The Royal Bank of Scotland Group plc v. Navigation Catalyst Systems, Inc.
Claim Number: FA0610000813065
Complainant is The Royal Bank of Scotland Group plc (“Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein LLP, Three Wachovia Center, 401 South Tryon Street, Suite 3000, Charlotte, NC 28202. Respondent is Navigation Catalyst Systems, Inc. (“Respondent”), 2101 Rosecrans Ave #2000, El Segundo, CA 90245.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbsdigial.com>, registered with Go Daddy Software, 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 October 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 11, 2006.
On October 7, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <rbsdigial.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 October 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 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@rbsdigial.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 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 <rbsdigial.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbsdigial.com> domain name.
3. Respondent registered and used the <rbsdigial.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 one of the world’s leading financial services companies. Complainant maintains offices around the world and employs more than 140,000 people. Complainant’s main services include consumer and commercial lending, credit card services, investment and advisory services, real estate services and various other financial services. At the <rbs.com>, <rbsdigitalbanking.co.uk> and <rbsdigital.com> domain names, Complainant offers online banking services.
Complainant has registered the RBS mark with the United Kingdom Patent Office (“UKPO”) (Reg. No. 2,004,617 issued January 5, 1996; Reg. No. 2,366,760 issued January 21, 2005) and holds numerous trademark registrations for the RBS mark with trademark offices around the world.
Respondent registered the <rbsdigial.com> domain name on May 20, 2005. Respondent’s website at the domain name in dispute features links to financial and banking services websites that compete with Complainant.
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 established rights in the RBS mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the UKPO. See The Royal Bank of Scotland Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Thermo Electron Corp et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority).
The <rbsdigial.com> domain name incorporates
Complainant’s entire RBS mark and merely adds the term “digial,” a common
misspelling of the term “digital,” which describes an aspect of Complainant’s
business. In Experian Info.
Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002),
the panel found that several domain names incorporating the complainant’s
entire EXPERIAN mark and merely adding the term “credit” were confusingly
similar to the complainant’s mark. The
panel in Reed Elsevier Inc. & Reed Elsevier Properties Inc. v.
Christodoulou, FA 97321(Nat. Arb. Forum June 26, 2001) also found that the
<legallexis.com> and <legallexus.com> domain names were confusingly
similar to Complainant’s LEXIS mark because the term “legal” describes the type
of services Complainant offers under the LEXIS mark. Hence, the Panel finds that Respondent’s mere addition of the
term “digial” to Complainant’s mark is not sufficient for Respondent to
distinguish the disputed domain name from the mark for purposes of avoiding a
finding of confusingly similarity under Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent has no rights or legitimate interests in the <rbsdigial.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also 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).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the panel and the respondent did not come forward to suggest any
right or interest it may have possessed).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent is not commonly known by the <rbsdigial.com>
domain name, because the WHOIS information lists “Navigation Catalyst Systems,
Inc.” as the registrant of the domain name, and there is no other evidence in
the record suggesting that Respondent is commonly known by the disputed domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See The
Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)
(concluding that the respondent was not commonly known by the disputed domain
names where the WHOIS information, as well as all other information in the
record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also M. Shanken
Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record).
Respondent is using the disputed domain name to maintain a commercial web directory displaying links to other financial services companies that compete with Complainant. The Panel infers that Respondent is generating click-through fees for each consumer it diverts to these competing websites. As a result, the Panel concludes that Respondent is not using the <rbsdigial.com> domain name in connection with 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 also The Royal Bank of Scotland Grp plc et. al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using a domain name confusingly similar to
Complainant’s RBS mark to operate a commercial web directory featuring links to
other financial and banking companies providing competing services. The Panel finds such use to indicate bad
faith according to Policy ¶ 4(b)(iii), for it appears that Respondent has
registered and is using the <rbsdigial.com> domain name for the
primary purpose of disrupting Complainant’s business. See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding that the respondent registered the domain
name in question to disrupt the business of the complainant, a competitor of
the respondent); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites).
Respondent is using the <rbsdigial.com> domain name, which is confusingly similar to Complainant’s RBS mark, to redirect Internet users seeking Complainant’s financial and banking services to a commercial web directory featuring links to Complainant’s direct competitors. The Panel infers that Respondent earns click-through fees for each consumer it diverts to these third-party websites. Therefore, Respondent is taking advantage of the confusing similarity between Respondent’s <rbsdigial.com> domain name and Complainant’s RBS mark, and profiting from the goodwill associated with the mark. Use of the disputed domain name for this purpose suggests bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rbsdigial.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 21, 2006
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