The Complainant is The Royal Bank of Scotland Group plc of Edinburgh, Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services of Great Britain and Northern Ireland.
The Respondent is State Layers of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2012. On January 24, 2012, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On January 25, 2012, Melbourne IT Ltd. 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 January 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2012.
The Center appointed John Katz QC as the sole panelist in this matter on February 29, 2012. 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 public limited company having been incorporated as such in the United Kingdom (“UK”) in 1968. Its history goes back to 1727 when it or its predecessor entity was founded in Edinburgh by Royal Charter. It is one of the oldest banks in the UK.
The Complainant offers a broad range of financial and similar services which are not limited to banking. They include personal finance, wealth management, insurance and global transaction services. These services cover the globe and the group website shows the truly international spread of services. There is in particular a heavy presence in the United States, since 1960. There is also a presence in Australia.
The group website also features a page displaying “our brands” with a detailed review of the various brands and the services offered under and by reference to those brands.
The brand protection of the Complainant has been achieved via a very substantial portfolio of registered trade marks throughout the world. The Complainant operates websites at the domain names and which were registered in 1994 and 1995 respectively.
The domain name portfolio in evidence shows an equally impressive list of domain name registrations.
The Complainant also claims that the RBS mark is well known or famous, thus entitled to the greater recognition and protection afforded by the Paris Convention and TRIPs agreement.
The Respondent registered the disputed domain name in May 2010. Whilst most screens of the associated website are in evidence and the account is shown as “suspended”, the Complainant claims that it is or was used for “phising”. This involves attracting unwitting customers or inquirers who would then disclose their sensitive personal and financial information.
As the account is suspended, it is not possible to establish now any further detail about the Respondent.
The contact address given by WhoIs was an address in Montecito, Los Alamitios, California, United States of America. Correspondence sent to that address drew a reply from a person living at that address claiming that she did not own the domain name and had nothing to do with it.
A letter before action to the Respondent drew no response. There is no further factual material or information about the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant relies upon its registered trade marks together with its numerous domain name registrations and also its global common law goodwill by virtue of its international trading and service facilities and brand awareness. It contends that the RBS mark is a famous mark, that it has acquired distinctiveness and any use of the RBS mark alone or in conjunction with any other word or phrase would be taken as a mark or a use of a mark associated with the Complainant. The use of a similar name for phising would be extremely detrimental to the brand image of the Complainant.
Much of the case for the Complainant relies upon its extremely extensive trading facilities and the services it offers around the world. B. Respondent
As the Respondent has defaulted there is no evidence or submission from it. As indicated above, the Complainant sent a letter before action to the Respondent, but received no reply. It also appears as if email traffic has bounced back. Correspondence to the physical address has drawn the response from the person at that address claiming no association with the disputed domain name or registrant.
The Respondent has been given every opportunity to respond. It has not done so. Nevertheless, even without any response from the Respondent the Complainant must still make out its case.
As there is no evidence at all from the Respondent it is difficult to contemplate what contentions it might raise in response to the Complainant. Whether or not its activities were nefarious as contended for by the Complainant is discussed below in the following sections. 6. Discussion and Findings
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trade mark 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 respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief. A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either in common law or as registered trade marks or service marks.
The Complainant has registered trade marks in a number of countries worldwide. These trade marks, most if not all of which feature the RBS mark either alone or in conjunction with other words or a device, are in diverse countries and regions including the Middle East, Russian Federation, Latin America, South East Asia and Oceania. The portfolio of registered marks (only a few are pending) is impressive. They include registrations in the United States of America.
In addition, the Complainant has a very large number of domain name registrations, the diversity of which highlights the extent to which the Complainant has gone to protect its rights.
Further, the global presence and trading activities of the Complainant are such that the Complainant has undoubtedly a worldwide reputation and goodwill at common law. Brand awareness of the Complainant must be extensive and in all likelihood sufficient to establish the RBS mark as a famous mark.
The base or core mark of the Complainant is RBS. The Respondent in its domain name adds to that “groups” and “plc”. The addition of “groups” is a generic description of a holding company situation. The addition of “plc” is the acronym for public limited company, the description commonly and well understood to be the description given to limited liability public companies in the UK. Individually or together, they add nothing distinctive that takes away from the core mark RBS. Nor can the gTLD suffix .com have any relevance.
Whilst not identical, the Respondent’s domain name is confusingly similar to the Complainant’s core mark RBS. Persons who see or hear of the disputed domain name will undoubtedly be confused into thinking it is in some way associated with or part of the Complainant’s group. As such, there is and must be a very real risk of confusion.
To the extent the Respondent may have registered the disputed domain name in an attempt to seduce unwitting customers into accessing the associated website, the consequences of such confusion can be enormous.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out. B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
The Complainant puts its argument forward on the basis that nothing can be found out about the Respondent that might indicate it is known by or has a business association or connection with the mark RBS group or similar.
The Registrant identification “State Layers” is uninformative. The Respondent, having failed to reply to the letters before action or to file a formal reply to the Complaint, cannot be surprised if adverse inferences are therefore drawn against it.
Again, if it be the case that the disputed domain name was registered and used or proposed to be used for nefarious purposes, there can be no rights or legitimate interests. Whilst the evidence before the Panel is insufficient to make any finding on this particular point, the mere prospect of it being a possibility is sufficient in itself and without more to question just what rights or legitimate interests the Respondent could conceivably have.
There being no response from the Respondent, the Complainant more than satisfies its obligations of proof under this head.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out. C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other panelists’ decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
The trade mark registrations of the Complainant and its domain name registrations go back many years. The history of the Complainant as a bank goes back approaching now 300 years. The disputed domain name was registered in May 2010. Given the matters discussed in the sections above, it is an ineluctable conclusion that the registration in 2010 was in bad faith and for the purposes of trading on the goodwill of the Complainant, and, possibly diverting traffic and engaging in potentially fraudulent activity.
However, the Complainant must also establish use in bad faith. The Complainant has said it initiated a take down of the site in May 2011 because of the phising activities conducted on it. Email traffic with the Respondent thereafter in an attempt to engage in and resolve the domain name registration issues was unsuccessful as emails bounced back. Even although the evidence of the phising is not before the Panel, it is so claimed in Section C of the Complaint. The Respondent has or is deemed to have had notice of that following service of the Complaint. It has not responded, even after the website take down action.
In the particular circumstances, the Panel finds that the Respondent not only registered the disputed domain name in bad faith, but also, during its currency with the associated website, used it in bad faith. The fact that the “account” is currently suspended does not change the Panel’s findings.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out. 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 be transferred to the Complainant.
John Katz QC
Sole Panelist
Dated: March 14, 2012
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