The Royal Bank of Scotland Group plc v.
rbspayments
Claim Number: FA0606000728805
PARTIES
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., Wachovia Capitol Center, 150 Fayetteville Street Mall, Suite 1400, Post Office Box 389, Raleigh, NC 27602. Respondent is rbspayments (“Respondent”), 471 Moscow St., San Francisco, CA 94112.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rbspayments.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 7, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 9, 2006.
On June 9, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <rbspayments.com> domain name is
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified
that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names
Worldwide 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 June 13, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 3, 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@rbspayments.com by e-mail.
A timely Response was received and determined to be complete on June
21, 2006.
On June 27, 2006, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, The Royal Bank of Scotland Group plc (RBS), founded in
1727, is one of the world’s leading financial services groups. With offices in numerous countries on four
continents, and more than 140,000 employees, RBS offers to a global clientele a
wide range of financial products and services, including consumer and
commercial lending, credit card services, investment and advisory services,
real estate services, and various other financial services.
In conjunction with these services, Complainant owns and uses numerous
domain name registrations that feature its well-known “RBS” mark, including
<rbs.com>, <rbsbanking.com>, <rbscreditcards.com>,
<rbscommercialservices.com>, <rbsconnect.com>.
<rbsdelivery.com>, <rbsdigitalbanking.com>, <rbsfastpay.com>,
and <rbsgiving.com>.
Complainant RBS holds numerous trademark registrations for its “RBS”
mark, including in the United Kingdom Patent Office since 1996 and in the EU
Office for Harmonization in the Internal Market since 1998. Complainant has registrations for its “RBS”
mark in various other countries as well.
Complainant applied to the Unites States Patent and Trademark Office to
register its “RBS” mark. Complainant
uses these marks in promoting and providing a wide range of financial products
and services, including banking, financial planning, insurance, and brokerage
services worldwide.
The disputed domain name is confusingly similar to Complainant’s
registered word mark “RBS.” Respondent
has simply added to Complainant’s mark the generic term “payments,” a term
associated with banks and financial services.
Respondent has not licensed or otherwise authorized Respondent to use
the “RBS” mark, or any abbreviation or variation thereof, in Respondent’s
domain name. Respondent registered the
disputed domain name on November 19, 2005-long after Complainant first acquired
rights in its RBS mark.
Respondent has never been commonly known by the name <rbspayments.com>,
nor is Respondent making a legitimate noncommercial or fair use of the domain
name or using the domain name in connection with bona fide offering of
goods and services.
Respondent
registered and used the disputed domain name in bad faith.
B. Respondent
Respondent responds in a one-paragraph e-mail, which reads as
follows: “This email constitutes my
response to the domain name complaint listed above.” {rbspayments.name dispute
FA728805} “This is to inform all parties concerned that this is the first I
have heard of ‘rbspayments’ ever, have no interest in maintaining it as a
domain name and relinquish any rights to the domain name ‘rbspayments’ to The
Royal Bank of Scotland Group plc, party issuing complaint. Please notify me via
email and mail of resolution of this matter. Thx”
FINDINGS
1.
Complainant has
rights in the RBS mark as a result of trademark registrations and continuous
use of the RBS mark for a significant period of time.
2.
Respondent
registered the domain name <rbspayments.com> on November, 19, 2005.
3.
Respondent
files his Response under the name, Reginald Thomas. The registration was under
the Organization Name, “rbspayments”, showing Reginald Thomas as “Admin Name”
and “Tech Name.” The Panel finds that
Reginald Thomas is the true registrant for the domain name <rbspayments.com>. The Panel finds that the Response of
Reginald Thomas correctly responds to this case filed by Complainant against
“rbspayments” as named Respondent.
4.
Respondent
disclaims any knowledge of the disputed domain name and relinquishes to
Complainant any rights Respondent may hold to the domain name
<rbspayments.com>.
5.
The domain name
<rbspayments.com> must be transferred to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Respondent professes no knowledge or interest
in the disputed domain name. Respondent
relinquishes any rights Respondent may have in the disputed domain name to
Complainant. Under such factual
circumstances, no formal UDRP analysis is necessary in order to resolve this
dispute. See State Farm Mutual
Automobile Insurance Company v. Periasami Malian, FA705262 (Nat. Arb. Forum
June 21, 2006).
Where Respondent has admitted that he does
not have a past, present or future interest in the disputed domain name and has
not contested transfer of the domain name, it was held in Boehringer
Ingelheim Int.l GmbH v. Modern Ltd.-Cayman Web Dev., FA133625 (Nat. Arb.
Forum Jan. 9, 2003), that it was proper to forgo the traditional UDRP analysis
and order the immediate transfer of the domain name.
Under similar factual circumstances in
another UDRP case, the panel stated, “In this case, the parties have both asked
for the domain name to be transferred to the Complainant…Since the requests of
the parties in this case are identical, the Panel has no scope to do anything
other than to recognize the common request, and it has no mandate to make
findings of fact or of compliance (or nor) with the Policy.” Malev Hungarian Airlines, Ltd. v.
Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004).
Where the respondent has agreed to comply
with complainant’s request to transfer the domain name, the panel held it to be
“expedient and judicial to forgo the traditional UDRP analysis” and order the
transfer of the disputed domain name. See
Disney Enters. Inc. v. Morales, FA475191 (Nat. Arb. Forum June 24, 2005).
Respondent’s statement that he has no
interests in the domain name and relinquishes the rights to the disputed domain
name to Complainant amounts to an admission that the domain name <rbspayments.com>
should be transferred to Complainant.
DECISION
Having established a proper case for transfer under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbspayments.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 7, 2006
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