The Royal Bank of Scotland Group plc and Coutts & Co. v James Banner
Claim Number: FA0609000797540
Complainant is The Royal Bank of Scotland Group plc and Coutts & Co. (collectively “Complainant”), represented by William S. Fultz, of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC 27602. Respondent is James Banner (“Respondent”), Radley CVs, 7 West End Avenue, Gatley, Cheshire SK8 4DR GB.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <couttsnco.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 18, 2006.
On September 18, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <couttsnco.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 September 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 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@couttsnco.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 17, 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.
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 <couttsnco.com> domain name is confusingly similar to Complainant’s COUTTS and COUTTS & CO. marks.
2. Respondent does not have any rights or legitimate interests in the <couttsnco.com> domain name.
3. Respondent registered and used the <couttsnco.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 an international financial services group and Complainant, Coutts & Co., is the international private banking arm of The Royal Bank of Scotland Group plc. These two entities shall be referred to collectively as “Complainant.” Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the COUTTS mark (Reg. No. 2,098,866 issued September 23, 1997; Reg. No. 2,096,845 issued September 16, 1997) and registrations with the United Kingdom Patent Office (“UKPO”) for the COUTTS & CO. mark (Reg. No. 1,281,340 filed October 1, 1986; Reg. No. 1,371,001 filed January 24, 1989). Complainant utilizes the COUTTS and COUTTS & CO. marks in connection with providing financial goods and services within the arena of international private banking. Complainant has registered the <coutts.com> and <couttsandcompany.com> domain names in order to operate websites providing financial goods and services to Internet customers.
Respondent registered the <couttsnco.com>
domain name on April 7, 2006.
Respondent is using the disputed domain name to operate a website that
attempts to fraudulently mislead Internet users into believing that the website
is operated by Complainant.
Respondent’s website greets Internet users with a message stating,
“Welcome To Coutts And Co Private Banking International Homepage.” Additionally, Respondent’s webpage includes
a copy of Complainant’s logo and uses the phrase “Coutts And Co Private
Banking… a wise choice in banking.”
Respondent’s website requests that Internet users enter private personal
information, for example their “4 Digit Pin Code.”
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 registered the COUTTS and COUTTS & CO. marks with the USPTO and UKPO many years before Respondent’s registration of the <couttsnco.com> domain name. The Panel finds that Complainant’s registrations with the USPTO and UKPO establish Complainant’s rights in the marks 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 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 <couttsnco.com> domain name is
confusingly similar to Complainant’s COUTTS and COUTTS & CO. marks. The disputed domain name contains the COUTTS
mark in its entirety and adds the letter “n” before the abbreviation “co,”
which is part of the COUTTS & CO. mark.
The insertion of the letter “n” in the place of the symbol “&” does
not distinguish the disputed domain name from the COUTTS and COUTTS & CO.
marks. The symbol “&” stands in for
the word “and” in the COUTTS & CO. mark.
The letter “n” in the disputed domain name, if pronounced aloud, sounds
almost identical to the pronunciation of the word “and” in the COUTTS & CO.
mark. Thus, the Panel finds that the
disputed domain name is confusingly similar because of the inclusion of the
entire COUTTS mark, combined with the similarity in pronunciation to the COUTTS
& CO mark and the <couttsnco.com> domain name. See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the addition
of other words to such marks.”); see also Hewlett-Packard Co. v.
Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a
domain name which is phonetically identical to the complainant’s mark satisfies
¶ 4(a)(i) of the Policy).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent
lacks rights or legitimate interests in the <couttsnco.com> domain
name. Complainant’s assertion
establishes a prima facie case for purposes of the policy shifting the
burden to Respondent to demonstrate that it does have rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(i). Respondent’s failure to submit a Response
allows the Panel to infer that Respondent lacks rights or legitimate interests
in the disputed domain name.
Notwithstanding Respondent’s failure to respond, the Panel will evaluate
the available evidence to determine whether Respondent has rights or legitimate
interests pursuant to Policy ¶ 4(c). See
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).”); see also Am. Express Co. v.
Fang Suhendro, FA 129120 (Nat. Arb. Forum
Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.”).
Respondent is using the disputed domain name to operate a website engaged in “phishing.” The panel in HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004), defined “phishing” as fooling “Internet users into sharing personal financial data so that identities can be stolen, fraudulent bills are run up, and spam e-mail is sent.” Similarly, in Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), the panel stated that, “‘phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.” Respondent is using the <couttsnco.com> domain name to operate a website that mimics many of the features of Complainant’s genuine website in order to confuse Internet users into submitting confidential information, such as PIN numbers. In this way, Respondent is “phishing” for personal information. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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); see also 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 contemplated by Policy ¶¶ 4(c)(i) or (iii)).
Additionally, there is no
available evidence that Respondent is commonly known by the <couttsnco.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “James Banner,” a name unrelated to the
disputed domain name. Furthermore,
Complainant asserts without contradiction that Respondent is not affiliated
with Complainant and is not authorized by Complainant to use the COUTTS or
COUTTS & CO. marks in a domain name.
The Panel finds that Complainant is not commonly known by the disputed
domain name as contemplated by Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where the respondent was not commonly
known by the mark and never applied for a license or permission from the
complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <couttsnco.com> domain name to redirect Internet users to Respondent’s website which mimics many of the features of Complainant’s genuine website. Presumably, the similarities are intended to mislead Internet users and manipulate them into disclosing sensitive personal information, such as PIN numbers. This use of website to fraudulently acquire sensitive personal information is a practice known as “phishing.” While “phishing” is not explicitly discussed as an example of bad faith registration and use in Policy ¶ 4(b)(i)-(iv), the Panel is not limited to those circumstances in finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii). In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel found that “the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.” Similarly, the panel in CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000), the panel held that, “the Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.” Thus, the Panel finds that Respondent’s use of the disputed domain name to operate a website designed to defraud Internet users into revealing their personal information is evidence of bad faith registration and use pursuant to 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 HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
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 <couttsnco.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 26, 2006
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