WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group plc v. WhoisGuard, WhoisGuard Protected / Big Biz Hosting, K Harry Usman
Case No. D2012-1735
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 WhoisGuard, WhoisGuard Protected of California, United States of America and Big Biz Hosting, K Harry Usman of Kuala Lumpur, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <rbsplc-uk.com> is registered with eNom (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 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 August 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2012.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on October 2, 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 a well-known bank in the United Kingdom and is offering financial services worldwide.
The Complainant owns many trademarks registration around the world including:
- United Kingdom trademark RBS, Registration No. 2004617, registered on November 23, 1994, in classes 9, 16, 35, 36, 42;
- Community trademark RBS, Registration No. 5244561, registered on June 4, 2007, in classes 16, 36, 41, 42;
- Community trademark RBS, Registration No. 7457419, registered on December 24, 2009, in classes 9, 35, 36;
- Community trademark RBS, Registration No. 97469, registered on March 23, 1998, in classes 9, 16, 35, 36, 42.
The Complainant also owns a significant number of domain names that incorporate the RBS trademark:
- <rbs.com>, registered on September 6, 1994;
- <rbs-edinburgh-plc.com>, registered on May 10, 2007;
- <rbs-edinburgh.com>, registered on December 12, 2006;
- <rbs-uk.org>, registered on December 3, 2007;
- <rbs-us.net>, registered on March 23, 2007.
The disputed domain name, <rbsplc-uk.com>, was registered on December 6, 2011.
The disputed domain name resolved to a page named “Royal Bank of Scotland”, imitating the Complainant’s website as well as the Complainant’s logo and displaying an “Internet Banking Registration Form”.
The Complainant sent a cease and desist letter to the Respondent on February 17, 2012. The Respondent did not reply to this letter.
5. Parties’ Contentions
The Complainant presents itself as one of the oldest banks in the United Kingdom and states that RBS is a well-known and reputed trademark with a substantial and widespread reputation in the finance industry.
It contends that the disputed domain name must be considered as confusingly similar to its registered trademark RBS because the suffix “plc-uk” does not detract from the overall impression but is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant.
The Complainant also contends that the Respondent has neither rights, nor any legitimate interests in the disputed domain name. It has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. It has also not found anything that would suggest that the Respondent has been using RBS in any other way that would give it any legitimate rights in this name. The Complainant adds that the Respondent’s failure to respond to the cease and desist letter further indicates that it lacks rights and legitimate interests in the disputed domain name.
The Complainant contends that the Respondent has used the disputed domain name to pass itself off as the Complainant in order to defraud the Complainant’s customers through a fraudulent website similar to the Complainant’s. The Complainant indicates that the Respondent attempted to “phish” for customers’ financial information.
The Complainant concludes that by using the disputed domain name for fraudulent purposes the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name without intend for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel observes that the Complainant has provided evidence of trademark registrations comprising the letters RBS, which is obviously identical with the relevant part of the disputed domain name <rbsplc-uk.com>. In comparison with the Complainant’s trademarks, the disputed domain name includes the additional suffix “plc-uk”.
Regarding the disputed domain name, there is no doubt that the letters “RBS” is the dominant component of the disputed domain name.
It is a well-established principle that the addition of descriptive or non-distinctive terms to a complainant’s trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the Policy.
In the present case “plc” is unanimously known as short for Public Limited Company and “uk” as short for United Kingdom.
The Panel finds that “plc” is a generic suffix which will be insufficient to avoid a finding of confusing similarity with the Complainant’s trademark.
The Panel also concurs with the finding of prior UDRP decisions (see e.g., Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768) that the use of a trademark, especially a well-known one, in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to this trademark.
Actually, the Panel considers that the suffix “plc-uk” even adds to the confusing similarity of the disputed domain name to the RBS trademark as the Complainant is actually a Public Limited Company and is originated from the United Kingdom.
In view of the above, the Panel considers that the Complainant proved that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy outlines circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
In line with prior UDRP decisions, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to have the burden of production shift to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Complainant has indeed made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name.
This finding is based on the non-disputed circumstances brought forward by the Complainant that the Complainant never gave the Respondent any license or permission to use its trademark RBS as part of a domain name or in any other way.
Besides, the Respondent did not answer the Complaint, and as such failed to demonstrate any of the above circumstances of paragraph 4(c) of the Policy.
In view of the above, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant’s trademarks and domain name registrations go back many years ago and that the RBS trademark is well-known in the United Kingdom.
The disputed domain name was registered on December 2011 and resolved to a page named “Royal Bank of Scotland”, imitating the Complainant’s website as well as the Complainant’s logo and displaying an “Internet Banking Registration Form”.
Accordingly, the Panel concludes that the Respondent knew the Complainant’s trademark and has deliberately registered the disputed domain name because of its similarity with the RBS trademark.
The Complainant explains that it initiated a deactivation of the Respondent’s website on February 2012 because of the phishing activities conducted on it.
On the provided screenshots of the Respondent’s website the Panel can see an “Internet Banking Registration Form”. If the Panel considers accordingly that there is a true risk that the Respondent “phishes” for financial information, in this Panel’s view the Complainant did not submit clear evidence of such fraudulent activities.
Nevertheless, the Panel states that it is proven that the Respondent has used the disputed domain name at least to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. This constitutes use in bad faith of the disputed domain name as per paragraph 4(b)(iv) of the Policy.
The fact that the Respondent’s website is now inactive does not change the Panel’s opinion, considering that the Respondent did not respond to the Complainant’s cease and desist letter and did not reply to the Complainant’s contentions in the current proceeding.
Therefore, in accordance with the Policy, the Panel considers that the disputed domain name was registered and is being used in bad faith.
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 <rbsplc-uk.com> be transferred to the Complainant.
Dated: October 16, 2012