WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group plc v. Ash Astern
Case No. D2012-1718
1. The Parties
Complainant is The Royal Bank of Scotland Group plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, United Kingdom.
Respondent is Ash Astern, London of United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <rboscolanduk.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2012. On August 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its contact details.
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 Respondent of the Complaint, and the proceedings commenced on September 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 3, 2012.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on October 18, 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. Factual Background
Complaint The Royal Bank of Scotland Group plc is the owner of the RBS trademark, and all other trademark used in connection with the RBS brand. Complainant was founded in Edinburgh by Royal Charter in 1727 and is one of the oldest banks in the United Kingdom. Complainant offers its financial services worldwide under the mark RBS. Complainant also owns an international portfolio of registered marks for RBS, including a United Kingdom trademark No. 2004617 dated 23 November 1994 and Community Trademark (“CTM”) No. 97469 dated 1 April 1996, both in classes 9, 16, 36 and 42.
In addition, Complainant holds several United States of America trademarks, including Registration Nos. 3529700, 3185538, 3198052 registered in 2008, 2006 and 2007.
Complainant operates websites at “www. rbs.com” (registered in 1994) and “www.rbsgroup.com” (registered in 1995).
The evidence submitted by Complainant indicates that the disputed domain name was used in connection with activities relating to attempt to obtain personal financial data from Complainant’s customers. The disputed domain name previously resolved to a website that prominently used Complainant’s RBS logo and full name “The Royal Bank of Scotland.” Complainant successfully applied to have the website at the disputed domain taken down. Subsequently, Complainant sent a cease and desist letter to Respondent on July 23, 2012, requesting voluntary transfer of the disputed domain name, and sent further follow up reminders. Complainant received no response to its initial letter or its reminders. The website located at the disputed domain name has been suspended, but the disputed domain name remains registered in the name of Respondent.
The disputed domain name was registered on June 24, 2012.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to its registered trademark RBS, that the addition of the letter “o” and “scolanduk” add no distinctive element, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent’s use of the disputed domain name in a “phishing” attempt to obtain personal financial data from Complainant’s customers is evidence of Respondent’s bad faith registration and use of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 4(a) of the Policy, the burden of proof with regard to these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does Complainant have rights in a trademark or service mark; and (2) is the disputed domain name identical or confusingly similar to such trademark or service mark.
The Panel finds that Complainant has submitted sufficient evidence to establish that it is the owner of rights in the trademark RBS.
The Panel also finds that the disputed domain name is confusingly similar to Complainant’s trademark. The disputed domain name includes Complainant’s trademark, but has simply added an “o” after “rb”, and the term “scolanduk.” As Complainant’s full name is Royal Bank of Scotland, the “o” is immediately understood as referencing the word “of” and the term “scoland” is immediately understood as a mispelled reference to “Scotland” which is in the United Kingdom. These additional elements do not add any distinctive element and do not eliminate the existence of confusing similarity.
In view of the foregoing, the Panel finds that Complainant has rights in the RBS trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 (“WIPO Overview 2.0”).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name, and provides certain arguments in this regard, establishing a prima facie case under paragraph 4(a)(ii) of the Policy.
Respondent did not submit any evidence to rebut the prima facie case established by Complainant.
The record indicates that Respondent chose a domain name that is confusingly similar to a well-known trademark and the well-known name of the trademark owner. Respondent must have been aware of the RBS mark and its owner The Royal Bank of Scotland, and must have noticed that the disputed domain name was strikingly similar to that mark and name. Indeed, the website previously located at the disputed domain name prominently displayed Complainant’s RBS logo design as well as Complainant’s full name, The Royal Bank of Scotland. Respondent has failed to respond to Complaint and has not asserted any plausible relationship or history with the disputed domain name that would explain Respondent’s use of it for purposes other than causing a confusing association with Complainant’s mark. In addition, the evidence submitted by Complainant indicates that the disputed domain name has been used for what appears to be fraudulent “phishing” purposes to attempt to obtain personal data from Complainant’s customers. Such actions preclude finding of a bona fide offering of goods or services.
In view of the foregoing, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) provides as an instance of registration and use in bad faith, circumstances indicating that:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the respondent’s website or location.”
The Panel is satisfied that these circumstances are fulfilled in this case.
Respondent has registered and used a domain name which incorporates Complainant’s trademark and adds non distinctive elements that increase association with Complainant’s trademark and company name. The disputed domain name has been used in connection with what appears to be phishing activities in an attempt to fraudulently obtain personal financial data from Complainant’s customers. Such phishing scams using a domain name constitute registration and use in bad faith. Indeed, such behavior falls within the scope of paragraph 4(b)(iv) of the Policy where the respondent registers and uses a domain name because of its similarity to another’s trademark in the hope and expectation that such similarity would lead to confusion on the part of internet users and result in an increased number of Internet users being drawn to that domain name. See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser, WIPO Case No. D2009-1383; and Societe Francaise Du Radiotelephone – SFR v. Morel David, WIPO Case No. D2009-1563.
For these reasons the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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 <rboscolanduk.com> be transferred to the Complainant.
Lynda J. Zadra-Symes
Dated: October 31, 2012