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent originally used the <royalscotbank.com> domain name, which is confusingly similar to Complainant’s ROYAL BANK OF SCOTLAND mark, to present Internet users with a website that was nearly identical to Complainant’s website. The Panel determines that Respondent registered the disputed domain name in an attempt to pass itself off as Complainant. Such use of the domain name is not 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). 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 the respondent attempts to pass itself off as the complainant online, which is 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).
There is no evidence on record that Respondent is affiliated with Complainant or that Respondent has ever been commonly known by the <royalscotbank.com> domain name. The Panel determines that this information is inadequate to establish that Respondent is not commonly known by the disputed domain name, and that Respondent has no rights or legitimate interests in this name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain name and its original website are
confusingly similar to Complainant’s mark and website, and Complainant has
provided evidence that Respondent was using its domain name and website to extract
money from unwitting job seekers. There
is no indication that Respondent took any measures, such as posting a
disclaimer, to mitigate the confusion between it’s website and Complainant’s. The Panel determines that Respondent is
attempting to pass itself off as Complainant for commercial gain. Such use of the disputed domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat.
Arb. Forum Aug. 23, 2001) (holding that Respondent’s failure to post a
disclaimer on a website that was designed to foster a likelihood of confusion
with Complainant’s mark was evidence that the domain name was being used in bad
faith); see also Vivendi Universal Games v. Ballard, FA 146621
(Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of
the complainant’s website was used at the domain name in order to facilitate
the interception of the complainant’s customer’s account information, the respondent’s
behavior evidenced bad faith use and registration of the domain name).
The Panel finds that 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 <royalscotbank.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 14, 2006
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