WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group Plc v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Matthieu Petit
Case No. D2016-1087
1. The Parties
The Complainant is The Royal Bank of Scotland Group Plc of Edinburgh, United Kingdom Great Britain and Northern Ireland (the “UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / Matthieu Petit of Orleans, France.
2. The Domain Name and Registrar
The disputed domain name <rbsbourse.com> is registered with Launchpad.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2016, 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 June 6, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 7, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter both referred together as 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2016.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on July 21, 2016. 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 was founded in Edinburgh (Scotland) in 1727 and is one of the oldest banks in the UK. It was incorporated as a public limited company in 1968. According to different surveys, the Complainant is one of the top UK banks. The Complainant is regularly featured in the media, as it appears, by way of example, in on-line articles from Bloomberg and The Guardian.
The Complainant has offices in various locations around the world, including in the UK, France and other European states.
For this Complaint, the Complainant relies on the following trademark registrations:
- RBS and device, EUTM registration No. 3906948, filed on June 28, 2004 and granted on November 17, 2010, covering goods and services in classes 9, 35 and 38;
- RBS (word mark), UK registration No. 2004617, filed on November 23, 1994 and granted on January 5, 1996, covering goods and services in classes 9, 16, 35 36 and 42.
The Complainant owns the domain names <rbs.com>, registered in 1994, and <rbs.co.uk>, registered in 1996, and operates the corresponding websites.
The Complainant’s RBS trademark is well-known, which has been confirmed in numerous UDRP decisions. Awareness of the RBS mark in the banking industry is significant, especially in the UK. All top results of Internet searches for the term “RBS” refer to the Complainant.
The disputed domain name was registered on June 28, 2015 through a privacy service.
The Respondent used the disputed domain name to falsely present itself as an entity associated with a subsidiary of the Complainant named “RBS Asset Management (ACD) Ltd.”, and to offer financial services to the Complainant’s customers. However, RBS Asset Management (ACD) Ltd. and the Respondent have no relationship whatsoever. The Respondent claims to be regulated by the UK Financial Conduct Authority (FCA), which is not true.
The disputed domain name is included in a black list dated May 27, 2016, published by the “Autorité des Marchés Financiers”, the French authority for financial markets, listing all websites and entities offering in France financial investments without any authorization. Furthermore, a warning has been published by the FCA, on the owner of the disputed domain name, stating that “this firm has been providing financial services or products in the UK without our authorization. (...) The firm has no affiliation or connection to RBS Asset Management (ACD) Ltd.”
The Complainant first tried to contact the Respondent via the privacy service on May 17, 2016, by sending a cease and desist letter informing the Respondent that the disputed domain name infringed its earlier trademark rights, and requesting the immediate transfer of the disputed domain name. The Respondent failed to reply and, instead, registered the domain name <rbsbourse.eu>, which is hosting the same website as the one previously connected to the disputed domain name.
In view of the lack of response from the Respondent, the Complainant had no other choice than to file this Complaint. Once the Complaint had been filed, the Registrar revealed that the Respondent is located in France, despite the fact that the website previously connected to the disputed domain name indicated that the Respondent was located in the UK.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s earlier marks, for the following reasons.
The dominant part of the disputed domain name comprises the term “RBS”, which is identical to the Complainant’s registered trademarks. The addition of the term “bourse” does not prevent a finding of confusing similarity as this term means “stock exchange” and is closely associated with the business of the Complainant. 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 determining the confusing similarity between the mark and the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name, for the following reasons.
The Respondent does not own registered trademarks corresponding to the disputed domain name. The Complainant is not aware that the Respondent has been using <rbsbourse.com> in a way that would provide a legitimate interest in the disputed domain name. It is also clear that the Complainant never authorized the registration and use of the disputed domain name. In the absence of any license or permission from the Complainant to use any of its trademarks or to apply for, or use, any domain name incorporating those trademarks, it is clear that the Respondent cannot claim any actual or contemplated bona fide or legitimate use of the disputed domain name.
In view of the reputation of the Complainant’s trademarks, it is obvious that it is the fame of the trademark that motivated the Respondent to register the disputed domain name in the first place. The Respondent used the disputed domain name to offer financial services and to falsely present himself as an entity associated with a subsidiary of the Complainant named “RBS Asset Management (ACD) Ltd.”. The Respondent claims to be regulated by the FCA, which is not true. Currently, there is a warning on the FCA website and on the French financial regulatory website about the website at the disputed domain name, referring to a fraudulent intent and to false statements. The Respondent most probably used the disputed domain name to “phish” for financial information, in an attempt to defraud the Complainant’s customers. This use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to the Policy.
The Respondent registered and used the disputed domain name in bad faith, for the following reasons.
The Respondent was well aware of the Complainant’s trademark rights when registering the disputed domain name, considering its substantial and widespread reputation.
The Respondent failed to reply to the Complainant’s cease and desist letter, which is relevant in the assessment of bad faith.
The Respondent has been using the disputed domain name to make various false statements and to imply a connection with the Complainant’s subsidiary, likely in furtherance of an on-line scam. By using the Complainant’s registered trademark, the Respondent was likely using the disputed domain name to deceive the Complainant’s customers and to manipulate them into divulging sensitive financial information. This kind of use is not a use in good faith.
Upon learning of the Respondent’s fraudulent activities, the Complainant contacted the host of the website associated with the disputed domain name and the website was taken down. Even if the website is currently inactive, passive holding can still constitute an act of bad faith and any use of the disputed domain name would constitute “passing off” and/or trademark infringement.
The Respondent did not reply to the Complainant’s contentions. Therefore, the Panel shall decide the dispute based upon the Complaint, in accordance with paragraph 5(f) of the Rules.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s RBS trademark. The disputed domain name fully includes the Complainant’s trademark followed by the suffix “bourse”. This term is the French equivalent of “stock exchange”. The addition of the term “bourse” enhances the likelihood of confusion because it refers to the field in which the Complainant operates (see also, among others, Comerica Bank v. Eli Tomlinson, Eli’s Software Encyclopedia, WIPO Case No. D2016-0044).
Therefore, the Panel concludes that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant never authorized the Respondent to reflect its trademark in a corresponding domain name. The Complainant affirms that the Respondent does not own any RBS trademark, nor is commonly known by this mark. The Respondent failed to provide any contrary evidence and therefore the Panel takes the view that the Complainant’s statements are well grounded.
The Complainant has provided evidence of a misuse of the website corresponding to the disputed domain name. This website has been banned by both the French and the UK financial conduct authorities.
In view of the foregoing, the Panel takes the view that the Respondent did not make a legitimate, noncommercial or fair use of the disputed domain name, nor has it used the disputed domain name in connection with a bona fide offering of goods and services.
Therefore, the Panel is satisfied that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and used the disputed domain name in bad faith, for a number of reasons.
First, it is clear that the Respondent knew the Complainant’s trademark at the time he registered the disputed domain name. Indeed, the RBS trademark enjoys a wide reputation in the financial field, in the UK and in European countries in general. Furthermore, the Respondent purportedly decided to register a domain name consisting of the combination of the Complainant’s well-known trademark with a generic term, “bourse”, referring to the field in which the Complainant operates. Thus, the registration of the disputed domain name was clearly made with the intent of unduly taking advantage of the reputation of the Complainant’s mark.
Hence, the Panel concludes that the disputed domain name was registered in bad faith.
As far as use in bad faith is concerned, the Complainant provided evidence of the fact that the disputed domain name was used to fraudulently attempt to attract potential customers to a website offering financial services without authorization. Furthermore, on this website the Respondent pretended to act as an affiliated company of one of the Complainant’s subsidiaries, as such substantially increasing the risk of consumer deception. The Respondent failed to cease this fraudulent behavior even after receiving the Complainant’s cease and desist letter. Rather, once the Complainant managed to shut down the illicit website, the Respondent continued its illegal activity through a different website, under an identical domain name and the country code Top Level Domain (ccTLD) “.eu”.
All these circumstances are clear evidence that the Respondent registered and used the disputed domain name primarily for the purpose of disrupting the business of the Complainant, and to intentionally attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of the Respondent’s website.
The fact that the Respondent is currently not using the disputed domain name does not have any impact on the bad faith assessment. As a matter of fact, the website is no longer working due to the fact that it was shut down following a notice sent by the Complainant to the relevant provider, informing it of the fraudulent website content. Moreover, the fact that the Respondent reiterated its illicit behavior in another website with an identical second level domain name, rather than transferring back the ownership of the disputed domain name to the Complainant, demonstrates that such passive holding also amounts to use in bad faith.
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, <rbsbourse.com>, be transferred to the Complainant.
Date: August 4, 2016