WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group Plc v. Samuel J Tummino
Case No. D2013-1232
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 Samuel J Tummino of Falls Church, Virginia, United States of America.
2. The Domain Names and Registrar
The Disputed Domain Names <rbs-groupplc.com> and <rbsonlineplc.com> are registered with DomainPeople, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2013. On July 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 12, 2013, 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 July 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2013.
The Center appointed Nicholas Weston as the sole panelist in this matter on September 2, 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.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant operates a banking and financial services business operating in more than 40 countries1. The Complainant was founded by Royal Charter in 1727, listed as a public company in the United Kingdom (“U. K.”) in 1968 and holds registrations for the RBS trademark and variations of it in numerous countries including the United States of America (“U.S.”), which it uses to designate banking and other financial services. Its U. S. registration No. 3529700 has been in effect since 2008 but the mark has been used there for 53 years.
The Complainant conducts business on the Internet using numerous domain names containing the word “RBS” including <rbs.com> (registered in 1994) and <rbsgroup.com> (registered in 1995) with banking and financial business websites resolving from these domains.
The Respondent registered the Disputed Domain Names <rbs-groupplc.com> and < rbsonlineplc.com> on May 9, 2013 and May 10, 2013 respectively, the former of which resolved to a copy of the Complainant’s website, presumably for the purpose of “phishing” and the latter of which resolved to a parking web page containing a variety of advertisements and links including some that relate to banking2.
5. Parties’ Contentions
The Complainant cites its trademark registrations of the trademark RBS in various countries as prima facie evidence of ownership.
The Complainant submits that the mark RBS is well-known globally (citing: The Royal Bank of Scotland Group Plc v. Mike Steinbock, WIPO Case No. D2013-0121). The Complainant submits that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names <rbs-groupplc.com> and <rbsonlineplc.com>. It submits that the Disputed Domain Names are confusingly similar to its trademark, because the Disputed Domain Names incorporate in their entirety the RBS trademark and that the similarity is not removed by the addition of the descriptors “group”, “online” or “plc”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Respondent has no trademark rights in or license to use the Complainant’s trademark (presumably alluding to Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055). The Complainant also contends that “the Respondent has used the Domain Names to pass itself off as the Complainant in order to defraud Complainant’s customers through a fraudulent website identical to the Complainant’s. The Respondent used the Domain Name to “phish” for financial information in an attempt to defraud the Complainant’s customers.” The Respondent contents that to do so is “not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules. On the issue of registration, the Complainant submits “RBS is a famous trademark worldwide. It is obvious that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration.” On use, the Complainant submits that by using the Complainant’s RBS mark in the Disputed Domain Names, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s marks by engaging “in a phishing scam. . . to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information.” The Complainant further contends that “inactivity by the Respondent” is another factor indicating bad faith (presumably referring to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0574).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark RBS in the U.S. and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark RBS pursuant to U. S. Trademark Registration No. 3527700 from January 16, 2007, which predates registration of the Disputed Domain Names. Even so, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark RBS.
As the Complainant has thus established rights in the registered trademark referred to, it is not necessary for the Panel to decide if it also has rights in the other two registered trademarks relied on or at least cited. However, the Panel notes that one of these, U.S. registration no. 3185538 was, in fact, “cancelled” on July 26, 2013.
It is necessary, however, for the Panel to give consideration to whether the Complainant has common law rights in RBS. That is so because, although the time when a Complainant acquires its trademark rights may not be significant for the purposes of paragraph 4(a)(i) of the Policy, it may well be important during a consideration of paragraphs 4(a)(ii) and (iii) of the Policy. It is therefore necessary to consider whether the Complainant has common law trademark rights and, if so, whether they date back to a time when the Disputed Domain Names was registered.
The Complainant has submitted almost no evidence concerning the recognition of the word “RBS” as a trademark or of the extent of any advertising, sales or other indicia of secondary meaning that might have occurred or any evidence that it has been known in the trade or publicly as the source of any specific goods or services. Bald assertions do not substitute for the evidence. UDRP panels have said on many occasions that allegations made in these proceedings must be supported by evidence and, indeed, the Policy makes it plain enough itself in paragraph 4(a) that “…the complainant must prove that each of these three elements are present.” However, this Panel finds the Complainant has, for the purposes of the Policy, carried its burden of proving that it enjoys common law rights in the word “RBS”, but only barely due to the hopelessly thin evidence provided from the riches no doubt available.
The Panel also finds that the mark RBS is well-known: see The Royal Bank of Scotland Group Plc v. Mike Steinbock, WIPO Case No. D2013-0121 (“the name RBS is widely known internationally and associated with the Complainant”).
Turning to whether the Disputed Domain Names are identical or confusingly similar to the RBS trademark, the Panel observes that the Disputed Domain Name <rbs-groupplc.com> and <rbsonlineplc.com> comprises (a) an exact reproduction of the Complainant’s trademark (b) conjoined with a dash (c) followed by the descriptive word “group” (d) followed by the descriptor “plc” (e) followed by the top level domain suffix “.com”. The Disputed Domain Name <rbsonlineplc.com> comprises (a) an exact reproduction of the Complainant’s trademark (b) conjoined with the descriptive word “online” (c) followed by the descriptor “plc” (d) followed by the top level domain suffix “.com”.
It is well established that the top level designation used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the Disputed Domain Name “rbs-groupplc” and “rbsonlineplc”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a descriptive word or words: (see Oki Data Americas, Inc. v. ASD, Inc., supra; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
This Panel finds, consistently with a long line of decisions by other Panels, that the dash and descriptive words “online”, “group” and “plc” after the Complainant’s registered trademark are additional elements that do not serve to adequately distinguish a disputed domain name and therefore the Disputed Domain Name in this matter remains confusingly similar to the registered trademark: (see InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075 (“the addition of a hyphen and .com are not distinguishing features”); Wembley National Stadium Limited .v. Tim Gordon, WIPO Case No. D2000-1218 (“the suffix online is merely descriptive and will not differentiate from the business of the Company which runs the Stadium”); Swatch Ltd. v. Peter Kaeppeli, WIPO Case No. D2002-0956 (“the addition of the generic term ‘group’, is not sufficient to prevent the confusing similarity between Complainant’s trade mark and the contested domain name”); Cadbury Limited v. Marketing Total S.A., WIPO Case No. D2007-0854 (“the generic “plc” postfix is commonly recognized as an abbreviation indicating a type of corporate entity in the United Kingdom of Great Britain and Northern Ireland, namely “public limited company”, the addition of the word “plc” to the trademark CADBURY very likely means that Internet users are misled to assume that the website is associated with the Complainant.”)
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Names are therefore confusingly similar to the RBS trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, 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 a 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 it 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 misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the relevant disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that web site is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2.).
However, the Complainant contends that it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark and contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because it is misleadingly directing Internet users to a “phishing” web page and thereby illegitimately seeking their customer’s details. This Panel notes that this submission of the Complainant’s does not correctly apply to both of the Disputed Domain Names, but only to <rbs-grouplc.com>. The other Disputed Domain Name <rbsonlineplc.com>, resolved to a parking web page advertising or offering for sale products or services including banking related products or services.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Names.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Names. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using Complainant’s well-known mark in order to attract Internet users to its websites and has been using the Disputed Domain Names to divert Internet traffic to its web pages for nefarious purposes.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See: Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Names in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The trademark RBS is so well-known globally for banking and financial services that it is inconceivable that the Respondent was unaware of the RBS trademark when it registered a domain name similar to or incorporating the mark without knowing of it let alone make reference to the Complainant’s status as a U. K. public company by adding the suffix “plc”.
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
This Panel finds that the Respondent has taken the Complainant’s trademark RBS and incorporated it in the Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to the Respondent’s web pages which either engage in “phishing” or offer products and services for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Disputed Domain Names <rbs-groupplc.com> and <rbsonlineplc.com> be transferred to the Complainant.
Date: September 16, 2013
1 According to “http://www.rbs.com/about/locations.html”
2 According to “http://web.archive.org/web/20110202093106/http://rbsonlineplc.com/”