WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NatWest Group plc. v. Domain Admin, Whois protection / Hulmiho Ukolen, Poste restante

Case No. D2021-2167

1. The Parties

The Complainant is NatWest Group plc., United Kingdom, represented by Netcraft Ltd, United Kingdom.

The Respondent is Domain Admin, Whois protection, Czech Republic / Hulmiho Ukolen, Poste restante, Finland.

2. The Domain Name and Registrar

The disputed domain name <rbsconnect.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2021, 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 July 9, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 12, 2021.

The Center verified that the Complaint together with the amended 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 July 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on August 24, 2021. 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 financial institution chartered in Edinburgh, Scotland, in 1727, and incorporated as a public limited company in the United Kingdom in 1968. On July 23, 2020, the Complainant changed its company name from The Royal Bank of Scotland Group plc (abbreviated as “RBS”) to NatWest Group plc. Nevertheless, the Complainant continues to own a significant amount of goodwill in the RBS brand and continues to trade using “Royal Bank of Scotland” and “Royal Bank” through its subsidiaries, including the Royal Bank of Scotland in the United Kingdom.

The Complainant is the owner of several trademark registrations for RBS, including the following, as per trademark certificates submitted as annexes 1 and 9 to the Complaint:

- European Union trademark registration No. 005244561 for RBS (word mark), filed on November 2, 2004, and registered on June 4, 2007, in international classes 16, 36, 41 and 42;
- International trademark registration No. 856518 for RBS (work mark), registered on December 10, 2004, in international classes 9, 16, 35, 36, 41 and 42.

The Complainant is also the owner of the domain names <rbs.com>, registered on September 6, 1994, and <rbs.co.uk>, registered before August 1996, which are both used by the Complainant to promote its products and services under the trademark RBS.

The Complainant also established a website for employees and pensioners at <rbspeople.com> - registered on August 3, 2005, featuring information on benefits, and provides a Virtual Private Network remote access to employees and personnel via the webpage published at the subdomain <rbsconnect.rbspeople.com>.

The disputed domain name <rbsconnect.com> was registered on April 28, 2017 and, according to the Panel’s verifications, is currently not pointed to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <rbsconnect.com> is confusingly similar to the trademark RBS in which it has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “connect” and the generic Top-Level-Domain (“gTLD”) “.com”.

The Complainant asserts that this is a deliberate typosquatting attempt as the disputed domain name consists of the trademark itself alongside the word “connect” which suggests that the disputed domain name can be used to connect to the Complainant’s services.

The Complainant further highlights that the disputed domain name also has a subdomain <rbspeople.rbsconnect.com> which is purposefully similar to the Complainant’s own subdomain as the Respondent has used the terms “rbsconnect” and “rbspeople” present in the Complainant’s subdomain <rbsconnect.rbspeople.com>, merely switching their order. Therefore, in view of the Complainant the disputed domain name is confusingly similar to both the Complainant’s trademark RBS and to its subdomain <rbsconnect.rbspeople.com>.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that there is no proof available to suggest that the Respondent has ever been known by the disputed domain name or by the trademarks RBS or RBS CONNECT. The Complainant further contends that it never granted permission to the Respondent to use the trademark RBS. Moreover, the Complainant asserts that the disputed domain name is not being used in connection with a bona fide offering of goods or services that would give any rise to rights or legitimate interests, as it is has been used to redirect traffic to various other URLs, including a website publishing an apparent technical support scam and a cryptocurrency investment website, in an attempt to misleadingly divert consumers.

With reference to the circumstances evidencing bad faith, the Complainant highlights that the disputed domain name is being offered for sale on the Afternic platform for USD 13,724, a circumstance that suggests that the disputed domain name was acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.

The Complainant emphasizes that, by using the disputed domain name as stated above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s trademark RBS as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on its website or location.

In addition, the Complainant points out that, by using the hostname <rbspeople.rbsconnect.com> to redirect traffic to unrelated websites, the Respondent has demonstrated an intent to attract for commercial gain users mistyping the Complainant’s own legitimate hostname <rbsconnect.rbspeople.com> - which, as mentioned above, resolves to a login portal for the Complainant’s employees.

The Complainant underlines that, prior to the present proceeding, the Respondent was also contacted by the Complainant’s authorized representative via email and was informed about the infringement of its Intellectual Property Rights. The Respondent was requested to cease and desist from using the disputed domain name and the related hostname, to transfer these to the Complainant and to refrain from registering or using further domain names encompassing “RBS”, “NatWest”, “National Westminster Bank” and “Royal Bank of Scotland” in the future, but the Respondent failed to respond.

The Complainant further highlights that the Respondent has even engaged in a pattern of domain name registrations since in the past it registered other domain names that incorporate famous or well-known trademarks and has been party to more than 40 UDRP disputes in which panels held that the Respondent registered and used domain names in bad faith.

Lastly, the Complainant asserts that the Respondent also provided false contact details in the registration, such as “zip code 12345” and phone number “+1.234567890”, and concludes that the provision of false contact information in the WhoIs records supports a finding of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations for RBS in several countries, as mentioned under Section 4 above.

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0). Furthermore, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (section 1.11.1 of the WIPO Overview 3.0).

In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the trademark RBS as it reproduces the trademark in its entirety with the mere addition of the descriptive term “connect” and the gTLD “.com”, which do not prevent a finding of confusing similarity.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.

Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

Moreover, it has been repeatedly stated that when a Respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel also notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.

The current passive holding of the disputed domain name is further evidence of the Respondent’s lack of rights or legitimate interests. Furthermore, as highlighted in section 2.5.1 of the WIPO Overview 3.0, the Panel finds that the disputed domain name carries a risk of implied affiliation.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

As to bad faith at the time of registration, the Panel notes that, in light of i) the prior registration and use of the Complainant’s trademark RBS in connection with the Complainant’s financial products and services, ii) the well-known character of the trademark and iii) the confusing similarity of the disputed domain name with the Complainant’s trademark, the Respondent was more likely than not aware of the Complainant’s trademark.

Furthermore, the circumstance that, according to the screenshots submitted by the Complainant - which have not been challenged by the Respondent -, the Respondent created the subdomain <rbspeople.rbsconnect.com>, clearly confusingly similar with the Complainant’s subdomain <rbsconnect.rbspeople.com>, demonstrates that the Respondent indeed intended to target the Complainant and its trademark.

In light of the Respondent’s prior redirection of the disputed domain name to random websites unrelated to the Complainant – as evidenced by the documents submitted by the Complainant -, including a potential scam website and a webpage dedicated to cryptocurrency investments, the Panel finds that the Respondent intentionally attempted to attract Internet users for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites to which the disputed domain name was redirected and the services promoted therein, according to paragraph 4(b)(iv) of the Policy.

The Panel also finds paragraph 4(b)(ii) applicable in this case since the Respondent has registered the disputed domain name in order to prevent the Complainant from using its trademark and has clearly engaged in a pattern of such conduct since it has also registered other domain names incorporating registered trademarks that have been subject of more than 40 proceedings under the Policy.

As additional circumstance evidencing bad faith, the Respondent appears to have offered the disputed domain name for sale via a broker for the amount of USD 13,724, which is well over the out-of-pocket costs directly related to the disputed domain name, and also failed to reply to the cease and desist letter addressed to its attention by the Complainant’s representative before the commencement of the present proceeding.

With reference to the current redirection of the disputed domain name to an inactive website, as stated in Section 3.3 of the WIPO Overview 3.0, “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”.

In view of the circumstances of the present case described above and considering (i) the degree of distinctiveness or reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a Response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s concealing its identity and its provision of false contact details in the WhoIs records and (iv) the implausibility of any good faith use to which the disputed domain name may be put, the Panel finds that the Respondent’s passive holding does not prevent a finding of bad faith use.

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.

7. Decision

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 <rbsconnect.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: September 9, 2021