WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Royal Bank of Scotland Group plc v. Peter Lucas / Private Registration

Case No. D2012-1736

1. The Parties

The Complainant is The Royal Bank of Scotland Group plc, London, United Kingdom of Great Britain and Northern Ireland, (the “United Kingdom”), represented by Melbourne IT Digital Brand Services, United Kingdom.

The Respondent is Peter Lucas, Brisbane, Queensland, Australia / Private Registration, Sydney, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <rbsindextrading.com> is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc. (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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 2012 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 September 7, 2012.

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 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 October 3, 2012.

The Center appointed Gregory N. Albright 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 is the owner of numerous registrations for the trademark RBS in the United Kingdom, the United States, and many other countries, in connection with financial services and other products and services that the Complainant offers worldwide. Among these is the Complainant’s Registration No. 1072819 in Australia for the RBS word mark, including in connection with financial services in Class 36, registered from December 10, 2004.

The disputed domain name <rbsindextrading.com> was registered on August 24, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant, The Royal Bank of Scotland Group Plc, is a company incorporated in Scotland. It is the owner of RBS and other marks that the Complainant uses in connection with the famous RBS brand for financial and products and services. The Complainant was founded in Edinburgh by Royal Charter in 1727 and is one of the oldest banks in the United Kingdom.

The Complainant offers its financial services worldwide under the mark RBS and has spent a significant amount of money promoting the mark. The Complainant also owns an international portfolio of registrations for the RBS mark, including registrations in the United Kingdom, the United States, and Australia.

The Complainant also operates websites at “www.rbs.com” and “www.rbsgroup.com,” registered in 1994 and 1995, respectively. The Complainant also owns a large number of other domain names that include the RBS mark.

The RBS mark has both inherent and acquired distinctiveness, and is well known. That the Complainant has established trademark rights in the RBS mark has been recognized in numerous prior UDRP proceedings. See, e.g., The Royal Bank of Scotland Group plc v. PrivacyProtect.org c/o Domain Admin., NAF Claim No. 1128875 (<rbs-transfers.com>); The Royal Bank of Scotland Group plc v. PrivacyProtect.org c/o Domain Admin, NAF Claim No. 1126039 (<rbs-online-uk.com>).

The dominant part of the <rbsindextrading.com> domain name incorporates the RBS mark, and is confusingly similar to it. The combination of the Complainant’s RBS mark with the generic terms “index” and “trading” does not prevent the disputed domain name from being confusingly similar to the Complainant’s mark. To the contrary, “index” and “trading” are terms with recognized meanings in the financial sector, and thus the use of these terms as part of the disputed domain name increases the likelihood that the public will naturally think that the website to which the domain name resolves is sponsored by the Complainant. Anyone who sees the disputed domain name is bound to mistake it as a name related to the Complainant, particularly given the strong reputation of the RBS mark, and this is likely to cause the public to conclude that there is some kind of commercial relation between the Respondent and Complainant.

There is no commercial relation between the Respondent and the Complainant. The Complainant has not granted any license or other authorization to the Respondent to use the RBS mark. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. Nor has the Complainant found anything to suggest that the Respondent has any rights or any legitimate interests with respect to the disputed domain name. The Respondent’s lack of rights or legitimate interests is confirmed by the Respondent’s failure to respond to the Complainant’s letter that demanded that the Respondent cease and desist use of the disputed domain name and Complainant’s RBS mark.

Further, prior to the filing of the Complaint the Respondent has been making use of the disputed domain name for commercial purposes, and in connection with efforts to defraud Complainant’s customers by passing itself off as the Complainant. The Respondent has used the website to which the disputed domain name resolves to fraudulently “phish” for financial information. Thus, the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services.

The Respondent registered the disputed domain name and is using it in bad faith. The Respondent chose to register a domain name that incorporates the Complainant’s RBS mark because the mark has a substantial and widespread reputation in the finance industry, and considerable value and goodwill. It is extremely unlikely that the Respondent registered a domain name that incorporates the Complainant’s famous RBS mark by mere chance.

The Respondent’s bad faith is also shown by its: failure to respond to the Complainant’s cease and desist letter; operation of a fraudulent phishing scheme in connection with the disputed domain name; and attempts to conceal its identity.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown that it owns trademark rights in the RBS trademark. Among other things, the Complainant has submitted evidence that it obtained registrations of the mark, including in Australia (where the Respondent is located), that pre-date the Respondent’s registration of the disputed domain name.

The Panel finds the disputed domain name <rbsindextrading.com> is confusingly similar to the Complainant’s RBS trademark. The disputed domain name incorporates the entirety of the RBS mark. “Numerous ICANN UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.” PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696.

Furthermore, “a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694. Thus, the disputed domain name’s confusing similarity with the RBS mark in this case is not eliminated by the Respondent’s addition of the generic terms “index” and “trading.” To the contrary, the recognized meaning of these terms in the financial services sector contributes to confusing similarity because it tends to reinforce the impression that the disputed domain name is associated with a financial services firm, like the Complainant.

The Panel finds that the Complainant has established the first element.

B. Rights or Legitimate Interests

The Complainant has also made an adequate prima facie showing that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Complainant has asserted that it has not licensed or otherwise granted the Respondent permission to use the RBS mark.

The Complainant has also shown that the website to which the disputed domain name resolves manifests the Respondent’s intent to capitalize upon the use of the RBS mark for commercial gain, rather than for any legitimate noncommercial or otherwise fair use. Indeed, the Complainant has submitted evidence that the Respondent prior to the filing of the Complaint has used the disputed domain name fraudulently, as part of a “phishing” scheme to obtain financial information, including from the Complainant’s customers. The Complainant has also submitted evidence that shows that in advertising on the website to which the disputed domain name resolves the Respondent had falsely held itself out to be a registered Australian affiliate of the Complainant. The Respondent’s use of the disputed domain name in these ways is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to the Policy. See Capital One Financial Corporation and Capital One Bank v. Austin Howel, NAF Claim No. 289304.

The Respondent did not come forward to rebut the Complainant’s evidence, or to adduce any other evidence that might show that it has any rights or legitimate interests in respect of the disputed domain name.

The Panel finds that the Complainant has established the second element.

C. Registered and Used in Bad Faith

The Complainant obtained trademark rights in the RBS mark, including trademark registrations in Australia (where the Respondent is located), long before the Respondent registered the disputed domain name. The conclusion is inescapable that the Respondent registered the <rbsindextrading.com> domain name with the intention of trading on the RBS mark which was fully incorporated in the disputed domain name.

Bad faith is also manifest in the Respondent’s use of the disputed domain name in connection with a fraudulent phishing scheme. The Complainant also adduced evidence that in connection with the disputed domain name the Respondent used advertising materials that falsely suggested that the Respondent was a registered Australian affiliate of the Complainant.

The Respondent neither responded to the Complainant’s cease and desist letter nor responded to the Complaint in this proceeding.

Under the circumstances, the Respondent’s registration and use of the disputed domain name falls within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has established the third element.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <rbsindextrading.com> be transferred to the Complainant.

Gregory N. Albright
Sole Panelist
Date: October 25, 2012