The Royal Bank of Scotland Group plc v. Domain Discreet c/o ATTN: rbs-edinburgh.com
Claim Number: FA0705000986696
Complainant is The Royal Bank of Scotland Group plc (“Complainant”),
represented by James Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rbs-edinburgh.com>, registered with Register.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of 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
On
On May 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 2007 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@rbs-edinburgh.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <rbs-edinburgh.com> domain name is confusingly similar to Complainant’s RBS mark.
2. Respondent does not have any rights or legitimate interests in the <rbs-edinburgh.com> domain name.
3. Respondent registered and used the <rbs-edinburgh.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Royal Bank of Scotland Group plc, has continuously and extensively used the RBS mark since 1727 in connection with financial products and services. Complainant is one of the world’s oldest and largest financial services companies. Complainant employs over 140,000 people on four continents and is ranked as one of the top ten banks in the world in terms of market capitalization.
Complainant holds trademark registrations for the RBS mark with the following trademark authorities: the United Kingdom Patent Office (“UKPO”) (Reg. No. 2,004,617 issued January 5, 1996; Reg. No. 2,366,760 issued January 21, 2005), the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 97,469 issued March 23, 1998; Reg. No. 4,119,954 issued January 17, 2006; Reg. No. 4,115,952 issued January 17, 2006), and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,185,538 issued December 19, 2006, filed October 14, 2004).
Respondent’s <rbs-edinburgh.com>
domain name, which it registered on December 12, 2006, resolves to a
commercial banking website that mimics Complainant’s website at the
<rbs.com> domain name. The website
features Complainant’s RBS logo, links to more information on financial
services, and pictures of the CEO and other managers. Respondent lists itself as “The Royal Bank of
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.
Pursuant to Policy ¶ 4(a)(i), Complainant has sufficiently
demonstrated its rights in the RBS mark by submitting evidence of its valid
trademark registrations for the mark with several trademark authorities around
the world, including in the
Although Complainant has not registered the RBS mark in the
country of Respondent’s residence,
The <rbs-edinburgh.com> domain name contains Complainant’s
RBS mark followed by a hyphen, the geographic identifier “edinburgh,” and the
generic top-level domain (“gTLD”) “.com.”
The panel in Eastman Chemical Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) stated that
“the addition of a term descriptive of Complainant’s business, the addition of
a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish
Respondent’s domain name from Complainant’s mark.” The panels in both Hess Corp. v. GR,
FA 770909 (Nat. Arb. Forum Sept. 19, 2006)
and Expedia, Inc. v. Mandanice, FA 146598 (Nat. Arb. Forum Apr. 7, 2003) found
that the addition of a hyphen and the geographic identifier “-
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant bears the burden of
making a prima facie case that
Respondent lacks rights and legitimate interests in the <rbs-edinburgh.com> domain name. The burden then shifts to Respondent once
Complainant has made out a prima facie case. See Document Tech., Inc. v. Int’l Elec. Commc’ns
Inc., D2000-0270 (WIPO June 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26,
2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show
that the respondent has no rights to or legitimate interests in the subject
domain name and that once the complainant makes this showing, the burden of
production shifts to the respondent to rebut the complainant’s
allegations). In this case, the Panel finds
that Complainant has established a prima facie case, and thus the burden
is now upon Respondent to show that it has rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).
Respondent,
however, has not responded to this Complaint.
As a result, the Panel presumes that Respondent lacks rights or
legitimate interests in the domain name in dispute. See Broadcom Corp. v. Ibecom PLC,
FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to
the Complaint functions as an implicit admission that [Respondent] lacks rights
and legitimate interests in the disputed domain name. It also allows the Panel to accept all
reasonable allegations set forth…as true.”); see also Wild West Domains,
Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred
that by defaulting Respondent showed nothing else but an absolute lack of
interest in the Domain Name . . . . It is incumbent on Respondent to contribute
to the fact-finding and if contrary to that, it rather incurs in default, there
is nothing that the Panel could do to discuss in its benefit.”). Nevertheless,
the Panel will still examine the evidence on record to determine if Respondent
has rights or legitimate interests pursuant to Policy ¶ 4(c).
The WHOIS information lists “Domain Discreet c/o ATTN: rbs-edinburgh.com” as the registrant of the <rbs-edinburgh.com> domain name, and there is no other evidence in the record to hint at Respondent being commonly known by the disputed domain name. Complainant alleges that it did not authorize or license Respondent to register a domain name containing its RBS mark. Hence, the Panel finds that Respondent has failed to demonstrate that it has rights or legitimate interests in the <rbs-edinburgh.com> domain name according to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Educ. Broadcasting Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Under the remaining two
elements of Policy ¶ 4(c), a respondent can establish rights or legitimate interests
if it is making either 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). In
this case, the Respondent appears to be engaged in a fraudulent phishing
scheme. The website at the <rbs-edinburgh.com> domain name
prominently displays Complainant’s RBS logo, its company information, and
images of management personnel that consumers might mistakenly believe are
affiliated with Complainant’s company.
By operating a website virtually identical to Complainant’s website,
Respondent may be attempting to fraudulently acquire personal information from
Complainant’s customers. Respondent’s
conduct is similar to the case of Allianz of Am. Corp. v. Bond,
FA 690796 (Nat. Arb. Forum June 12, 2006), where the panel held that the
respondent’s use of the <allianzcorp.biz> domain name to fraudulently
acquire the personal and financial information of Internet users seeking the complainant’s
financial services was not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain name pursuant to Policy ¶ 4(c)(iii). Another relevant case is HOPE worldwide,
Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004), where the
respondent registered the <hope-worldwide.org> domain name and used it to
operate a website virtually identical to the website of the complainant, a
charity helping disadvantaged children and the elderly under the HOPE WORLDWIDE
mark. The panel 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.”
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s website at the <rbs-edinburgh.com> domain name mimics Complainant’s website and provides the same financial services as Complainant, evidence of a fraudulent phishing scheme, described above. Such fraudulent and competitive conduct indicates that Respondent has registered and is using the disputed domain name in order to disrupt Complainant’s business under the RBS mark, which represents bad faith according to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to Complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 23, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Moreover, Respondent is attempting to fraudulently acquire
the personal and financial information of Complainant’s customers. Internet users seeking Complainant’s
financial services may think that Respondent is somehow affiliated or
associated with Complainant, and Respondent is likely profiting from this
diversion scheme. In both Wells Fargo
& Co. v.
Previous panels have concluded that phishing in and of
itself can demonstrate bad faith registration and use. See Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name
was registered and used in bad faith where the respondent hosted a website that
“duplicated Complainant’s mark and logo, giving every appearance of being
associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the AIG mark”); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum
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 <rbs-edinburgh.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 26, 2007
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