WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group Plc v. Arbechay, Adalbrecht Engelbert
Case No. D2012-0665
1. The Parties
The Complainant is The Royal Bank of Scotland Group Plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Arbechay, Adalbrecht Engelbert of Mannheim, Germany.
2. The Domain Name And Registrar
The disputed domain name <rbs-lines.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2012. On March 29, 2012, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain name. On March 29, 2012, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 10, 2012 the Center notified the Parties that the Complaint was filed in English but that according to the information received from Key-Systems GmbH dba domaindiscount24.com the language of the Registration Agreement is German. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on April 11, 2012. The Respondent did not submit any reply. The Center thus informed the Parties that it would send all case-related communications in both English and German, that it would accept a response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2012.
The Center appointed Prof. François Dessemontet as the sole panelist in this matter on May 14, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Order as to the Language of the Proceeding.
Preliminarily, the Panel has to examine the request that the Complainant filed on April 11, 2012 for the language of the proceedings to be English.
Pursuant to the Rules paragraph 11 the language of the proceedings is the language of the registration agreement, unless parties agree otherwise or the Panel decides otherwise. Among the factors to be taken into consideration by the Panel under paragraph 11(a) of the Rules there is the language of the correspondence that has been exchanged between the parties before the complaint was filed, their identity, their nationality and residence and any other indication as to their familiarity with a given language.
In the present case the Complainant notes in its request of April 11, 2012 the following factors: The Complainant addressed a cease and desist letter to the Respondent in English. The Respondent did not reply to that letter, not even by way of requesting clarification (or a translation). Further, the disputed domain name is in English, and the webpage accessible under that domain name originally displayed a text in English. The Complainant cites two WIPO UDRP cases (LEGO Juris A/S v. Ilie Cezar, WIPO Case No. DRO2011-0010 and Mammut Sports Group AG v. Deminzheng, WIPO Case No. D2011-0475) to the effect that the absence of a reply allows a Panel to decide that the language of the proceedings shall be other than the language of the registration agreement and that the true test is the level of comfort that the parties have in a given language. Should the Panel not grant the Complainant’s request that the language of the proceedings be English, the Complainant requests that at least the Complaint and the written evidence submitted herewith be left as they have been filed, that is in English, even though the Respondent could write his Response in German.
The Panel hereby grants the main request for the language of the proceeding to be English. Therefore, the Panel does not have to find on the second request made eventualiter.
First, the Panel notes that the Center sent bilingual letters and notes in English and German to the Respondent without eliciting any answer from the Respondent. The matter has not been decided by the Center and, therefore, the Panel is competent to decide on the request filed by the Complainant.
Second, as the Center clearly instructed the Respondent as well as the Complainant as to the language issue, the Respondent could not rely on any material being translated before requesting clarification or translation in the present proceedings.
Third, there is also no doubt that the Respondent did receive the cease and desist letter in August 2011 since the contents of the website were changed after the receipt of that letter.
All things considered, the failure of the Respondent to participate or to react to any of the pre-procedural and procedural steps that the Complainant engaged in that matter leads the Panel to consider that the Respondent has waived his right to impose German as the language of the proceedings. This conclusion is made on the strength of the present file and for the present case only.
Thus, the present Decision will be rendered in English and the Panel, who has command of German as well as of English, requests no further translation from the Complainant.
5. Factual Background
The Complainant is a well-known bank that is established in Edinburgh since 1727 and operates in the United Kingdom as a public limited company since 1968. It offers its financial services worldwide under the mark RBS. These initials are registered inter alia as community trademark in international classes 9, 16, 35, 36 and 42. In Germany, the Complainant has registered its mark THE ROYAL BANK OF SCOTLAND PLC in classes 35, 36 and 42. The Complainant operates websites at “www.rbs.com” and notably at “www.rbs.de”, too. Further, the Complainant owns an array of websites including in a prominent place the letters “rbs”. The Complainant maintains that its trademark is famous and enjoys a worldwide protection in all areas of business activities, and not only for financial services.
The Panel has no information on the Respondent, his services or activities, as the Respondent did not participate in the proceedings. The only indication as to the former contents of the website of the Respondent is given by a print out of the screen of the website that the Complainant filed with the Complaint.
The disputed domain name was registered on June 16, 2011.
6. Parties’ Contentions
The Complainant notes that the disputed domain name is confusingly similar to its own well-known RBS trademark. In order to support its contention that its trademark is famous the Complainant cites UDRP decisions before WIPO and NAF: Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a. Telmex Management Services, Inc., WIPO Case No. D2002-0155 and The Royal Bank of Scotland Group plc and The Royal Bank of Scotland plc v. "Christopher Graham" or "John Graham" dba GRA Marketing CL, WIPO Case No. D2001-0626, and The Royal Bank of Scotland Group plc and National Westminster Bank plc v Pritpal Jittla, NAF Claim No. 0660550, The Royal Bank of Scotland Group plc v rbspayments, NAF Claim No. 0728805 , The Royal Bank of Scotland Group plc, Citizens Financial Group, Inc., Churchill Insurance Co. Ltd., Hanco ATM Systems Ltd. & Privilege Insurance Co. Ltd. v. Domaincar c/o Perthshire Marketing a/k/a Domaincar, NAF Claim No. 0671079, to name a few. Further, the Complainant notes that the addition of the term “lines” does not distinguish the disputed domain name from the RBS trademark. Nor does the addition of a hyphen and the generic top level domain suffix (“gTLD”) “.com” allows for any distinction from the mark RBS. Further contentions of the Complainant will be discussed below.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion And Findings
A. Identical or Confusingly Similar
The disputed domain name combines the Complainant’s RBS mark with the word “lines” and the gTLD “.com”. The disputed domain name is not identical to the trademark but the question is whether it is to be deemed confusingly similar to the trademark.
First, the RBS trademark is strong due to its use, the investment made by the Complainant in advertising and brand protection, and its presence in protected trademarks and many domain names worldwide.
Second, the addition of the word “lines” is not distinguishing the disputed domain name from the trademark. It would rather increase the risk of confusion, as “line(s)” is a word that is often brought into connection with financial services, such as “banking online”, and with “lines of products” such as “mortgage”, “personal loans”, etc. The reader or listener is necessarily led to conceive the disputed domain name as indicating a connection with the Complainant and its services. This indirect connotation is reinforced by the presence on the Net of many domain names belonging to the Complainant and evidencing the most varied suffixes.
In the Panel’s view, the owner of a well-known trademark does not have to tolerate to be brought into connection with an individual or legal entity with which it has no connection. This rule is also valid for ordinary trademarks, but the risk of an indirect connotation is heightened by the fame surrounding a well-known trademark. It is not necessary to examine here whether the mark RBS is really famous worldwide to the point that as the Complainant contends, its use in connection with any service whatsoever and not only with financial services could infringe on the rights of the Complainant. Suffice it to say that, in the present case, the addition of “lines.com” suggests some commercial link with RBS and its online services or lines of financial services.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademarks of the Complainant.
B. Rights or Legitimate Interests
The Respondent has failed to participate in the proceedings and, absent any indication as to his activities and needs, the Panel has to rely on the Complainant’s representations to try and find whether the Respondent has any rights or legitimate interests to the registration and use of the disputed domain name.
The Panel finds no rights or legitimate interests of the Respondent in the disputed domain name. The evidence before this Panel suggests that the website was intended to allow the Respondent for phishing personal data of the persons who would intend to have recourse to this site in order to transmit money through Western Union or other similar money transfer services. While Western Union properly enables a safe transfer of money, some of the scams to phish the identity or other confidential data of web consumers are known to have recourse to Western Union’s well advertised services to instill some degree of trust into the consumers’ mind.
The Respondent does not appear to have any use for the website at the moment, since he took down the contents that were accessible before the cease and desist letter of the Complainant.
The Panel believes the Complainant when it argues that no license or other authorization was ever given to the Respondent to use the trademark RBS.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Besides the alleged and likely phishing scam, which in itself is enough to find that the registration and use of the disputed domain name have been made in bad faith, there is also a further indication of the registration and use in bad faith. The copyright mention at the bottom of the website consists of the capital letters “RBS” without hyphen before the word “lines”. This increases the likelihood of confusion between the authentic services of the Complainant and the website. It also emphasizes the scheming nature of the registrant of the disputed domain name, which leads to admit his bad faith at the time of the registration and first use of the disputed domain name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <rbs-lines.com> be transferred to the Complainant.
Prof. Francois Dessemontet
Dated: May 18, 2012