WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group plc v. CSMJBS Private Organization / Paramount webmasters, Steven Abib
Case No. D2013-2008
1. The Parties
The Complainant is The Royal Bank of Scotland Group plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is CSMJBS Private Organization of Las Vegas, Nevada, United States of America (“US”) / Paramount webmasters, Steven Abib of New York, US.
2. The Domain Name and Registrar
The disputed domain name <onlinerbs.net> is registered with Advanced Internet Technologies, Inc. (AIT) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2013. On November 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2013, 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 December 4, 2013, 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 December 6, 2013.
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 December 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2013.
The Center appointed J. Nelson Landry as the sole panelist in this matter on January 7, 2014. 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 founded in 1727 as a bank in United Kingdom was subsequently incorporated as a public company in 1968 and is offering financial services worldwide under a family of trademarks consisting of/or including the acronym RBS (herein the “RBS Trademark or Trademarks”). It owns an international portfolio of several hundreds of registered RBS Trademarks (for example, RBS Community Trademark No. 000097469 of March 23, 1998), including several ones registered in the United States. The Complainant owns and operates since 1994 several hundreds of domain names comprising the RBS Trademark such as <rbs.com> and <rbsgroup.com>.
The Complainant has not granted any license or authorization of any kind to the Respondent to use its RBS Trademark or to register the disputed domain name and furthermore, the Respondent is not an authorized representative of the products and services of the Complainant and has never had any business relationship with the Complainant.
On November 2, 2013, the Complainant send a cease and desist letter to the Respondent objecting to the unauthorized use of its RBS Trademarks and requested a voluntary transfer of the disputed domain name. The Respondent did not respond to the said letter.
5. Parties’ Contentions
The Complainant represents that the disputed domain name which incorporates its registered Trademark RBS is confusingly similar to its RBS Trademark notwithstanding the presence of the term “online” and the suffix “.net” which presence does not in any way diminish such confusion.
Considering first the international fame of its RBS Trademarks and some RBS Trademarks registrations in the USA, where the Respondent is located, fame acknowledged by panels in 18 earlier UDRP decisions involving the RBS Trademark; second, the absence of any relationship between the Complainant and the Respondent and of any authorization by the Complainant and third, an attempt by the Respondent to pass itself as the Complainant and “phish” for customers’ information, the Complainant submits that these acts cannot constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to the Policy.
The Complainant claims that by reason of its well-known and reputed RBS Trademark enjoying a substantial international reputation in the finance industry, the Respondent must have been aware of the Complainant’s RBS Trademark and had therefore registered the disputed domain name in bad faith. The Complainant further represents that the Respondent was using the disputed domain name to deceive the Complainant’s customers and manipulate them in “phishing” sensitive financial information which use constitutes registration and use in bad faith under the Policy, as acknowledged in numerous UDRP decisions cited or quoted by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is identical to the RBS main element and totally incorporates the RBS Trademark of the Complainant. The addition of the prefix “online” and the generic Top-Level Domain (“gTLD”) suffix “.net” does not diminish in any way such confusion.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s RBS Trademark. The first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the disputed domain name by registering the disputed domain name, in stating that the Respondent has never been known by the disputed domain name and did not own nor use the term “rbs” before. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s RBS Trademark.
Considering the nature of the website of the Respondent at the address of the disputed domain name which, in the Panel’s view, is intended to “phish” for financial information from general clients or customers of the Complainant believing under the confusion created by the disputed domain name, that they are in contact with the Complainant, the Panel considers that such behavior does not constitute a bona fide offering of goods or services, nor a legitimate, noncommercial or fair use pursuant to the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The second criterion has been met.
C. Registered and Used in Bad Faith
The Complainant contends that the domain name was registered and used in bad faith.
Considering that the RBS Trademark’s use and growing reputation is at least 275 years old and has been registered in over 100 countries and the fame associated with the RBS Trademark by reason of its extensive promotion and use by the Complainant, including the USA, where the Respondent resides, and furthermore upon taking into consideration the fact that the Complainant owns more than 100 domain names which incorporate its RBS Trademark, the Panel cannot conceive that the Respondent was not aware of the existence of the RBS Trademark of the Complainant. The Panel is convinced of the bad faith of the Respondent and finds that the disputed domain name was registered in bad faith.
The unchallenged evidence of the Complainant, first that it has never done any business with the Respondent nor given any license or authorization to represent itself as a dealer or agent of the Complainant, second the use of the website at the address of the disputed domain name to deceive and confuse visitors and clients of the Complainant and attempt to obtain information of financial nature and third, the fact that the Respondent was informed of the Complainant’s registered RBS Trademark, its unauthorized use and incorporation in the disputed domain name, a request to transfer it, the absence of any answer to the request of a transfer thereof or justification to its entitlement, corroborate the bad faith conduct of the Respondent.
In the Panel’s view, this behavior of the Respondent constitutes use of the disputed domain name in bad faith. Such use in bad faith, according to the evidence herein, is consistent with similar situations in decisions of panels in UDRP decisions. See The Royal Bank of Scotland Group Plc v. Mike Steinbock, WIPO Case No. D2013-0121; News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
The Panel, therefore, finds that the disputed domain name is being used in bad faith and the third criterion has been met.
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 <onlinerbs.net> be transferred to the Complainant.
J. Nelson Landry
Date: January 21, 2014