WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group Plc v. Domain Admin, WhoIs Privacy Corp.
Case No. D2014-1817
1. The Parties
The Complainant is The Royal Bank of Scotland Group Plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (the "UK"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, WhoIs Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <rbscotlnd.com> (the "Domain Name") is registered with Internet.bs Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2014. On October 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 20, 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.
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 October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2014.
The Center appointed Dana Haviland as the sole panelist in this matter on December 16, 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. The date for the administrative decision was extended to January 9, 2015, due to exceptional circumstances.
4. Factual Background
The Complainant Royal Bank of Scotland Group Plc (the "Complainant") is a company incorporated in Scotland and is the owner of the RBS trademark, which has been registered in the UK, the European Union, the United States of America, and numerous other countries worldwide (the "RBS Mark").
The 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. The Complainant has offices and offers its financial services worldwide under its RBS Mark. The Complainant operates various domain names, including <rbs.com>, registered in 1994 and <royalbankofscotland.com>, registered in 1998.
The Domain Name was registered on August 12, 2014. A screenshot of the Domain Name website submitted by the Complainant exhibits the Complainant's RBS Mark, logo and the name "The Royal Bank of Scotland" and purports to offer various types of banking services. At the request of the Complainant the Domain Name website was subsequently disabled by the Internet service provider.
5. Parties' Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to trademarks in which it has prior registered rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(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 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 Domain Name incorporates the Complainant's RBS Mark in its entirety, adding only the letters "cotlnd" and the ".com" generic Top-Level Domain ("gTLD"). The addition of the letters "cotlnd" as a suffix to the RBS Mark creates a misspelling of "Scotland", where the Complainant is incorporated, and increases the confusing similarity of the Domain Name to the Complainant's Mark. The Domain Name appears intended to be a variant of the so-called "typosquatting", the practice of using a domain name misspelling of a well-known trademark for commercial gain, here intended to resemble the Complainant's name and marks and attract banking customers to the website for commercial gain. See FirstRand International Limited, FirstRand Bank Limited v. Virtual Sky, WIPO Case No. D2007-0701; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444. The content of the Domain Name website, which includes the Complainant's RBS Mark and the Royal Bank of Scotland name, together with links to purported banking services, reinforces this conclusion.
It is well established that the inclusion of the gTLD typically does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the complainant's trademark. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Iconcard S.p.A. v. Linecom, WIPO Case No. D2005-1115; L'Oréal v. Tina Smith, WIPO Case No. D2013-0820.
The Panel finds that the Domain Name is confusingly similar to the Complainant's RBS Mark, in which the Complainant has prior rights, and that the Complainant has thus established the first element of its claim, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to the Complaint, the Respondent has registered the Domain Name including the Complainant's RBS Mark without the Complainant's authorization. The Complainant asserts that the Respondent is not commonly known by the name "Rbs", has no relationship with the Complainant, and has not been licensed to use the Complainant's trademark in a domain name or otherwise.
There is no evidence that the Respondent, who has failed to respond to the Complaint, used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods and services. In this regard, the Complainant has submitted evidence to show that the Domain Name has been used for a website using the Complainant's Mark and name, purporting to be established or authorized by the Complainant, and containing links describing various banking services.
The Complainant contends that the Domain Name is being used for "phishing" purposes to obtain personal financial information from actual or potential customers of the Complainant, but the evidence submitted by the Complainant is insufficient for the Panel to determine whether "phishing" was the particular form of commercial gain contemplated by the Respondent. In any event, the Respondent's use of the Complainant's well-known mark and name in the Domain Name and on the website in connection with banking related links are sufficient to establish, that the Respondent registered and used the Domain Name incorporating the Complainant's RBS Mark to attract Internet users for commercial gain. This use of the Domain Name by the Respondent does not demonstrate any right or legitimate interest in the Domain Name and does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See FirstRand International Limited, FirstRand Bank Limited v. Virtual Sky, supra; Dormeuil Freres v. Private, WIPO Case No. DCO2010-0006; Barclay's Bank PLC v. Rico Martinez, WIPO Case No. D2010-1987. See also LC Trademarks, Inc. v. PayDues, Inc., WIPO Case No. D2011-2125.
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. The Respondent has not submitted any response or evidence to rebut the allegations of the Complainant.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
The Respondent's use of the Domain Name for a website using the Complainant's well-known Mark and name, purporting to be established or authorized by the Complainant, and purporting to offer banking services for financial gain and described above under section B, constitutes evidence of bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy. See Barclays Bank PLC v. Rico Martinez, supra; LC Trademarks, Inc. v. PayDues, Inc., supra.
The Panel finds that the Complainant has established the Respondent's bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy, and that the Complainant has therefore satisfied the third element of its claim under 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 Domain Name <rbscotlnd.com> be transferred to the Complainant.
Date: January 9, 2014