The Royal Bank of Scotland Group plc and National Westminster Bank plc v. Pritpal Jittla
Claim Number: FA0603000660550
Complainants are The Royal Bank of Scotland Group plc and National Westminster Bank plc (collectively, “Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC 27602. Respondent is Pritpal Jittla (“Respondent”), 58 Dalby Road LE7 7DJ, Leicester, GB.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <rbs-europe.com> and <natwest-europe.com>, registered with Schlund+Partner Ag.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 20, 2006.
On March 15, 2006, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <rbs-europe.com> and <natwest-europe.com> domain names are registered with Schlund+Partner Ag and that Respondent is the current registrant of the names. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 11, 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@rbs-europe.com and postmaster@natwest-europe.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 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rbs-europe.com> and <natwest-europe.com> domain names are confusingly similar to Complainant’s RBS and NATWEST marks.
2. Respondent does not have any rights or legitimate interests in the <rbs-europe.com> and <natwest-europe.com> domain names.
3. Respondent registered and used the <rbs-europe.com> and <natwest-europe.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, is an international financial services company that has been conducting business since 1727. The Royal Bank of Scotland Group plc offers a wide variety of financial products and services, and has offices in numerous countries on four continents. Complainant The Royal Bank of Scotland Group plc holds several trademark registrations throughout the world for its RBS mark, including a registration with the United Kingdom Patent Office. Complainant The Royal Bank of Scotland Group plc first registered its RBS mark with the United Kingdom Patent Office on May 1, 1996 (Reg. No. 2,004,617).
Complainant National Westminster Bank plc is a retail banking institution providing banking and financial services to individuals and small businesses primarily throughout the United Kingdom, and operating under the name “NatWest.” Complainant National Westminster Bank plc holds several trademark registrations for its NATWEST mark throughout the world, including registrations with the United Kingdom Patent Office and the United States Patent and Trademark Office (“USPTO”). Complainant National Westminster Bank plc first registered its NATWEST mark with the USPTO on June 7, 1983 (Reg. No. 1,241,454).
Complainant The Royal Bank of Scotland Group plc is the owner of Complainant National Westminster Bank plc, and has submitted evidence of this ownership relationship. Hereinafter, both Complainant The Royal Bank of Scotland Group plc and Complainant National Westminster Bank plc will be referred to collectively as “Complainant.”
Respondent registered both of the <rbs-europe.com> and <natwest-europe.com> domain names on August 15, 2005. Respondent’s domain names resolve to parking pages that feature links to various commercial websites.
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 sufficiently demonstrated rights in the RBS
and NATWEST marks through its registration of the marks with the United Kingdom
Patent Office or the USPTO. See Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction); see also VICORP Restaurants, Inc. v. Triantafillos,
FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights
in the BAKERS SQUARE mark by registering it with the United States Patent and
Trademark Office (“USPTO”).”); see also 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.”).
Complainant has also demonstrated
that Respondent’s disputed domain names are confusingly similar to
Complainant’s RBS and NATWEST marks.
Respondent’s <rbs-europe.com> domain name
incorporates Complainant’s RBS mark in its entirety, adding a hyphen, the
geographic term “europe,” and the generic top-level domain “.com.” Similarly, Respondent’s <natwest-europe.com>
domain name consists of Complainant’s NATWEST mark in its entirety, with the
additions of a hyphen, the word “europe,” and the generic top-level domain
“.com.” Consequently, the additions to
Complainant’s marks in Respondent’s <rbs-europe.com> and <natwest-europe.com> domain
names do not avoid confusing similarity between Complainant’s marks and
Respondent’s disputed domain names pursuant to Policy ¶ 4(a)(i). See 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 Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(finding that hyphens and top-level domains are irrelevant for purposes of the
Policy); see also Net2phone Inc. v. Netcall SAGL, D2000-0666
(WIPO Sept. 26, 2000) (finding that the respondent’s domain name
<net2phone-europe.com> is confusingly similar to the complainant’s mark
because “the combination of a geographic
term with the mark does not prevent a domain name from being found confusingly
similar”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially demonstrate that Respondent does not have rights or legitimate interests in connection with the disputed domain names. Once Complainant establishes a prima facie case, the burden of proof then shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has established a prima facie case, and will evaluate whether the evidence on record demonstrates rights or legitimate interests for Respondent in accord with Policy ¶ 4(c).
The evidence on record does not indicate that Respondent is commonly known by either the <rbs-europe.com> or <natwest-europe.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use either Complainant’s RBS or NATWEST marks. Moreover, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Furthermore, Complainant contends that Respondent’s <rbs-europe.com> and <natwest-europe.com> domain names resolve to the Registrar’s “parking” or holding page, which provides links to various commercial websites offering domain name registration services, from which Respondent presumably receives click-through fees. Consequently, the Panel finds that Respondent’s use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business 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).”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, Complainant contends that Respondent’s <rbs-europe.com> and <natwest-europe.com> domain names resolve to websites providing links to other 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). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
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 <rbs-europe.com> and <natwest-europe.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 2, 2006
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