WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group plc v. James Milner
Case No. D2012-1724
1. The Parties
The Complainant is The Royal Bank of Scotland Group plc, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Melbourne IT Digital Brand Services, United Kingdom.
The Respondent is James Milner, Edinburgh, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <online-rbs.com> is registered with LiquidNet Ltd. (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 27, 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 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2012.
The Center appointed David H. Tatham as the sole panelist in this matter on October 1, 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 disputed domain name was registered with the registrar on June 9, 2012.
The Complainant is a long and well established company offering its financial services on a worldwide scale. It was founded in Edinburgh, Scotland by Royal Charter in 1727 and incorporated as a public limited company in the United Kingdom in 1968.
It is the owner of numerous registrations worldwide for the trademark RBS as well as having numerous domain names that incorporate the letters RBS.
The Respondent failed to respond to the Complaint, nor to two earlier cease-and-desist letters from the Complainant, so nothing is known about him other than his website at the disputed domain name.
5. Parties’ Contentions
The Complainant offers its financial services under the trademark RBS and states that it has spent significant sums of money promoting and developing this mark. It owns numerous registrations of the RBS trademark, of which it annexed copies.
The Complainant operates websites at its domain names <rbs.com> and <rbsgroup.com>. However the Complainant also annexes a list of the thousands of domain names which it owns and states that it is strict company policy that it should own any domain name containing the letters RBS. To that end, the Complainant lists just a few of the domain name disputes which it had won protecting these three letters.
The Complainant further contends that its trademark RBS is a well-known mark and therefore it has the right, under the Paris Convention and the TRIPS Agreement, to prevent any use of it in connection with any goods or services.
The Complainant contends that the dominant part of the disputed domain name is the word RBS and that this is identical to its trademark. Furthermore, the prefix “online”, the hyphen, and the TLD .com in the disputed domain name have no impact upon the overall impression of the dominant letters RBS which, it maintains, would be instantly recognizable as its world famous mark. The likelihood of confusion includes an obvious association with the Complainant’s trademark RBS and there is a considerable risk that the general public will believe that the disputed domain name either belongs to the Complainant, or that there is a commercial relationship between the Respondent and the Complainant. This, the Complainant contends, is exploitation by the Respondent of the goodwill and image of its well-known trademark, resulting in its dilution and other damage.
Under the heading of Rights or Legitimate Interests, the Complainant contends that it has found nothing that would suggest that the Respondent has been using the word RBS in any way that could confer legitimate rights in the name. The Complainant has neither licensed the Respondent to use its name nor authorized him to do so and there is no disclaimer to any relationship between the parties on the website at the disputed domain name.
The Complainant contends that it must be obvious that the Respondent had some knowledge of the Complainant before registering the disputed domain name, so the latter’s actions in registering the disputed domain name cannot have been legitimate.
The Complainant maintains, furthermore, that the Respondent has used the disputed domain name to pass itself off as the Complainant and to thereby defraud the Complainant’s customers. In fact, the Complainant accuses the Respondent of using the disputed domain name in order to “phish” for financial information which, it claims, is neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use pursuant to the Policy.
In connection with bad faith, the Complainant contends that the disputed domain name must have been registered only because of the considerable value and goodwill of its trademark RBS and because of its own substantial and widespread reputation in the finance industry, which constitutes bad faith.
The Complainant further contends that the Respondent has been using the disputed domain name to deceive the Complainant’s customers and to manipulate them into divulging sensitive financial information. This also constitutes bad faith.
Also, it has been held, for example, that the passive holding of an inactive website could constitute bad faith. There is no suggestion that the Respondent has any intention of making any legitimate use of the disputed domain name, or that there is any conceivable good faith use of the disputed domain name.
The Complainant attempted on two occasions to contact the Respondent by e-mail to ask for the cancellation of the disputed domain name without receiving any acknowledgement or reply.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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 5(b)(i) of the Rules specifies that a respondent is expected to: “[r]despond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has thereby been given an opportunity to present his case, but has failed to do so.
Paragraph 14(b) of the Rules specifies that, in the event of a default, “…the Panel shall draw such inferences there from as it considers appropriate.” It was said in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443 that “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant.” “In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this present proceeding, since the Respondent has chosen not to submit a Response, his default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the Complainant’s assertions, and to take its decision on the basis of the statements and documents before it, in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable.
A. Identical or Confusingly Similar
The Complainant claims to have numerous registrations of the trademark RBS either alone or in combination with other matters, and it supplied details of 383 of them. The earliest is United Kingdom registration No. 2004617 dated November 23, 1994 for goods and services in Classes 9, 16, 35, 36, and 42.
It is by now well established that, when comparing a disputed domain name with a trademark, a gTLD such as, in this case, “.com” may be disregarded. See, for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, in which it was found that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the comparison here is between the trademark RBS and the phrase “online-rbs”.
The Complainant’s name and trademark RBS is well-known throughout the world and, not surprisingly, it has attracted numerous attempts by cybersquatters to incorporate it into various domain names and the Complainant refers to 14 cases, all of which were decided in its favour.
In the present case, the disputed domain name has merely added the generic word “online” as a prefix to the trademark RBS and there is little doubt that the average consumer would regard the term “online-rbs” as referring to the Complainant.
In Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033, it was held that “it is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion.” It was also held in Merrell Pharmaceuticals Inc., Aventis Pharma SA. v. Filips Kostins, WIPO Case No. D2004-0943, that “the Domain Name is confusingly similar to the trademark ALLEGRA, as the prefixes ‘buy’ and ‘generic’ are generic terms, which do not influence significantly the overall impression of the Domain Name which is dominated by the term ALLEGRA.” This Panel has also decided a number of similar cases in favour of complainants. See, for example, Wacoal Corp., Wacoal America Inc. v. Uri Shevchenko, WIPO Case No. D2010-1587 (<wacoalbra.org>), F. Hoffmann-La Roche AG v. Contactprivacy.com / Mike Kazaros, WIPO Case No. D2010-2212 (<valiumvalues.com>), F. Hoffmann-La Roche AG v. Hristo Ibouchev, WIPO Case No. D2010-2259 (<buyvalium247.com>, <valiumnopresc.com>, and <valium4anxiety.com>), Johnson & Johnson v. Ruan Rupke, WIPO Case No. D2011-1196 (<aveenocoupon.net>, <aveenocoupon.org>, <rogaine-coupon.com>, <zyrteccoupon.net>, and <zyrteccoupon.org>), Barclays Bank PLC v. Bar, WIPO Case No. D2011-1240 (<barclaysremittancefpuonline.com>), E. Remy Martin & Co v. Giammario Villa, WIPO Case No. D2012-0735 (<remymartinvs.com> and <remymartinxo.com>).
In these circumstances, and in the light of these clear precedents, the Panel has little hesitation in finding that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is therefore proved.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name, and it is well established that once a complainant has made out a prima facie case that the respondent has no rights or legitimate interests in a domain name, then the burden shifts to the respondent to prove otherwise. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828, in which it was held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in the disputed domain name.
In the present case, the Respondent has chosen not to file anything in his defence despite the burden and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using the disputed domain name, he could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed in any other circumstance, are in his favour.
The only information available about the Respondent is the WhoIs information provided by the Registrar. This contains no evidence of any rights or legitimate interests of the Respondent in the disputed domain name which, as found above, is confusingly similar to the Complainant’s well-known trademark RBS. The website at the disputed domain name makes no mention of the Respondent but it does list several products together with information about them. The offer of a credit card for instance, actually contains an illustration of a card that bears the Complainant’s logo.
The Respondent makes no claims for having rights or legitimate interests in respect of the disputed domain name, and provides no explanation whatsoever for its registration and use of the disputed domain name.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name so that paragraph 4(a)(ii) of the Policy is also proved in respect of it.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which are evidence that the respondent has acted in bad faith. In this case, the Panel believes that the Respondent is in contravention of two of them.
The registration of the disputed domain names does appear to have been made “primarily for the purpose of disrupting” the Complainant’s business, but it is also an intentional attempt “to attract, for commercial gain, Internet users to” the Respondent’s website. In the Panel’s view, these fall squarely within paragraph 4(b)(iii) and (iv) of the Policy.
Additionally, the Respondent must have been aware of the Complainants’ name and trademark at the time of the registration of the disputed domain name. Not only is the name RBS known and recognised the world over, but the Respondent has an address in Edinburgh which is in Scotland, and although the Complainant now has a London address, it was originally founded in Edinburgh and still has the word “Scotland” in its name.
This suggests opportunistic bad faith on the part of the Respondent. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the word “pokémon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith. See also BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the domain name at issue, because of the widespread and long-standing advertising and marketing of goods and services under the trademarks in question, because of the inclusion of the entire trade mark in the domain name, and because of the similarity of products implied by addition of telecommunications services suffix. All of which suggested a knowledge of the complainant’s rights in the trade marks.
In addition, the Complainant accuses the Respondent of phishing. This is the practice of sending an e-mail to a user falsely claiming to be an established legitimate enterprise, in an attempt to scam the unsuspecting user into surrendering private information such as user names, passwords, and credit card details. However, there is very little clear evidence of this filed by the Complainant.
Once again it is worth pointing out that the Respondent has filed no response so it has not attempted to rebut any of the Complainant’s arguments on this point.
The Panel concludes that paragraph 4(a)(iii) of the Policy has been proved.
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 <online-rbs.com> be transferred to the Complainant.
David H. Tatham
Dated: October 5, 2012