WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ulster Bank Limited v. Franchise Ulster
Case No. D2013-0275
1. The Parties
The Complainant is Ulster Bank Limited, Belfast, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Franchise Ulster, North Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ulsterfranchise.com> (the “Domain Name”) is registered with eNom (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 disputed domain name. On February 8, 2013, 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 February 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2013.
On February 25, 2013, the Center received a communication from an individual known as Kevin Middleton. He had the same address as the Respondent but claimed to have nothing to do with the Respondent or the Domain Name. He claimed that he had recently had his computer hacked which may have led to the use of his contact details as the address for the Respondent. Finally he stated that as he had no interest in any domain names the registration of the Domain Name to his address was possibly fraudulent.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 5, 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.
On April 8, 2013, the Panel issued Panel Order 1, seeking to resolve the confusion that existed in the Complaint, which variously listed Ulster Bank Plc and The Royal Bank of Scotland as the Complainant. The Order provided the Complainant with 4 working days to amend the Complainant to clarify the proper identity of the Complainant, with the Respondent having until April 18, 2013 to make any further Response.
On April 8, 2013, the Complainant filed an amendment to the Complainant indicating that the proper Complainant was Ulster Bank Limited and replacing all references to Ulster Bank Plc and The Royal Bank of Scotland in the Complaint with Ulster Bank Limited. The Respondent did not file a response to the amendment to the Complaint. Therefore the decision will be made in reliance on the Complaint as amended by the amendment of April 8, 2013.
4. Factual Background
The Complainant is a banking company based in the Republic of Ireland and Northern Ireland. It was founded in 1836 and became a fully owned subsidiary of the Royal Bank of Scotland in 2000. Across the Republic of Ireland and Northern Ireland, the Complainant employs over 6,000 people and has around 1.9 million personal and business customers through 236 outlets across the island of Ireland.
The Complainant offers its services under the name “Ulster Bank” (the “ULSTER BANK Mark”) and has registered the ULSTER BANK Mark as a trade mark since at least 2005. It holds trade mark registrations for the ULSTER BANK Mark across Europe.
The Domain Name <ulsterfranchise.com> was created on December 3, 2012. It is currently inactive however prior to the commencement of this proceeding, it revolved to a site (“Respondent’s Website”) that mimicked the design of the Complainant’s website and was used as part of a “phishing” attack on the Complainant’s customers, seeking to persuade the Complainant’s customers to divulge sensitive financial data to the Respondent.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s ULSTER BANK Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ULSTER BANK Mark. It owns trade mark registrations for the ULSTER BANK Mark in the European Union. The ULSTER BANK Mark is in possession of substantial inherent and acquired distinctiveness. The awareness of the ULSTER BANK Mark is considered in large parts of the European Union to be significant.
The dominant part of the Domain Name comprises the term “Ulster”, which is confusingly similar to the ULSTER BANK Mark. The addition of the suffix “franchise” will not have any impact on the overall impression of the dominant part of the name, ULSTER BANK. 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 ULSTER BANK Mark. With reference to the reputation of the ULSTER BANK Mark there is a considerable risk that the public will perceive the Respondent’s 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.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no trade mark rights or license to use the ULSTER BANK Mark, nor is it commonly known by the name. Considering that the website connected to the Domain Name has been used for fraudulent purposes, it seems very likely that the Respondent’s purported name “Franchise Ulster” is a false alias. The Respondent has not used or made preparations to use the Domain Name in connection with a bona fide offering of goods and services, nor is the Respondent making a legitimate non-commercial or fair use of the Domain Name.
In fact, the Respondent has used the Domain Name to pass itself off as the Complainant in order to defraud Complainant’s customers through a fraudulent website identical to the Complainant’s. The Respondent used the Domain Name to “phish” for financial information in an attempt to defraud the Complainant’s customers. 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 pursuant to Policy.
The Domain Name was registered and is being used in bad faith. By utilizing the Complainant’s ULSTER BANK Mark, the Respondent was using the Domain Name to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information. Thus, the Respondent’s use of the Domain Name constitutes bad faith registration and use under Policy. Even if the Domain Name is currently inactive, such passive holding could still constitute an act of bad faith and any realistic use of the Domain Name by the Respondent would constitute “passing off” and/or trademark infringement. The Respondent is committing a criminal offence and misleadingly diverting consumers for his own commercial gain.
The Respondent did not reply to the Complainant’s contentions. The Center has received a communication from an individual known as Kevin Middleton but he has denied any connection with the named Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ULSTER BANK Mark, having registrations for ULSTER BANK as a trade mark across the European Union.
The Domain Name consists of the first word in the ULSTER BANK Mark ULSTER combined with the word “franchise”.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), says in relation to the test for confusing similarity, that
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
The difficulty in the present proceeding is that the common element shared between the Domain Name and the ULSTER BANK Mark is the word “Ulster”. Ulster is a geographic term that variously refers to Northern Ireland or a geographic region that consists of nine of the northernmost provinces of Ireland, six of which are part of Northern Ireland, with the remaining three being part of the Republic of Ireland. The Domain Name comprises a phrase that is essentially descriptive, in that the ordinary meaning of the Domain Name would be a franchise with some connection to the Ulster region. The Panel is not persuaded by the Complainant’s assertion that “Anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant.”
Nevertheless the Panel has found that the Domain Name is confusingly similar to the ULSTER BANK Mark, albeit on factors that are unique to the present proceeding. The Panel notes that the requirement of a finding of confusing similarity under the UDRP does not require the same test as the requirement of deceptive similarity under trade mark law, rather it operates as a standing test for the Complainant in order to commence proceedings and (if the other elements are shown) be the beneficiary of an order to transfer a disputed domain name.
Firstly the Panel acknowledges the broad principle, as set out in Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 that the addition of a generic suffix to a complainant’s trade mark will not prevent a finding of confusing similarity. The present proceeding involves a generic suffix in addition to the more distinctive element of the ULSTER BANK Mark; the word “bank” being descriptive of the Complainant’s services. As such, to the extent that people would associate the Complainant with the word “Ulster” the addition of the word “franchise” does not prevent a finding of confusing similarity.
Secondly, the Domain Name refers to services that the Complainant offers, namely franchising services in the Ulster region. The Complainant offers particular services to assist franchisors and franchisees, including loans, packages and business advice for people interested in entering that area of business. These services are promoted on the Complainant’s website at ‘’www.ulsterbank.com’’. This is not a situation where the descriptive suffix has no connection with the Complainant, such as “sheep” or “roads”, rather the descriptive suffix “franchise” directly refers to services offered by the Complainant. The addition of a word to a trademark that refers to goods and services offered by the Complainant can reinforce a finding of confusing similarity between a domain name and a complainant’s trade mark see Caterpillar INC. v Roam the Planet, Ltd., WIPO Case No. D2000-0275. The Domain Name, by referring to services offered by the Complainant, supports a finding of confusing similarity, in the same way that domain names such as <ulsterloan.com> or <ulsterinterestrates.com> would.
Finally in determining whether a domain name and complainant’s mark are confusingly similar, in some circumstances, a respondent’s conduct can be relevant in making such a determination, see Fort Lee Chamber of Commerce v. Carmine A DeMarco, WIPO Case No. D2002-0291 and BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717. In short, if it is clear that a respondent registered a domain name with a specific intention of creating Internet user confusion between it and a complainant, it is likely that the domain name is confusingly similar to that complainant’s mark.
In the present proceeding the Respondent has used the Domain Name for a phishing site. Potential customers of the Complainant have been directed to the Respondent’s Website by link and encouraged to part with confidential information. The Respondent’s Website has presented itself as that of the Complainant and reproduces the ULSTER BANK Mark.
When registering the Domain Name Respondent presumably came to the conclusion that there would be a risk that Internet users who see the Domain Name would believe there to be a real connection between the Domain Name and the Complainant and/or its goods and services. Given the conduct of the Respondent and the fact that the Domain Name describes some of the services that the Complainant offers (i.e. advice and loans to franchisers in the Ulster region), the Panel finds that there is some likelihood of Internet user confusion between the Domain Name and the ULSTER BANK Mark. In such circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s ULSTER BANK Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
The Panel notes that this decision should not be interpreted to give a broad right for complainants’ whose trade marks consist of a geographic term and a descriptive word to seek the transfer of Domain Names that contain that geographical term and different descriptive word. Rather this is a fairly unusual case, where the conduct of the Respondent and the fact that the descriptive word appended to the geographical term in the disputed domain name described a service offered by the Complainant resulted in a finding of confusing similarity.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ULSTER BANK Mark or a mark similar to the ULSTER BANK Mark. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial use.
Rather it appears that the Respondent is using the Domain Name to operate a website that, without the permission of the Complainant passes itself off as the Complainant’s official website in order to defraud the Complainant’s customers by persuading them to provide them with their banking details. Such conduct is generally known as “phishing” and does not amount to a bona fide offering of goods and services.
Finally, there is no evidence that the Respondent is commonly known by the Domain Name or any similar name. While the Domain Name is registered to an entity known as “Franchise Ulster”, it is very likely that the name is simply a fake name, designed to give some implied legitimacy to the registrant. The communications from Kevin Middleton indicate that the Respondent has provided fake contact details and; as such, there is no evidence that any entity known as Franchise Ulster exists, either at its purported address, or anywhere else in the world.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests, including putting on any evidence of the existence of an entity named “Franchise Ulster” but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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 the Respondent has registered or 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 owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 trade mark 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 its web site 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 web site or location or of a product or service on the Respondent’s web site or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the ULSTER BANK Mark at the time the Domain Name was registered. The Respondent’s Website contains numerous references to the Complainant, its ULSTER BANK Mark and attempts to pass itself off as the Complainant. The registration of the Domain Name in awareness of the Complainant’s Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website has been used as part of a broader phishing campaign, to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information. This means that the Respondent likely receive a financial reward from Internet Users who visit the Respondent’s Website under the impression (created by the Domain Name and the content of the Respondent’s Website) that it is somehow connected to the Complainant. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith 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, <ulsterfranchise.com> be transferred to the Complainant.
Date: April 19, 2013