WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Royal Bank of Scotland Group plc v. Adeline Vigourou

Case No. D2012-1722

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, United Kingdom.

The Respondent is Adeline Vigourou of Goetzenbruck, France.

2. The Domain Name and Registrar

The disputed domain name <rbs-groupsfinancial.com> is registered with Key-Systems GmbH dba domaindiscount24.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 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 the contact details.

On September 17, 2012, the Center informed the parties that the language of the Registration Agreement (French) differed from the language of the Complaint (English). The Complainant requested English be the language of the proceeding on September 19, 2012. The Respondent did not reply.

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 in both French and English, and the proceedings commenced on September 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2012.

The Center appointed Theda König Horowicz as the sole panelist in this matter on November 5, 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, The Royal Bank of Scotland Group plc, is a company incorporated in Scotland (United Kingdom) which offers its financial services worldwide under the trademark RBS.

The Complainant owns several registrations for the trademark RBS, including:

- United Kingdom Trademark Registration No. 2004617 registered on November 23, 1994, in classes 9, 16, 35, 36 and 42 of the International Classification;

- Community Trademark Registration (“CTM”) No. 97469 filed on April 1, 1996 and registered on March 3, 1998, in classes 9, 16, 35, 36 and 42 of the International Classification.

In addition to its trademark registrations, the Complainant holds a wide portfolio of domain names containing its trademark RBS. The Complainant operates its official website under the domain names <rbs.com> and <rbsgroup.com>.

The Respondent registered the disputed domain name <rbs-groupsfinancial.com> on June 4, 2012.

The Complainant sent a cease and desist letter to the Respondent by email on June 13, 2012. Despite reminders, no response was received.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name <rbs-groupsfinancial.com> is clearly confusingly similar to the Complainant’s registered world famous trademark RBS. The addition of the suffixes “groups” and “financial” as well as the addition of the generic top-level domain “.com” do not impact on the overall impression of the dominant part “rbs” of the disputed domain name. Considering the fact that the Complainant’s business is banking, the suffix “financial” in combination with “rbs” is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant.

The Complainant further states that the Respondent has no rights or legitimate interests in respect of the disputed domain name notably because:

- the Respondent has no registered trademark rights or common law rights corresponding to the disputed domain name,

- the Complainant has not provided any authorization or license to the Respondent over its trademark RBS,

- the Respondent knew of the Complainant’s legal rights in the famous trademark RBS which proves that its interests cannot have been legitimate,

- the Respondent has used the disputed domain name to pass it off as the Complainant in order to defraud the Complainant’s customers through a fraudulent website, as the Respondent attempt to pass itself off as the Complainant and “phish” for customers’ financial information.

Finally, the Complainant invokes that RBS is a well-known trademark worldwide and that the Respondent was aware of the rights the Complainant has in the trademark and the value of the said trademark at the time of the registration of the disputed domain name. Furthermore, the Respondent has not answered the cease and desist letters sent by email. In addition, the Respondent used the disputed domain name to engage in a phishing scam. Finally, even if the website is currently inactive, such passive holding still constitute an act of bad faith. The Respondent is thus not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, but is committing a criminal offence and misleadingly diverting consumers for its own commercial gain.

B. Respondent

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

6. Discussion and Findings

A. Language of the proceedings

The Registration Agreement is in French. In accordance with paragraph 11(a) of the Rules, the language of the proceedings should be French.

The Complainant has requested English to be the language of the proceedings considering that the cease and desist letter was sent in English and that no reply was received. In particular, the Complainant alleges that the Respondent did no send an email stating that she did not understand the content of the letter and did not ask for clarification. Furthermore, the Complainant underlines that a translation into French of the Complaint would be cumbersome, especially under the circumstance where the Complainant has already had the website taken down due to the risk of fraud.

The opportunity was given to the Respondent to challenge this point of view. However, the Respondent did not react.

Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to the circumstances. With regard to paragraphs 10(b) and 10(c) of the Rules, the Panel must ensure fairness to the parties and maintenance of a cost-efficient and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burden to the Parties and undue delay to the proceedings (see Whirpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293 and Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Panel notes that both parties have been given a fair opportunity to present their case. The Respondent has chosen not to use the said opportunity. The Panel underlines that the disputed domain name contains English words, such as “groups” and “financial”. Furthermore, the Respondent did not mention when she received the Complainant’s e-mails with regard to the disputed domain name and/or during the present proceedings that she was not able to understand the English language. Consequently, there is no objective reason in the present case to make the Complainant translate the Complaint into French. In view of the above, this Panel finds that the language of the proceeding is English.

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

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

B. Identical or Confusingly Similar

The Complainant has shown to have rights in the trademark RBS in many countries, including but not limited to France, where the Respondent is located.

The disputed domain name contains the Complainant’s trademark in its entirety.

The Panel finds that the addition of the descriptive suffixes “groups” and “financial” are not sufficient to distinguish the disputed domain name from the Complainant’s trademark.

As underlined by the Complainant, the addition of the suffix “financial” does as a matter of fact increase the confusion considering that the Complainant’s business is banking.

The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.

In particular the Complainant has established that it has not provided any authorization or license to the Respondent over its trademark RBS. Furthermore, the disputed domain name was linked to a website promoting the financial services of another banking website.

The burden of production on this factor therefore shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights or legitimate interests in the disputed domain name (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Respondent has remained silent in these proceedings and nothing shows that it would for example have rights or legitimate interests in the trademark or in the trade name RBS.

Under the circumstances, the Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances constituting evidence of the registration and use of a domain name in bad faith.

Based on the case file and the reputation of the trademark RBS, the Panel finds that the Respondent must have known the Complainant’s trademark RBS when it registered the disputed domain name, particularly since the Respondent chose to associate the trademark RBS with the term “financial”. Indeed, as already mentioned above, the Complainant is known for being active under the trademark RBS in the field of banking. It is therefore hard to believe that the association in the disputed domain name of the word “financial” along with the trademark RBS is coincidental. As a matter of fact, it is likely that the said association was made in order to wrongfully infer in the public’s mind that there is a relation between the disputed domain name and the Complainant and/or to attract the Internet users to the Respondent’s website.

Furthermore, the Respondent linked the disputed domain name to a website promoting the financial services of one of the Complainant’s competitors.

For these reasons, the Panel finds that the Respondent registered and has used the disputed domain name in bad faith.

For the above-mentioned reasons and in the absence of any defense by the Respondent, the Panel thus concludes that the condition instituted by paragraph 4(a)(iii) is fulfilled as well.

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 disputed domain name <rbs-groupsfinancial.com> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist
Dated: November 27, 2012