WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group Plc v. PrivacyProtect.org / N/A, Andrew Neil
Case No D2013-0274
1. The Parties
The Complainant is The Royal Bank of Scotland Group Plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is PrivacyProtect.org of Queensland, Australia / N/A, Andrew Neil of Kuala Lumpur, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <royalsrbsonline.com> (the “Domain Name”) is registered with NetEarth One Inc. d/b/a NetEarth (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center) on February 8, 2013. On February 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 8, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 13, 2013, including Andrew Neil as the Respondent.
The Center verified that the Complaint together with the amendment to 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 February 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2013.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on March 13, 2013. 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 following facts and circumstances are to be found in the Complaint and its Annexes and, in the absence of challenge, can be accepted as background.
The Complainant is a company incorporated in Scotland and is the proprietor of the RBS trademark, and all other trademarks used in connection with the famous RBS brand.
The Complainant was founded in Edinburgh by Royal Charter in 1727 and is one of the oldest banks in the United Kingdom. It was incorporated as a public limited company in the United Kingdom in 1968.
The Complainant offers financial services worldwide under the mark “RBS” and has spent a significant amount of money promoting and developing this mark. The Complainant also owns an international portfolio of registered trademarks for the term “RBS” worldwide which have been registered from 1994 up to the present.
In addition to the above registrations, the Complainant holds several United States Patent and Trademark Office (“USPTO”) trademarks registered in 2006, 2007 and 2008. The Complainant opened its first office in the United States of America in 1960 where it is now one of the largest providers of liquidity. A list of the Complainant’s registered trademarks is annexed to the Complaint.
The Complainant operates websites such as “www.rbs.com” (registered in 1994) and “www.rbsgroup.com” (registered in 1995). It is the strict policy of the Complainant that all domain names containing the word “RBS” should be owned by the Complainant and a list of the Complainant’s domain name portfolio is also an annexed to the Complaint.
The Domain Name was registered by the Respondent on December 22, 2012.
5. Parties’ Contentions
The Complainant’s Complaint is as follows:
The dominant part of the Domain Name comprises the term “RBS”, which is identical to the trademark RBS, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world. (Annexes 6 and 8).
The Domain Name is confusingly similar to the Complainant’s world famous trademark RBS.
The addition of the suffixes “royals” and “online” do not have any impact on the overall impression of the Domain Name as its dominant part “RBS” is instantly recognizable as a world famous trademark.
The addition of the generic top-level domain (“gTLD) “.com” does not have any impact on the overall impression of the Domain Name and is also irrelevant to the determination of whether there is identity or confusing similarity between the trademark and the Domain Name.
Anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood 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 Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation between the Respondent and the Complainant. By using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
Summarizing this, the Complainant is the owner of the trademark RBS. The Domain Name is clearly confusingly similar to the Complainant’s registered trademark RBS. The suffix “royals” or “online” does not detract from the overall impression and the Domain Name must therefore be considered to be confusingly similar to the Complainant’s trademark.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant has also not found anything that would suggest that the Respondent has been using RBS in any other way that would give it any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage. Moreover no licence 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. Nor is there a disclaimer on the Respondent’s website describing the non-existent relationship with the Complainant.
The Respondent must have known of the Complainant’s legal rights in the name RBS at the time of the registration and it is the fame of the trademark that has motivated the Respondent to register the Domain Name.
In fact, the Respondent has accordingly used the Domain Name to pass itself off as the Complainant, being linked to the Complainant, or in order to mislead the Complainant’s customers through a website identical to the Complainant’s. The Respondent’s attempt to pass itself off as the Complainant and “phish” for customers’ financial information is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name pursuant to the Policy.
By its failure to respond, the Respondent is in default in terms of paragraphs 5(a) and 14 of the Rules, and paragraph 8(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint.
6. Discussion & Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) That the domain name registered by a respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights;
(ii) That the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, a complainant bears the burden of proof in respect of each of the three elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the Complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal, Inc, WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a response, particularly in the light of the fact that the Complainant wrote to the Respondent, as did the Center, when dealing with procedural matters, and advising the Respondent of time limits, as against the Respondent’s failure entirely to respond to any such correspondence.
From this the Panel considers that it follows that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441); LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Standard Innovation Corporation, supra; VKR Holdings A/S v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters, supra; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Allianz, supra; Standard Innovation Corporation, supra; VKR Holding A/S, supra; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412).
C. Domain Name is Identical or Confusingly Similar
Not only has the Complainant put up an extensive list of its worldwide marks registered in the United Kingdom, which is to be found in the Annex, but it is also clearly apparent therefrom that almost all were registered prior to the registration of the Domain Name by the Respondent. In addition, as appears from the Factual Background, the Complainant has set out details of the extent to which it carries on business globally and that it can be fairly described as a major global financial services provider of many and extensive financial services.
The Complainant has cited several previous URDP decisions of both WIPO and NAF which it contends confirm the RBS trademark as being world famous. As the Respondent was not party to any of these decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply, and what may have been found proven in those decisions is not evidence in this matter or binding on the Panel.
The Panel considers, however, that on the facts and circumstances relied upon by the Complainant, particularly as they are unchallenged by the Respondent, there is sufficient to show that the Complainant has rights which fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised, and as confirmed and extended by Articles 16.2 and 16.3 of the General Agreement on Tariffs and Trade (GATT) Agreement on Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the “TRIPS Agreement”). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961. In the present matter the Complainant’s trademarks are in fact, in many instances, registered for several different classes.
The fact that the word mark has been incorporated entirely into the Domain Name is sufficient to establish that it is identical or confusingly similar to the Complainant’s registered mark (Quixtar Investments Inc v Dennis Hoffman, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016).
Moreover the addition of the words “royals” and “online” in the Domain Name does not distinguish it from the Complainant’s trademarks (Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367). The dominant portion of the Domain Name is RBS, being the entire word mark of many of the registered marks of the Complainant. This also reinforces the similarity and the likelihood of confusion (Intuit Inc. v. Nett Corp, WIPO Case No. D2005-1206; BID INDUSTRIAL HOLDINGS v. CRAIG SMITH, WIPO Case No. D2009-1627; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).
If anything, in the absence of any explanation from the Respondent, the use of the word “royals” appears to strengthen the inference that there is a link with the Complainant as this is part of its unabbreviated name for The Royal Bank of Scotland Group Plc.
Indeed the adoption of an entire trademark and adopting descriptive or non-distinctive words thereto does not avoid likely confusion (Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598). Likewise, the addition of gTLD “.com” is non-distinctive and does not detract therefrom (Nike, supra).
The Panel is satisfied that the Complainant has proved the first element.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios Inc, supra).
Having defaulted, the Respondent has placed itself in a position where it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the sole proprietor of the mark in question and that the Respondent has no rights or licence. Nor, as is said by the Complainant, has the Respondent been given any permission to register or use any domain name incorporating the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the Domain Name and that any unauthorized use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant (AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer, supra).
Apart from there being no authorization on the part of the Complainant, there appears to be no relationship or association between the Complainant and the Respondent which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc, supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s make as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.”
Whilst bad faith can exist where a domain name contains in its entirety a complainant’s trademark, the Panel does not see that this principle cannot also apply where a domain name contains the dominant feature of the trademark of the complainant and where the whole trademark has been so incorporated. (Barclays Bank, supra).
The implication arising from the Domain Name, in the mind of a would-be customer, is therefore clearly that the website is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith registration and use (Media24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer, supra; Barclays Bank, supra; Nedbank Limited v. Online Promotions Ltd, Anthony Brown, WIPO Case No. D2012-1465).
Moreover, by the use of the Complainant’s trademark as incorporated in the Domain Name, the Respondent is trading on the value established by the Complainant in its marks, to attract Internet users and thereby deriving economic benefit from either those users attracted to the Respondent’s website or by receiving compensation from others, if these would-be customers are routed elsewhere. Such a practice would also constitute bad faith (Yahoo! Inc. and GeoCities v. DataArt Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).
The selection of a domain name that is confusingly similar to the Complainant’s trademark and the Complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the Domain Name in circumstances where it was very well aware of the Complainant’s reputation and intended to benefit therefrom (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <royalsrbsonline.com> be transferred to the Complainant.
Archibald Findlay SC
Date: March 18, 2013