WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group plc v. Rafiq Masters
Case No. D2016-2246
1. The Parties
The Complainant is The Royal Bank of Scotland Group plc of Edinburgh, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Rafiq Masters of Bolton, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <williamsandglynn.com> is registered with 123-Reg Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2016. On November 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2016.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 8, 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
Williams & Glyn’s Bank is a financial institution that traces its origins to the 18th century. In its present form Williams & Glyn’s Bank Limited was established in London in 1970 by a merger of certain constituent banks. In 1985 Williams & Glyn’s Bank was absorbed into the Royal Bank of Scotland Group, the Complainant, but was reinstated under the name Williams & Glyn’s Bank as an entity of the Complainant in 2012, with 307 branches in England, Wales and Scotland.
The Complainant owns trademarks for WILLIAMS & GLYN and WILLIAMS & GLYN’S including the following:
WILLIAMS & GLYN, registered with the United Kingdom Intellectual Property Office (UKIPO), registered on April 25, 2014, registration number 3,034,770, classes 9, 16 and 36;
WILLIAMS & GLYN, registered with the European Union Intellectual Property Office (EUIPO), registered on May 7, 2014, registration number 12,427,563, classes 9, 16 and 36;
WILLIAMS & GLYN’S, registered with the UKIPO, registered on January 1, 2010, registration number 2,525,717, classes 9, 16 and 36;
WILLIAMS & GLYN’S, registered with the EUIPO, registered on February 10, 2010, registration number 8,486,871, classes 9, 16 and 36.
The Complainant also uses the domain names <rbs.com>, <rbs.co.uk> and <williamsandglyn.com>, the last of which was registered on August 25, 2009.
No background information is available about the Respondent except for the contact information provided to the Registrar of the disputed domain name, which appears from the WhoIs to have been created on May 3, 2016. According to the evidence produced by the Complainant in the form of a screen capture, the disputed domain name resolved at the time to the website “www.acimoney.com”, which offered financial services and loans.
5. Parties’ Contentions
The Complainant contends that it has rights in the trademarks WILLIAMS & GLYN and WILLIAMS & GLYN’S, and has produced copies of the relevant registration records as detailed in section 4 above.
The Complainant contends that the disputed domain name is confusingly similar to its trademarks. The addition of a letter “n” to the trademark WILLIAMS & GLYN is an intentional misspelling that constitutes “typosquatting”, in which an Internet user who makes a spelling error is misdirected to the wrong Internet address. The replacement of the ampersand in the Complainant’s trademark with “and”, and the elimination of spaces between the words, are technically necessary and do not detract from confusing similarity between the disputed domain name and the trademark. The disputed domain name is phonetically similar to the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent is not affiliated with the Complainant in any way and has not been granted any permission to use the Complainant’s trademarks or to register domain names incorporating the Complainant’s trademarks.
In respect of paragraph 4(c) of the Policy, the Complainant states that there is no evidence to suggest that the Respondent, Rafiq Masters, could be commonly known by the disputed domain name. Furthermore, the Respondent is not using the disputed domain name for a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. The Respondent’s use of the disputed domain name is for the purpose of directing Internet users to the Respondent’s website, which offers products and services in competition with the Complainant. The Respondent is intending to profit from the goodwill embodied in the Complainant’s trademarks and therefore the use of the disputed domain name for the provision of goods or services cannot be legitimate.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the WILLIAMS & GLYN trademarks are well-known throughout the United Kingdom as connected with the finance industry, and the Respondent could not have been unaware of the Complainant and its business. The Complainant’s trademarks have received considerable recent publicity, particularly since 2012, arising out of the global financial crisis of 2009. The registration of a famous trademark by an entity having no connection with the trademark holder should be held to constitute opportunistic bad faith by the Respondent.
The Complainant says that the Respondent has used the disputed domain name, containing a single letter typographical error, with the intention to attract Internet users, for commercial gain, to the Respondent’s website by creating confusion between the Complainant’s trademarks and the disputed domain name. Visitors to the disputed domain name would gain the mistaken impression that the Respondent is associated in some way with the Complainant. Internet users so misled are redirected to competing financial management products and services through the Respondent’s website. Such activity on the part of the Respondent also constitutes a disruption of the Complainant’s business.
The Complainant says it sent a cease and desist letter to the Respondent, to which there has been no reply, which amounts to further evidence of bad faith.
The Complainant has cited a number of previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied by the documentary evidence produced that the Complainant has rights as required under paragraph 4(a)(i) of the Policy in the trademarks WILLIAMS & GLYN and WILLIAMS & GLYN’S.
The disputed domain name is <williamsandglynn.com>. A domain name cannot contain any space, ampersand or apostrophe. The disputed domain name is therefore as close to the Complainant’s trademark WILLIAMS & GLYN as is technically feasible, except only for the addition of a final letter “n”, which the Panel finds to be a predictable spelling error and not to be distinguishing. The Panel also finds the disputed domain name to be confusingly similar to the Complainant’s trademark WILLIAMS & GLYN’S. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted a prima facie case to the effect that the Respondent is not connected with the Complainant in any way and has not been authorised to use the trademarks to which the Complainant has exclusive rights.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
The Respondent has not asserted any rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. The use of the disputed domain name for the supply of any services or goods by the Respondent is found not to be bona fide since it trades on the Complainant’s trademark without authorisation. The Panel can find no reason to expect that the Respondent has been commonly known by the disputed domain name or that it has been in legitimate noncommercial or fair use by the Respondent. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
According to the evidence produced by the Complainant in the form of a screen capture, the disputed domain name resolved at the time to the website “www.acimoney.com”, which was headed, in logo form, “acimoney business and personal finance”, followed by “professional financial management”. The website stated that it offered competitive financial services and loans, and provided an enquiry form for prospective clients. The Complainant has produced a copy of the WhoIs record for the domain name <acimoney.com>, showing it to be registered in the name of the Respondent and to have the website title “Aci Money - Professional Financial Management”.
It is clear from the statements on the website to which the disputed domain name ultimately resolved that its purpose was commercial and was in the financial services sphere, which would inevitably be in competition with the Complainant’s business in banking. In order to do business through its website, the Respondent must attract visitors, which it set out to do by redirection from the disputed domain name. The disputed domain name is as close to the Complainant’s trademark WILLIAMS & GLYN as is allowed by domain name syntax, except that the last word is misspelt as “glynn”. It is noted also that the disputed domain name differs only by the additional letter “n” from the Complainant’s own domain name, <williamsandglyn.com>. The Panel finds the misspelling to be a deliberate mistake intended to capture Internet users who might inadvertently type “glynn”. The typing mistake, or misunderstanding of the correct spelling of the Complainant’s trademark, is sufficient to constitute confusion with the disputed domain name. It is of no consequence that users so misled may realise, sooner or later, that they have not arrived at the Complainant’s Internet presence, because confusion has already occurred. On the evidence and on the balance of probabilities, the Panel finds the disputed domain name to have been used in bad faith primarily in the terms of paragraph 4(b)(iv) of the Policy. The Panel further finds, on the evidence and on the balance of probabilities, that the disputed domain name was registered primarily for the bad faith purpose for which it has been used. Accordingly, the Panel finds the disputed domain name to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
A cease and desist letter was sent by the Complainant to the Respondent on August 26, 2016, followed by reminder emails on September 5, 2016 and September 13, 2016. There was no reply. Failure to reply to the cease and desist letter and reminders, in this instance, is found to be an aggravating factor in bad faith conduct (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
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 <williamsandglynn.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: December 21, 2016