WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group Plc v. The Royal BK
Case No. D2014-0258
1. The Parties
The Complainant is The Royal Bank of Scotland Group Plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is The Royal BK of London, UK.
2. The Domain Name and Registrar
The disputed domain name <rbsgroups.org> (the “Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2014. On February 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 21, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 6, 2014.
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 March 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2014.
The Center appointed Dawn Osborne as the sole panelist in this matter on April 10, 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 is a well-established bank in the UK and the proprietor of the RBS trade mark for financial services in, inter alia, the European Community where it was registered in 1998. It operates web sites at “www.rbs.com” and “www.rbsgroup.com”.
The Domain Name was registered in 2013 under what appears to be a false name and address and has been used in a "phishing scam".
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
The Complainant is one of the oldest banks in the UK and the proprietor of the RBS trade mark for financial services in, inter alia, the European Community registered in 1998. RBS is a well-known mark. The Complainant operates web sites at “www.rbs.com” and “www.rbsgroup.com”.
The dominant part of the Domain Name is “RBS” and is identical to the Complainant’s trade mark. As such, the Domain Name is confusingly similar to the Complainant’s world-famous mark RBS. The addition of the suffix “groups” will not prevent a finding of confusing similarity between the Domain Name and the Complainant’s world-famous mark, but is rather fitted to strengthen the impression of association with the Complainant. Further, since the Domain Name has been used in a phishing scam, the Respondent obviously viewed the Domain Name to be confusingly similar to the RBS trade mark, exploiting the goodwill and image of the trade mark thereby for deceptive purposes. The addition of the generic Top-Level Domain (gTLD) “.org” does not have any impact on the overall impression of the dominant portion of the Domain Name and is ignored for the purposes of confusing similarity.
The Respondent does not appear to have any registered trademarks or trade names corresponding to the Domain Name. No licence has been given by the Complainant to the Respondent to use the trade mark RBS and they do not have a business relationship. The name “The Royal BK” given for the Respondent appears to be a fake name designed to give legitimacy to the Respondent.
The Respondent has used the Domain Name to pass itself off as the Complainant to "phish" for financial information to defraud the Complainant's customers. This is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to the Policy. It is bad faith use and registration under the Policy and misleadingly diverts consumers for commercial gain.
No Response was received to a cease and desist letter or to the Complaint from the Respondent.
Even if currently inactive, passive holding of the Domain Name could still constitute an act of bad faith in the light of the past fraudulent use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Complainant has trade mark registrations consisting of the RBS word mark around the world including a European Community trade mark registered in 1998. The Domain Name is confusingly similar to the Complainant’s trade mark consisting of the Complainant’s RBS registered trademark and the generic word “groups”, suggesting a group of companies. The distinctive part of the Domain Name is the RBS name. The addition of the generic word “groups” does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s RBS trade mark and it may even enhance the impression of association with the Complainant in its group of companies. The “.org” suffix is generally ignored for the purposes of this test as it is purely descriptive in the context of a domain name. As such the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods and services or for any noncommercial or fair use. It does not appear to be commonly known by the Domain Name. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant’s trade mark with only the generic word “groups” added long after the Complainant has established rights in the RBS mark. Further, in the opinion of the Panel the use of the Domain Name to obtain financial information from the Complainant’s customers is deceptive. As such, the Panel finds that the Domain Name has been used in a way likely to confuse people into believing the Domain Name is registered to or connected to the Complainant. The use of the trade mark suggests that the Respondent is well aware of the Complainant and its business and that the Domain Name is confusingly similar to the Complainant’s trade mark. In the absence of a Response from the Respondent, considering the reputation of the Complainant and use made of the Domain Name, the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic for commercial gain by creating a likelihood of confusion that its website and its services are connected to the Complainant. As such, the Panel finds that the Domain Name has been registered and used in bad faith satisfying the third limb of the Policy. It is, therefore, not necessary to consider further the Complainant’s representations as to passive holding or the fact that the Complainant appears to have given false name and address details.
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 <rbsgroups.org> be transferred to the Complainant.
Date: April 23, 2014