Ulster Bank Limited and The Royal Bank of Scotland Group plc v. Steve Garrick
Claim Number: FA0610000819532
Complainants are Ulster Bank Limited and The Royal Bank of Scotland Group 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 Steve Garrick (“Respondent”), 797 Randoph, Accord, NY 12404.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ulbint.com>, registered with Cadiware 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 October 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2006.
On October 18, 2006, Cadiware Ag confirmed by e-mail to the National Arbitration Forum that the <ulbint.com> domain name is registered with Cadiware Ag and that Respondent is the current registrant of the name. Cadiware Ag has verified that Respondent is bound by the Cadiware 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 October 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 8, 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@ulbint.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 13, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ulbint.com> domain name is confusingly similar to Complainant’s ULSTER BANK mark.
2. Respondent does not have any rights or legitimate interests in the <ulbint.com> domain name.
3. Respondent registered and used the <ulbint.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 a leading financial services provider that offers a comprehensive 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. The Royal Bank of Scotland Group plc owns several institutions, including Complainant Ulster Bank Limited.
Complainant, Ulster Bank Limited, is a financial services company that provides a wide range of financial services to personal, small business, and large institutional customers. Complainant is also the third largest bank in Ireland, and provides a variety of services, including banking services, corporate financial services, and wealth management activities. In connection with its offering of financial and banking services, Complainant Ulster Bank Limited holds several trademark registrations with the Irish Patents Office (i.e., Reg. No. 203,840 issued May 11, 1996) for the ULSTER BANK mark. Complainant Ulster Bank Limited also holds domain name registrations for the <ulsterbank.com> and <ulsterbank.co.uk> domain names, through which Complainant operates a website for its online banking services. Hereinafter, both Complainant The Royal Bank of Scotland Group plc and Complainant Ulster Bank Limited will be referred to collectively as “Complainant.”
Respondent, Steve Garrick, registered the <ulbint.com> domain name on July 31, 2006. Respondent’s disputed domain name resolves to a website for a fraudulent bank entitled “Ulster Bank International,” which prompts Internet users to enter personal information.
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 asserts and provides evidence of trademark registrations for the ULSTER BANK mark with the Irish Patents Office. Previous panels have held that a complainant’s registration of its mark in the jurisdiction in which it operates satisfies the requirement of establishing rights in the mark pursuant to Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); 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). Thus, the Panel in the instant case finds that Complainant’s trademark registrations for the ULSTER BANK mark establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”); 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.”).
The Panel finds that Respondent’s <ulbint.com> domain name is confusingly similar to Complainant’s ULSTER BANK mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name consists of an abbreviation of Complainant’s ULSTER BANK mark (“ulb”) with the addition of an abbreviation of the term “international” (“int”), and the generic top-level domain (“gTLD”) “.com.” Previous panels have held the abbreviation of a complainant’s mark does not negate the creation of confusing similarity between the resulting domain name and the mark. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)).
Prior panels have also found the addition of generic or descriptive terms to a mark does not sufficiently distinguish the resulting domain name for purposes of Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Additionally, previous panels have consistently held that the addition of a gTLD is irrelevant for purposes of determining confusing similarity pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel in the instant case finds that the alterations and additions to Complainant’s ULSTER BANK mark in Respondent’s <ulbint.com> domain name do not avoid the creation of confusing similarity between the domain name and the mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant must initially demonstrate that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant establishes a prima facie case, the burden shifts, and Respondent must demonstrate that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). 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 examine the evidence on record to determine whether Respondent has any rights or legitimate interests with regard to the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not licensed or otherwise authorized to use Complainant’s ULSTER BANK mark. Respondent’s WHOIS information fails to suggest that Respondent is commonly known by the disputed domain name. As a result, the Panel finds that the evidence does not establish that Respondent is commonly known by the <ulbint.com> domain name under Policy ¶ 4(c)(ii). See 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).
Furthermore, Respondent’s <ulbint.com> domain name resolves to a website for a fraudulent bank that prompts Internet users to enter personal information. Consequently, the Panel finds that Respondent engaged in “phishing,” which constitutes 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 Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the respondent’s diversion of Internet users to a third-party website for the purpose of fraudulently acquiring their personal information constitutes 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 also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘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.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The evidence on record suggests that Respondent used the disputed domain name in connection with a “phishing” scheme seeking to obtain personal information from Internet users. Thus, the Panel finds that Respondent’s conduct indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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.”); see also 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).
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 <ulbint.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 24, 2006
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