WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group Plc v. Li Qiang
Case No. D2013-2180
1. The Parties
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.
Respondent is Li Qiang of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <rbsmsf.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2013. On December 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on December 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2014.
The Center appointed Francine Tan as the sole panelist in this matter on January 20, 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
Complainant is incorporated in Scotland and is the proprietor of the RBS trade mark which Complainant asserts is famous. Complainant was founded in Edinburgh by Royal Charter in 1727 and is one of the oldest banks in the UK. It was incorporated as a public limited company in the UK in 1968.
Complainant offers its financial services worldwide under the mark RBS and has spent a significant amount of money promoting and developing the mark. Complainant also owns an international portfolio of trademark registrations for the mark RBS and other variations incorporating “RBS”, including a European Community trademark registration and an International trademark registration. Complainant also holds several United States and Chinese trademark registrations.
Complainant operates websites such as “www.rbs.com” (domain name registered 1994) and “www.rbsgroup.com” (domain name registered in 1995). It is the strict policy of Complainant that all domain names containing the trade mark RBS should be owned by Complainant. Complainant has a very large domain name portfolio which includes numerous domain names incorporating/containing the mark RBS.
The RBS mark has inherent and acquired distinctiveness. The level awareness of the trade mark RBS is considered to be significant and goes far beyond the goods and services in the financial industry.
The disputed domain name was registered on November 13, 2013.
Complainant first tried to contact the Respondent on December 3, 2013, through a cease and desist letter. Complainant advised Respondent that the unauthorized use of the RBS trade mark within the disputed domain name violates Complainant’s rights in the trade mark. Complainant requested a voluntary transfer of the disputed domain name. Despite a reminder sent, no response was received.
5. Parties’ Contentions
Complainant asserts, firstly, that the disputed domain name is confusingly similar to a trade mark or service mark in which it has rights:
(i) The dominant part of the disputed domain name comprises the term “rbs” which is identical to Complainant’s registered and world-famous trade mark RBS as well as domain names which have been registered in numerous countries all over the world. The fame of the RBS trade mark has been recognized in many UDRP decisions.
(ii) The addition of the suffix “msf” in the disputed domain name does not prevent a finding of confusingly similarity between the disputed domain name and the instantly recognizable trade mark RBS.
(iii) The disputed domain name has been used in relation to a website displaying the RBS logotype. Respondent’s website contains malware and tries to defraud Complainant’s customers. The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to the determination of confusing similarity with Complainant’s RBS trade mark.
(iv) Considering the reputation of the trade mark RBS, there is a considerable risk that the public will perceive Respondent’s website as owned by Complainant or that there is some kind of commercial relationship between Respondent and Complainant. By using the RBS trade mark as a dominant part of the disputed domain name, Respondent is exploiting the goodwill and image of Complainant’s RBS trade mark, which may result in dilution and other damage to Complainant and its mark.
Secondly, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name:
(i) Complainant has not found Respondent to possess any registered trademarks or trade names corresponding to the disputed domain name. Consequently, Respondent may not claim any rights established by common usage.
(ii) No license or authorization of any other kind has been given by Complainant to Respondent to use the trade mark RBS. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.
(iii) It is obvious that Respondent knew of Complainant’s rights in the mark RBS at the time of the registration of the disputed domain name and that it is the fame of the trade mark that motivated Respondent to register the disputed domain name.
(iv) Respondent has attempted to pass itself off as Complainant in order to defraud Complainant’s customers through a fraudulent website and by attempting to spread malware. Respondent’s website is most likely used to “phish” for financial information in an attempt to defraud Complainant’s customers. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under the Policy.
Thirdly, Complainant asserts that the disputed domain name was registered and is being used in bad faith:
(i) The failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. Reference was made to 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.
(ii) Respondent’s use of the disputed domain name to distribute malware and to defraud Complainant’s customers constitute bad faith registration and use under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove each of the following three elements to obtain the remedy of a transfer of the disputed domain name:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trade mark or a service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In this case, Respondent did not file a Response. Paragraph 5(e) of the Rules prescribes that in such an event, in the absence of exceptional circumstances, the Panel is to decide the dispute based on the Complaint.
A. Identical or Confusingly Similar
The disputed domain name comprises six letters, the first three coinciding with Complainant’s trade mark RBS and the last three consisting of the letters “msf”. On a plain and direct visual and aural comparison, it cannot be said that the disputed domain name is identical to Complainant’s RBS trade mark.
Therefore, the issue to be considered is whether the disputed domain name can be said to be confusingly similar to Complainant’s RBS trade mark. In assessing this issue, the Panel is of the view that the fame and reputation of the RBS mark constitute an important and relevant factor, as is the other related factor of whether the RBS trade mark is easily recognizable within the disputed domain name (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”).
The Panel is persuaded that Complainant and its RBS mark is well known across the world especially in relation to financial services. Consequently, the degree of familiarity and “recognizability” that the RBS trade name possesses are at a level which makes the disputed domain name objectionable, notwithstanding the additional letters “msf” which feature. Due weight and consideration have to be applied to the fame of Complainant and its mark. The deliberate and specific pains taken by Complainant to ensure that all domain names containing the trade mark RBS should be owned by Complainant is an additional factor which this Panel has taken into consideration as the exclusive association of RBS with Complainant is all the more significant. The registration of the disputed domain name in the name of Respondent lends confusion with Complainant’s RBS mark.
Accordingly, the Panel is of the view that disputed domain name is confusingly similar to Complainant’s RBS trade mark. The Panel considers that the additional letters do not serve to remove the confusing similarity with Complainant’s mark. This approach is consistent with that taken in many earlier panel decisions made under the Policy.
In the circumstances, the Panel finds that the first element under paragraph 4(a) of the Policy has been established by Complainant.
B. Rights or Legitimate Interests
The prima facie evidence established by Complainant supports a finding that Respondent does not possess any rights or legitimate interests in respect of the disputed domain name. The RBS trade marks have been in long use and protected by way of trademark registrations in many jurisdictions whereas Respondent does not appear to have any rights or interests through an establishment of a separate and unique identity.
Respondent does not appear to be commonly known by either the names “rbs” or “rbsmsf”. Respondent did not respond in these proceedings nor to Complainant’s cease and desist letter. The use of the disputed domain name for a website which apparently distributes malware for phishing purposes cannot be said to constitute a bona fide offering of goods and services.
The Panel is therefore satisfied that the second element under paragraph 4(a) of the Policy has been established by Complainant.
C. Registered and Used in Bad Faith
The fact that the use of Respondent’s website to which the disputed domain name resolves has been used in an attempt to distribute malware and to defraud Internet users who wrongly think Respondent’s website is authorized and/or endorsed by Complainant is a strong indication that the disputed domain name was registered and used in bad faith with a view to disrupting Complainant’s business and/or to attract for commercial gain, Internet users, to its website by creating a likelihood of confusion with Complainant’s mark.
The Panel concludes that Respondent’s intention in choosing the disputed domain name which incorporates the RBS trade mark and the manner of use have been with a view to diverting traffic intended for Complainant’s site to its own. There is no relationship between Respondent and Complainant and there is no reason offered by Respondent for its registration and choice of the disputed domain name. The screenshot submitted in evidence by Complainant shows that Respondent’s previous website bore an identical logotype of Complainant but it was juxtaposed with the letters “RBSF” (as opposed to “RBS”). The services apparently offered on the website were financial services. The following Chinese words appeared prominently in the middle of the webpage - “客户资金安全保障”” - which essentially translate as “the financial guarantee of customers’ funds/capital”. Further, on the said website, links, seemingly to “Barclays” (a competing global financial services provider) and “FSCS” (which presumably in the context refers to the Financial Services Compensation Scheme, a statutory compensation scheme in the UK for customers of authorized financial services firms) can be found. The copying of Complainant’s logotype with the letters “RBSF” and the apparent offering of financial services on Respondent’s website lead to a conclusion that the disputed domain name was registered and used in bad faith.
The Panel is therefore satisfied that the third element under paragraph 4(a) of the Policy has been established by Complainant.
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 <rbsmsf.com> be transferred to Complainant.
Date: January 28, 2014