WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group plc v. Reserved Bench of Strategic Geographers / Domain ID Shield Service
Case No. D2012-1733
1. The Parties
The Complainant is The Royal Bank of Scotland Group plc, London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, United Kingdom.
The Respondent is Reserved Bench of Strategic Geographers, of unknown location. The Respondent utilized the Registrar’s “Domain ID Shield Service,” based in Hong Kong, SAR of China, to shield its contact information as registrant of the disputed domain name, and no other verifiable contact information is available. Issues concerning the identity of the Respondent are discussed more fully below in Section 6.A.
2. The Domain Name and Registrar
The disputed domain name <rbsgrps.com> is registered with OnlineNic, Inc. d/b/a China-Channel.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 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 September 11, 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 12, 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 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2012.
The Center appointed Gregory N. Albright as the sole panelist in this matter on October 15, 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 of America (the “Untied States”), and many other countries, in connection with financial services and other products and services that the Complainant offers worldwide.
The disputed domain name <rbsgrps.com> was registered on December 29, 2011.
5. Parties’ Contentions
The Complainant, The Royal Bank of Scotland Group Plc, is a company incorporated in Scotland. It is the owner of the 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 <rbsgrps.com> domain name incorporates the RBS mark, and is confusingly similar to it. The letters “grps” are an abbreviation for “groups,” and refer to “Group” in the Complainant’s name - The Royal Bank of Scotland Group Plc. Members of the public will naturally think that the website to which the disputed 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 is likely to conclude that there is some kind of commercial relation between the Respondent and the 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, there is evidence that the Respondent was making fraudulent use of the website to which the disputed domain name resolves. The Complainant’s representatives visited the Respondent’s website and received the following message: “Reported Web Forgery! This web page at rbsgrps.com has been reported as a web forgery and been blocked based on your security preferences. Web forgeries are designed to trick you into revealing personal or financial information by imitating sources you may trust. Entering any information on this web page may result in identity theft or other fraud.” 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; its fraudulent uses of the website to which the disputed domain name resolve; and its attempts to conceal its identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Matter – the Identity of the Respondent
For reasons explained more fully below, the Respondent is “Reserved Bench of Strategic Geographers” because it is the “holder” of the registration for the disputed domain name, and the “holder” is the focus of the substantive inquiry under Paragraph 4(a) of the Policy. But since the Respondent chose to use the Registrar’s “Domain ID Shield Service” to shield its own contact information from public view, this Decision will include a reference to “Domain ID Shield Service” as part of the Respondent’s identity.
The original Complaint in this case identified the Respondent as “Domain ID Shield Service.” The Complainant so named the Respondent because that was the only WhoIs information that was available to the Complainant before this proceeding commenced.
The Registrar has objected to that Service being identified as part of the identity of the Respondent in this case. According to the Registrar, “Domain ID Shield Service” is merely a service that the Registrar provides to its customers. The Registrar’s website has the following explanation of its “Domain ID Shield Service:
“OnlineNIC ID Shield act[s] as a firewall between you and [the] outside work[.] [I]nstead of your personal information being available to [the] public, the eyes of [the] information prier will target at OnlineNIC ID Shield.
- We replace your registrant, technical, admin and billing information.
- Although the whois information shows our information, you retain full ownership of the domain.
- You can pause/resume your ID Shield service on a domain for three times for free.
- You have complete control over the domain[.] [Y]ou can manage all facets of the domain via your control panel like domains without ID Shield service.
- [The] Email address listed in each contact will be changed constantly to avoid being bombarded by spam[m]er[s].”
The Complainant made an effort to resolve the present dispute informally – without the time and expense of the present proceeding – by sending a demand letter to the Respondent at the email address provided by the Registrar’s Domain ID Shield Service. The email bounced back. The Complainant then contacted the Registrar’s compliance department and asked the Registrar to forward the demand letter to the Respondent directly. The Registrar responded to the Complainant’s request by providing an email address ([name omitted]@onlinenic.com). The Complainant emailed its demand letter to that email address but received no response. This proceeding followed.
When the Complaint was filed the Respondent’s (ostensibly) true WhoIs information was “shielded” from public view by the Registrar, and replaced, as a “service,” with the name and contact information of the Registrar’s own service, i.e., the name “Domain ID Shield Service,” with an address and telephone number in Hong Kong, and an email address ([name omitted] @domainidshield.com). It is not clear whether the email address that the Registrar provided to the Complainant for purposes of trying to send a demand letter is an internal email address for the Registrar itself, or was an email address for the registrant (no such email address appears in any WhoIs information for the disputed domain name).
After the Complaint was filed, the Center asked the Registrar to verify, among other things, contact information for the registrant of the disputed domain name. The Registrar identified “Reserved Bench of Strategic Geographers” as the registrant. The other Registrar-provided contact information for the registrant of the disputed domain name is obviously unreliable, however, for several reasons.
First, the telephone number in the Registrar’s record for the disputed domain name includes what appears to be a “277” dialing code. There is no country that has a “277” dialing code. Second, the only email address in the Registrar’s record is [email@example.com], but the Complainant’s efforts to reach the Respondent at that email address were unsuccessful. Third, the only physical address in the Registrars’ record for the disputed domain name is at what appears to be a street address in “Port Nouvo Port Nouvo AF 2771.” No other information about city or country information is provided. The Panel has not been able to find any information about any city named “Port Nouvo” that might support the conclusion that it actually exists. If this is the purported name of a port city, it is extremely unlikely that it would be located in land-locked Afghanistan, which is the country suggested by the “AF” abbreviation. It is true that Porto Novo is the capital of Benin, but there is nothing else in the registrant’s purported contact information that would suggest that the registrant is located in Benin.
After the Panel was appointed, it took the unusual step of extending time for its decision and asking the Center to inquire whether the Registrar has any better contact information for the Respondent. The Registrar responded only by saying it had already provided all the contact information it has.
Given the foregoing, there are threshold issues regarding the identity of the Respondent, and how the use of a privacy shield and the lack of verifiable contact information for the Respondent affect the procedural and substantive aspects of this case.
2. Analysis Regarding the Respondent’s Identity
The Registrar has objected to having its “Domain ID Shield Service” identified as the Respondent. That objection has some merit, but the issue requires some discussion.
The Registrar provided privacy services to the registrant of the disputed domain name, and for at least a period of time the only publicly available WhoIs information was that of the Registrar’s privacy service. At the same time, as discussed above, the registrant’s own contact information has proven to be inaccurate and completely unreliable. (The Panel can only speculate whether the Registrar made any attempt to verify the accuracy of that information at the time the domain name was registered.) Thus, the contact information for the Domain ID Shield Service is the only reliable contact information that is available to be used for purposes of this proceeding.
Thus, the question: Who is the proper “Respondent” under these circumstances? The Rules define “Respondent” to mean “the holder of a domain-name registration against which a complaint is initiated.” The Rules also define “Registrar” to mean “the entity with which the Respondent has registered a domain name that is the subject of a complaint.” The most reasonable interpretation of these definitions seems to exclude the possibility that a registrar would be a “Respondent” in a UDRP proceeding even where, as in this case, the only reliable contact information associated with the registration of the disputed domain name is that of a “privacy service” offered by the registrar.
The term “holder” connotes ownership or control of the domain name registration, and must refer to the person or entity who sought to obtain registration of a domain name, and who exercises control over the website to which the domain name resolves. This is confirmed by the Policy, which defines “you” or “your” to refer “to the domain-name holder” (see Policy, Note 3), and requires that “holder” to submit to a UDRP proceeding when a complaint asserts that “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith.” Policy paragraph 4(a).
For purposes of these substantive issues, the “Respondent” must be the person or entity whose potential rights or legitimate interests in the disputed domain name, registration, and alleged bad faith are at stake. Neither the Registrar nor its privacy service are is the “holder” of the disputed domain name for these substantive purposes in this case.
That is not to say, however, that the Registrar’s “Domain ID Shield Service” has not been properly identified as the Respondent in this case for notification and procedural purposes, or that the complete lack of verifiable contact information for the registrant does not impact the substantive analysis. The Registrar chose to provide a privacy service for the registrant of the disputed domain name in this case, a circumstance that the Rules did not contemplate: “[T]he UDRP and UDRP Rules do not contemplate the use of privacy of proxy registration services per se, nor provide express guidance on the issue.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), § 4.9. When a registrar has provided a privacy service to the of a disputed domain name, the Rules give a panel the “power to conduct proceedings in such manner as it considers appropriate in accordance with such Rules and the UDRP.” Id.
“Accordingly, in a WIPO UDRP case in which a privacy or proxy registration service is named as the respondent in a filed complaint (e.g., because the complainant was not aware of the identity of any underlying registrant) – and the concerned registrar (or the privacy or proxy service provider) in response to a request from the WIPO Center discloses an underlying registrant of the domain name that differs from the privacy or proxy registration service which appeared in the WhoIs as the time the complaint was filed … ultimately the panel has discretion to determine the identity of the proper respondent.” Id.
Given that the Registrar provided privacy services to the holder of the disputed domain name, and is also unable to provide any reliable contact information for the registrant, it was entirely appropriate for the “Domain ID Shield Service” to be named as the Respondent in this case at the outset – indeed, the Complainant had no other alternative since the registrant’s own identity was “shielded.” Further, the Rules require a Provider (i.e. “a dispute-resolution provider approved by ICANN,” like WIPO), to “employ reasonably available means calculated to achieve actual notice to Respondent.” Rules 2(a). Since the holder of the domain name chose to utilize the privacy shield services that the Registrar offered, the Center quite reasonably attempted to give notice of the Complaint in this case both to the “Domain ID Shield Service” and to the registrant directly.
It also seems appropriate to include a reference to the Registrar’s “Domain ID Shield Service” as part of the
Respondent’s identity in this case because the Registrar is the sponsor of the disputed domain name, and yet it has confirmed that it is unable to provide accurate or reliable contact information for the registrant. For reasons discussed above in Section 6.A.1, it is rather obvious that the telephone number, email address and physical address for the registrant are not valid or reliable.
The complete lack of any such reliable contact information for the holder of the disputed domain name in this case has compounded problems for the Complainant (it was unable to have direct communications with the holder of the disputed domain name in an effort to resolve the dispute informally, and avoid the time and expense of this proceeding); for the Center (it was required to attempt communications regarding these proceedings through numerous alternative means, and ultimately had no reliable contact information to use for purposes of giving notice of the Complaint to the registrant of the disputed domain name (as opposed to the Registrar’s own Domain ID Shield Service)); and for the Panel (which has no reliable information at all about the Respondent, and does not even know the country in which the Respondent is located).
In this regard, the Panel notes that ICANN has recently proposed amendments to the Registration Accreditation Agreement (“RAA”) between ICANN and sponsors of domain names, like the Registrar in this case, that would include specific requirements for registrars to verify contact information for registrants. See ICANN proposed DRAFT 3 June 2012, “WhoIs Accuracy Program Specification,” at prague44.icann.org/
meetings/prague2012/Presentation-whois-accuracy-03jun12-en.pdf. It is for others to decide how best to balance the competing interests and properly weigh the burdens and benefits associated with requiring registrars to attempt to verify the identity of registrants of domain names that those registrars sponsor. This decision is not intended to suggest much less decide that the Registrant in this instance did not fully comply with its obligations under the current version of the RAA.
This case does show, however, that the Policy would be better served by robust and mandatory registrar verification procedures. The Policy is undermined when there is no reliable contact information of any kind for the holder of a disputed domain name, which by definition under the Rules is the proper “Respondent.”
In sum, the Panel will focus on the holder of the disputed domain name – i.e., “Reserved Bench of Strategic Geographers” – as the Respondent for purposes of the analysis under Paragraph 4(a) of the Policy. But the Panel also finds it appropriate to include a reference to “Domain ID Shield Service” in the identity of the Respondent under the circumstances of this case, and to consider all of the circumstances – including the lack of any verifiable contact information for the registrant – for purposes of deciding this dispute.
B. Identical or Confusingly Similar
The Complainant has shown that it owns trademark rights in the RBS trademark. The Complainant has submitted evidence that it obtained registrations of the mark around the world, and that its mark is well known, including as a result of Complainant’s use of the mark in domain names for the Complainant’s own websites.
The disputed domain name <rbsgrps.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 “grps.” Further, as the Complainant asserts, the Respondent may have included “grps” to suggest a reference to the term “Group” in the Complainant’s name.
The Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. 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.
It gave the Panel pause that the disputed domain name might be an acronym for a legitimate organization – “Reserved Bench of Strategic Geographers” shortened to “rbsg” or “rbsgrps.” The Respondent has not come forward to demonstrate this, however, and the Panel has not independently found any reference to any such organization. Further, the unreliability of the contact information that the Respondent provided to the Registrar suggests that the entire registration was fraudulent, and that the name “Reserved Bench of Strategic Geographers” was invented to produce an acronym that corresponds to the Complainant’s mark.
It also gave the Panel pause that the complete lack of reliable registrant contact information likely means that the Respondent did not receive actual notice of this proceeding, in which case inferences about Respondent’s failure to respond would be entitled to less weight. More robust registrar verification procedures might have made a significant difference in this regard, either because the Respondent would have been required to provide at least some verifiable contact information (so actual notice of a UDRP proceeding could be given) or be denied registration. The Panel concludes that the Respondent (i.e., the registrant) is ultimately and principally to blame for any lack of actual notice of this proceeding, however. If the Respondent wanted to be found for purposes of a proceeding like this one it could have provided the Registrar with at least one reliable means of contact. The Respondent’s failure to do so supports the conclusion that it has no rights or legitimate interests to defend.
Finally, there is some evidence that the website to which the disputed domain name resolves was being used for fraudulent purposes. The Complainant’s representatives received a warning message to that effect when they visited the Respondent’s website.
The Panel finds that the Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
A relevant inquiry is whether the Complainant had established trademark rights in the region where the Respondent is located at the time the disputed domain name was registered. That kind of analysis cannot be done in this case because there is no reliable information about where the registrant is, or was at the time of registration of the disputed domain name. This would be of greater concern in this case if the Complainant were a trademark owner that had established trademark rights through use in only a limited geographic region, because there might be an issue of whether the Respondent was aware of the Complainant’s mark at the time of registering the disputed domain name. Here, the Complainant’s global presence, its multi-national trademark registrations, and the fact that it operates its own websites in connection with the RBS mark, make it less important that the Respondent’s location is completely unknown. One can still infer the Respondent’s likely knowledge of the Complainant’s mark in this case, and intent to use the RBS mark for improper purposes.
A finding of bad faith is also supported by the presence of some evidence that the Respondent has used the disputed domain name in connection with a fraudulent website. The presence of fraud is also strongly suggested by the fact that the Respondent did not provide any reliable contact information in connection with the registration of the disputed domain name.
The Panel finds that the Complainant has established the third element of paragraph 4(a) 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 domain name <rbsgrps.com> be transferred to the Complainant.
Gregory N. Albright
Dated: November 8, 2012