The Royal Bank of Scotland Group plc and The Royal Bank of Scotland International Limited v. Yorgi Brawn
Claim Number: FA0609000787945
Complainants are The Royal Bank of Scotland Group plc and The Royal Bank of Scotland International Limited (collectively,“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 Yorgi Brawn (“Respondent”), La mont 109, 44, Paris 108755 FR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbsnt.com>, registered with Onlinenic, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 5, 2006.
On September 11, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsnt.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 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@rbsnt.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 6. 2005, 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.
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 <rbsnt.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsnt.com> domain name.
3. Respondent registered and used the <rbsnt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, collectively The Royal Bank of Scotland Group
plc and its subsidary, The Royal Bank of Scotland International Limited, is one
of the world’s leading financial services groups. Complainant has numerous offices on four continents and offers a
wide range of financial products and services to customers worldwide. Complainant holds a registration with the
United Kingdom Patent Office (“UKPO”) for its RBS mark (Reg. No. 2004617 issued
January 5, 1996). Complainant also
operates a website at the <rbsint.com> domain name.
Respondent registered the <rbsnt.com> domain name on November 16, 2005. Respondent’s disputed domain name previously resolved to a website that displayed Complainant’s trademark and logo in addition to boxes asking for personal identification information from Internet users regarding their accounts with Complainant, to be used by Respondent for fraudulent purposes. The disputed domain name is not currently being used.
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.
The Panel finds that Complainant’s registration with the UKPO sufficiently establishes Complainant’s rights in the RBS mark. See 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.”); see also 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).
The Panel finds that Respondent’s <rbsnt.com> domain name is confusingly similar to Complainant’s RBS mark as it combines Complainant’s mark in its entirety with the letters “n” and “t.” The addition of these letters is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name, particularly due to the fact that Complainant operates a website at the <rbsint.com> website. In Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), the panel found that by misspelling words and adding letters to words, a respondent did not create a distinct mark but nevertheless rendered the domain name confusingly similar to the complainant’s marks. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON). The Panel thus finds that Respondent’s disputed domain name is confusingly similar to Complainant’s RBS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove it has rights or legitimate interests in the <rbsnt.com> domain name. See 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.”); 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).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s RBS mark and that Respondent is not associated with Complainant
in any way. Furthermore, Respondent’s
WHOIS information does not suggest that Respondent is commonly known by the <rbsnt.com>
domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000), the panel found no rights or legitimate interests where the
respondent was not commonly known by the mark and had never applied for a
license or permission from the complainant to use the trademarked name. 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”).
Accordingly, the Panel finds that Respondent is commonly known by the
disputed domain name under Policy ¶ 4(c)(ii).
The evidence on record indicates that Respondent was previously using the disputed domain name to redirect Internet users to a website that displayed information asking Internet users to enter personal identifying information related to their bank account for use by Respondent for fraudulent purposes, a practice referred to as “phishing.” Such 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 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)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Furthermore, Respondent is not currently using the disputed domain name, and has made no demonstrable preparations to use the <rbsnt.com> domain name. The Panel finds that such inactive 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 Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
The Panel finds that Respondent’s prior use of the disputed
domain name to take advantage of Internet users attempting to locate
Complainant’s website to gain personal financial information of such users
constitutes bad faith registration under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel,
FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and
use because the respondent used the domain name to redirect Internet users to a
website that imitated the complainant’s website and to fraudulently acquire
personal information from the complainant’s clients); see also Juno Online Servs., Inc. v. Nelson, FA
241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name
<billing-juno.com> was registered and used in bad faith by using the name
for fraudulent purposes.”).
Furthermore, the Panel finds that Respondent’s use of the disputed domain name to display a phishing website, which the Panel infers is for the commercial benefit of Respondent. Additionally, Respondent’s <rbsnt.com> domain name is capable of creating a likelihood of confusion as to the source and affiliation of Complainant with the disputed domain name. The Panel thus finds bad faith registration and use under Policy ¶ 4(b)(iv). 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 the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also 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 the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel also finds that Respondent’s current inactive use of the disputed domain name is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 <rbsnt.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 18, 2006
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