WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group Plc v. kenneth ezenwa
Case No. D2012-1721
1. The Parties
The 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.
The Respondent is kenneth ezenwa of Delta, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <rbs-onnet.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (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 August 28, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on September 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2012.
The Center appointed Alain Bensoussan as the sole panelist in this matter on October 11, 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
The Complainant was incorporated in Scotland in 1727, and was incorporated as a public limited company in the United Kingdom in 1968. It is one of the oldest banks in the United Kingdom. The Complainant opened its first office in the United States of America (“U.S.A”) in 1960 and is currently one of the largest providers of liquidity in the U.S.A. The Complainant offers its financial services worldwide under the mark RBS and has expended a significant amount of money in promoting and developing this particular mark.
The Complainant owns a substantial international portfolio of registered trademarks for RBS and also marks incorporating the term “rbs” and other terms. These registrations cover most of the countries and regions in the world, including the European Union, U.S.A., Canada, Asia and also Nigeria where the Respondent, as identified by the Registrar, is located. These registrations were filed as early as November 1994. The Complainant also owns a significant number of domain names that incorporate the mark RBS, including the domain names: <rbs.com> and <rbsgroupcom>, registered in 1994 and 1995, respectively, and from which it operates its web site. The list of the “rbs” domain names owned by the Complainant includes names such as: <rbs-online.biz> and <rbs-online.mobi>, totaling a number of over 1, 300 such domain names.
The disputed domain name was registered on June 13, 2012. 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.
5. Parties’ Contentions
The Complainant contents that the disputed domain name <rbs-onnet.com> is confusingly similar to the Complainant’s world famous trademark RBS. The fame of the trademark RBS has been confirmed in numerous previous UDRP decisions (see 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 aka Domaincar, NAF Claim No. 0671079).
The addition of the suffix “on net” will not have any impact on the overall impression of the dominant part of the disputed domain name, RBS, instantly recognizable as a world famous trademark.
The likehood of confusion includes an obvious association with the trademark of the Complainant.
With reference to the reputation of the trademark RBS, there is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by the Complainant of that there is some kind of commercial relation between the Respondent and the Complainant.
By using the Complainant’s trademarks, the Respondent exploits the goodwill and the image of these trademarks, which may result in dilution and other damage for the Complainant’s trademark creating a risk of confusion.
Rights or Legitimate Interests
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, nor found anything that would indicate that it is commonly known under the disputed domain name.
The Complainant contends that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark RBS. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
The Respondent’s failure to respond to the cease and desist letter further indicates that the Respondent lacks rights and legitimate interests in the disputed domain name.
The Complaint contends that it is obvious that the Respondent knew of the Complainant’s legal rights in RBS at the time of the registration and it is the fame of the trademark that has motivated the Respondent to register the disputed domain name.
It therefore seems that the Respondent has used the disputed domain name to pass itself off as the Complainant in order to drive traffic and customers to his site, potentially phishing for customers’ financial information.
Registered and Used in Bad Faith
The trademark RBS is a well-known and reputed trademark with a substantial and widespread reputation in the finance industry worldwide. It is obvious that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, as the point of the registration.
The Complainant submits that the Respondent’s absence of a reaction to its cease and desist letter is also indicative of the Respondent’s bad faith.
Before the web site had been shut down due to fraudulent activities, the Respondent used the disputed domain name to engage in a phishing scam. The Respondent was using the disputed domain name to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information. Thus, the Respondent’s use of the disputed domain name constitutes bad faith registration and use under the Policy.
Even if the web site is now currently inactive, such passive holding could still constitute an act of bad faith.
The Complainant’s well-known registered and unregistered trademarks and the impossibility of conceiving a good faith use of the disputed domain name are indicative of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These three elements are:
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that RBS is a well-known mark that has received worldwide recognition and that the disputed domain name <rbs-onnet.com> is confusingly similar to the Complainant’s registered trademarks RBS, even with the addition of the generic and non-distinctive expression “on net” and the generic top-level domain (gTLD) “.com” designation.
The Panel finds that the addition of a generic expression, such as “on net” does not serve to distinguish the disputed domain name <rbs-onnet.com> from the Complainant’s well-known trademarks.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
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 in the disputed domain name.
The Panel believes the Complainant when it argues that the Respondent has no registered trademarks or trade names corresponding to the disputed domain name and that no license or other authorization were ever given to the Respondent to use the trademark RBS.
Moreover, there is no element which could show that before the proceedings, the Respondent was using the disputed domain name or a trade name corresponding to the disputed domain name in relation with a bona fide offering of goods and services under the disputed domain name and that the Respondent was known under the disputed domain name. The fact that the Respondent did not respond to the cease and desist letter sent by the Complainant underlines the lack of rights or legitimate interests of the Respondent to the Panel.
In addition, the Respondent does not make a legitimate and non commercial use of the disputed domain name as shown by the Complainant who noticed a phishing attempts fraud from the disputed domain name.
The Respondent does not appear to have any use for the website at the moment, since the disputed domain name is now inactive.
Given this situation, the Panel is of the opinion that the Complainant sufficiently showed that the Respondent does not make a bona fide offering of goods and services under the disputed domain name and has not been commonly known under the disputed domain name and finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that , if found by the Panel to be present, shall be evidence of the registration and use of a domain name in band faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name, or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on his web site or location.
The RBS trademarks enjoy worldwide reputation for banking and financial services. In view of the reputation of the trademarks RBS, the Panel is of the opinion that the Respondent must have been aware that the disputed domain name is confusingly similar to the protected trademarks RBS of the Complainant at the time of registration.
According to the provided screenshot of the website at the disputed domain name, the purported financial services which were previously offered were targeting the Complainant’s customers and the Respondent was using a logo that is identical to the Complainant’s logo. This Panel is of the opinion that the Respondent was potentially phishing for customers’ financial information and such a risk can not be tolerated under the bad faith analysis.
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, the Panel also finds that the Respondent’s silence both to the cease and desist letter sent by the Complainant, as well as the proceedings, are all additional factors supportive of the Respondent’s bad faith conduct.
Combined with the other elements of this case, the fact that today the disputed domain name is inactive.
In accordance with paragraph 4(b)(iv) of the Policy, the Panel is satisfied that there is evidence of registration and use of the disputed domain name in bad faith.
The third requirement of paragraph 4(a) of the Policy has been met.
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-onnet.com>, be transferred to the Complainant.
Dated: October 25, 2012