WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group Plc v. Zeremina Inc
Case No. D2012-2364
1. The Parties
The Complainant is The Royal Bank of Scotland Group Plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Zeremina Inc of Owerles, United States of America.
2. The Domain Name and Registrar
The disputed domain name <rbsonlines.net> 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 November 29, 2012. On November 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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 by sending the said documents by e-mail to the e-mail addresses indicated by the Respondent […]@hotmail.com and firstname.lastname@example.org, and the proceedings commenced on December 11, 2012. Delivery to these e-mail addresses failed as evidenced by the automatic mail delivery information delivered by the system. Communication by fax failed as well. It appears that all 12 attempts made led to a busy signal and therefore failed. It is also likely that the fax number in the US indicated by the Respondent to the Registrar be incorrect. Last, the file also reveals that the notice could not be sent to the Respondent because the postal address indicated and confirmed by the Registrar which reads “Rbolines Inc, Zeremina Inc Owerles, Owerles, US 833334”, was incomplete. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2013.
The Center appointed Pierre Kobel as the sole panelist in this matter on January 16, 2013. 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 on October 29, 2012.
The Complainant was incorporated as a public company on October 31, 1984.
The Complainant is the owner of the following trademarks and service marks:
- A word mark RBS No. 2004617 registered on December 19, 1994, in the United Kingdom in classes 9, 16, 35, 36, and 42.
- A word mark RBS No. 856518 registered internationally in a wide number of countries in the world on December 19, 2006, in the United States of America in classes 9, 16, 35, 36, 41, and 42.
- A word mark RBS No. 3185538 registered on December 19, 2006, in the United States of America in classes 9, 16, 35, and 36.
- A large number of word marks RBS registered directly in many countries, such as Egypt, China, South Africa, Colombia, Israel, Switzerland, etc.
- Many service marks composed of RBS followed by another name such as RBS Bank, RBS Advanta, RBS America, RBS Autopay, RBS Bankline, RBS Building Tomorrow, RBS Citizens, RBS Coutts, RBS Cross, RBS Finance, RBS Essential, etc.
that is altogether some 380 trade and service marks (Annex 6a to the Complaint).
However, the Complainant does not own a trademark composed of the exact terms “RBS ONLINE”.
The Complainant is also the owner of a collection of domain names, many of which are exclusively composed of the letters “RBS”. For example, in the evidence filed by the Complainant one can find domain names such as <rbs.com>, <rbs.aero>, <rbs.ad>, <rbs.am>, <rbs.az>, <rbs.be>, <rbs.biz>, <rbs.bs>, <rbs.bt>, <rbs.by>, etc. The Complainant also owns many domain names composed of a combination between “RBS” and another term, such as for example, <rbsonlinenet.com>, <rbsonlinecore.com>, <rbsonline-uk.net>, <rbsonline-uk.com>, <rbsonl.com>, etc.
When the Panel was appointed, the website operated by the Respondent was disabled.
5. Parties’ Contentions
The Complainant submits that it is one of the oldest banks in the United Kingdom. It offers financial services worldwide and alleges to have spent considerable amount of money to promote and develop the trademark RBS, as evidenced by the submitted list of trade and service marks and list of domain names.
The Complainant alleges that its trademark RBS has inherent and acquired distinctiveness. According to the Complainant, RBS is so notorious that it ought to be considered as a well-known mark in the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property (“Paris Convention”), i.e. as a trademark with distinctiveness beyond the classes of products or services for which it is registered. The Complainant believes that the protection deserved by its service and trademark RBS, goes far beyond goods and services in the financial industry.
The Complainant submits that the characteristic part of the disputed domain name is composed of the three letters “RBS” which are identical to its trade and service marks. The term “onlines” is only descriptive of activities matching those of the Complainant. As far as the top-level domain “.net” is concerned, it should have no impact on the assessment of similarity between its marks and the disputed domain name. The Complainant therefore believes that the disputed domain name is confusingly similar to its trademark.
The Complainant also submits that there is no trademark or trade name registered in the name of the Respondent, corresponding to the disputed domain name and that it was unable to find anything suggesting that the Respondent had any legitimate right to the disputed domain name. Since the Respondent cannot claim any license or authorization granted by the Complainant, or any other type of relationship with the Complainant, it is not in a position to claim any rights or legitimate interests in the disputed domain name.
Because of the notoriety of its trade and service word marks RBS, the Complainant believes that the Respondent could not have registered and used the disputed domain name without being aware of the Complainant’s rights in it.
The Complainant alleges that the Respondent is engaging in a phishing scam by using a website identical to the Complainant’s. Among the exhibits filed by the Complainant in support of its claim, only one document might be understood as a confirmation of this allegation. It is a copy of code concerning the web site of the Respondent which stipulates in the two lines which appear in English language: “A simpler mortgage, a closer business relationship or a broader global reach. Discover The Royal Bank of Scotland approach to service for personal, business and corporate banking customers”.
The Complainant also alleges that it wrote to the Respondent on November 1, 2012, using the e-mail address mentioned with the Registrar, to place it under notice to cease and desist from using the trade and service mark of the Complainant. The next day, on November 2, 2012, the website operated under the disputed domain name was disabled.
Finally, the Complainant submits that even if the website is currently inactive, such passive holding could constitute bad faith use of the disputed domain name. Referring to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the Complainant contends that the lack of active use does not prevent a finding of bad faith. Depending on the circumstances, such passive use may be held as bad faith. For instance, the Complainant submits that the notoriety of its trade and service mark and the impossibility to conceive any good faith use of the disputed domain name are indicative of bad faith.
In conclusion the Complainant is asking for the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, where the Complainant provides evidence that:
- the disputed domain name is identical or confusingly similar to its trademark or service mark, and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name, and
- the disputed domain name has been registered and is being used in bad faith,
the Complainant may obtain the cancellation or the transfer of the disputed domain name under paragraph 4(i) of the Policy.
Where the Respondent does not submit a response, and unless there are exceptional circumstances explaining or justifying such failure to respond, the Panel shall decide the dispute based upon the complaint (Paragraph 5(e) of the Rules).
This is confirmed by paragraph 14(a) of the Rules which stipulates that the Panel shall proceed to a decision on the complaint in the event that a party does not comply with any of the time periods established by these Rules or the Panel. In addition, the Panel is entitled to draw such inferences it deems appropriate from any failure by a party to comply with any provision or requirement under these Rules. Exceptional circumstances are reserved.
A. Identical or Confusingly Similar
The disputed domain name is composed of the letters “RBS” identical to the trademark of the Complainant and the words “on lines”. It is well settled under the UDRP that the mere addition of descriptive terms is insufficient to avoid a finding of confusing similarity (Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275; Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002.
As a result, the Panel finds that the disputed domain name is confusingly similar to the trade and service mark RBS of the Complainant.
B. Rights or Legitimate Interests
The Complainant stated that it never authorized or provided any license to the Respondent authorizing usage of its trade and service mark RBS. The Respondent failed to reply and apparently stopped operating the web site upon receipt of the Complainant’s notice.
In the absence of response, the Panel finds that it has no reason to doubt the statement made by the Complainant in its Complaint.
The fact that the registrant of the disputed domain name appears to be associated with a corporation called “Rbolines Inc”, a name relatively similar to the disputed domain name, is not conclusive of any rights or legitimate interests of the Respondent in the disputed domain name. That corporate name does not match the disputed domain name. Whilst the disputed domain name may have a meaning such as RBS ON LINES, the said corporate name has none. Moreover, another corporation “Zeremina Inc” is mentioned as alleged registrant, the name of which has nothing in common with the disputed domain name. As a result, there is no objective element indicating that perhaps, the Respondent could be commonly known by the disputed domain name.
On the other hand, the Complainant filed evidence of the registration of its trademark in a very wide number of countries and the extensive registration of domain names identical to its trademark or including its trademark. Despite the absence of evidence that RBS is a well-known trademark in the meaning of Article 6bis of the Paris Convention, it is likely that in all the countries where it is registered, it is relatively notorious in relation to financial services.
The Panel is therefore satisfied that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, which the Respondent failed to object, and that the requirements of paragraph 4(a)(ii) of the Policy are satisfied.
C. Registered and Used in Bad Faith
The evidence provided by the Complainant to support its allegation that the Respondent was engaging into a phishing scam, is at least conclusive of the fact that the web site was not only registered but also used by the Respondent. The inability of the Complainant to provide additional evidence may be due to the fact that the Respondent disabled its web site when it received the Complainant’s cease and desist letter.
This being, the Panel notes that the disputed domain name is composed of “RBS” and the words “on” and “lines”. It is therefore composed first of a sign “RBS” devoid of apparent meaning and identical to the trademark of the Complainant, and then of words which are descriptive of activities through electronic interchange. Therefore, the first meaning which comes to mind when considering the disputed domain name as a whole, is one corresponding to the services of the Complainant, i.e. on line financial services. There is no other apparent meaning to the disputed domain name. Since the Respondent has apparently no relationship whatsoever with the Complainant, such registration of the disputed domain name corresponding to some of the activities of the Complainant, can only be in bad faith in the meaning of paragraph 4(b)(iv) of the Policy.
Second, bearing in mind the contents of paragraph 4(b) of the Policy which provides non-exhaustive examples of circumstances that can be qualified as evidence of registration and use in bad faith, the Panel believes that it is appropriate to consider other basic elements of this file.
As mentioned above, the Respondent took measures to prevent anyone from stating the usage made so far of the disputed domain name. The day after a cease and desist notice was sent to the Respondent, it disabled its web site. This shows that when it became aware of the actions envisaged by the Complainant to enforce its claimed rights in the disputed domain name, the Respondent took measures to conceal its activities.
After that and contrary to its obligations, the Respondent could not be reached any more. As far as its obligations are concerned, paragraph 2 of the Policy provides that
“By applying to register a domain name (…), you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations”.
Paragraph 7 of the Registration Agreement confirms these obligations in further detail, stipulating that the registrant is
“required to provide certain information and to update this information to keep it current, complete and accurate. This information includes (i) your full name, postal address, e-mail address, voice telephone number, and fax number if available; (ii) the name of an authorized person for contact purposes in the case of a registrant that is an organization, association, or corporation; (iii) the IP addresses of the primary nameserver and any secondary nameservers for the domain name; (iv) … (v) the full name postal address, e-mail address, voice telephone number, and fax number if available of the technical contact for the domain name; (vi) the full name, postal address, e-mail address, voice telephone number, and fax number if available of the administrative contact for the domain name,…”
It also stipulates that “[y]ou acknowledge that willfully providing inaccurate information or willfully failing to update information promptly will constitute a material breach of this Agreement and will be a basis for cancellation of your domain name”.
The Panel made a quick search on the Internet (“www.geopostcodes.com”) regarding the postal address given to the Registrar by the Respondent, to find out that the zip code actually corresponds to the city of Hansen in Idaho and that there does not seem to be any city named “Owerles” in the United States, a word which seems to have more in common with “powerless” than any geographic indication.
The Panel believes that the behavior consisting in registering a domain name under different corporate names without apparent existence, under an incomplete and likely imaginary postal address, under a fax number which does not appear as correct and leads to a busy signal and then in suddenly disabling the web site operated under the disputed domain name as well as all registered e-mail addresses where the registrant could be reached allowing it to vanish when challenged, all acts which are in blatant contradiction with the Policy and its aims and with obligations subscribed barely a few months before, can only be construed as further evidence of bad faith.
As a result and considering the absence of apparent legitimate interests or rights of the Respondent in the disputed domain name, the Panel cannot see any reason for choosing the disputed domain name other than seeking an association with the Complainant’s name.
In conclusion, the Panel finds that the Respondent acted in bad faith in the meaning of paragraph 4(b) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(b) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <rbsonlines.net> be transferred to the Complainant.
Date: February 3, 2013