The Complainant is The Royal Bank of Scotland Group Plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Melbourne IT Digital Brand Services, United Kingdom.
The Respondent is Hyper Link Technology, Jeetender Rajouria of New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2012. On March 29, 2012, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On March 29, 2012, FastDomain, Inc. 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 April 3, 2012 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 amendment to the Complaint on April 10, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2012.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on May 9, 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.
On May 15, 2012, the Panel issued Administrative Panel Procedural Order No. 1 requesting the Complainant to provide copies of the official databases concerning the 6 trademarks the 3 domain names cited in the Complaint.
The Complainant responded and sent these pieces of evidence on May 16, 2012.
The Complainant also sent an annual report for 2011.
This additional document has not been taken into account by the Panel, because it had not been requested to produce it. 4. Factual Background
The Complainant is one of the oldest banks in the United Kingdom offering its financial services worldwide.
The Complainant has established prior rights in the registered trademarks RBS and RBS INTERNATIONAL by appending evidence of the following registrations:
- Indian trademark RBS No 1334968, filed on January 28, 2005;
- United Kingdom trademark RBS No 2004617, registered on January 5, 1996;
- United Kingdom trademark RBS No 2437236A, registered on August 3, 2007;
- United States trademark RBS No 3185538, registered on December 19, 2006;
- United States semi-figurative trademark RBS No 3198052, registered on January 16, 2007;
- United States semi-figurative trademark RBS No 3529700, registered on November 11, 2008.
The Complainant also holds and operates many domain names containing the terms “rbs” and “rbsinternational”, including:
- , registered on September 6, 1994;
- , registered on September 21, 2000;
- , registered on April 30, 1995.
The disputed domain name was registered on July 15, 2011.
The disputed domain name resolved to a website offering financial services. 5. Parties’ Contentions A. Complainant A.1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The disputed domain name is identical to the famous trademark RBS INTERNATIONAL and confusingly similar to the famous trademark RBS rightfully registered by the Complainant.
The fame of the trademarks RBS has been confirmed in numerous previous UDRP decisions (see The Royal Bank of Scotland Group plc and National Westminster Bank plc v. Pritpal Jittla, NAF Claim No. 660550; The Royal Bank of Scotland Group plc v. rbspayments, NAF Claim No. 728805; The Royal Bank of Scotland Group plc, Citizens Financial Group, Inc., Churchill Insurance Co. Ltd., Hanco ATM Systems Ltd. & Privilege Insurance Co. Ltd. v. Domaincar c/o Perthshire Marketing a/k/a Domaincar, NAF Claim No. 671079; The Royal Bank of Scotland Group plc and The Royal Bank of Scotland International Limited v. Yorgi Brawn, NAF Claim No. 787945; The Royal Bank of Scotland Group plc v. Navigation Catalyst Systems, Inc., NAF Claim No. 813065; The Royal Bank of Scotland Group plc v. Caribbean Online International Ltd., NAF Claim No. 849147; The Royal Bank of Scotland Group plc v. Domain Discreet c/o ATTN: , NAF Claim No. 986696; The Royal Bank of Scotland Group plc v. Teddy Jackson, NAF Claim No. 992134; The Royal Bank of Scotland Group plc v. Jim Bowen, NAF Claim No. 1045991; The Royal Bank of Scotland Group plc v. Ramzi Takch, NAF Claim No. 1106036; The Royal Bank of Scotland Group plc v. PrivacyP c/o Domain Admin, NAF Claim No. 1128875; The Royal Bank of Scotland Group plc v. UBA c/o ICB011857 ICB011857, NAF Claim No. 1189004; The Royal Bank of Scotland Group plc v. N/A c/o Bryan I., NAF Claim No. 1199346).
By using the Complainant’s trademarks, the Respondent exploits the goodwill and the image of these trademarks, which may result in dilution and other damage for the Complainant’s trademark, creating a risk of confusion. A.2. The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, nor found anything that would indicate that it is commonly known by this domain name.
It therefore seems that the Respondent has used the disputed domain name to pass itself off as the Complainant in order to drive traffic and customers to his site, potentially phishing for customers’ financial information.
This activity does not constitute a bone fide offering of goods or services, nor a legitimate non-commercial or fair use pursuant to Policy, and the Complainant finds support in Vivendi Universal Games and Davidson & Associates, Inc. v. Ronald A. Ballard, NAF Claim No. 146621, stating that where a respondent copies the complainant’s website in order to steal account information from the complainant’s customers, that is prima facie evidence of lack of rights and legitimate interests in the disputed domain name (see also Capital One Financial Corporation and Capital One Bank v. Austin Howel, NAF Claim No. 289304). A.3. The domain name was registered and is being used in bad faith
The trademarks RBS and RBS INTERNATIONAL are well-known and reputed trademarks with a substantial and widespread reputation in the finance industry worldwide. The Respondent was thus aware of the Complainant’s rights.
The Complainant sent out a cease an desist letter on July 27, 2011 advising the Respondent of the unauthorized use of the trademarks RBS and RBS INTERNATIONAL and requesting a voluntary transfer of the disputed domain name.
The Respondent replied on August 24, 2011, explaining that he did not have any malintention and that the disputed domain name was registered to its daughter’s name.
When the Complainant proposed to solve amicably this matter, the Respondent asked the Complainant to contact the webhosting company Hyper Technology. And when the Complainant contacted Hyper Technology to get all the necessary technical details, in order to transfer the disputed domain name, this company replied that the disputed domain name was for sale for USD 20,000.
Moreover, the Respondent used the Complainant’s registered trademarks and the disputed domain name to deceive Complainant’s customers.
The Complainant contends that the Respondent has created business profiles using the term “RBS International” on various websites, as “LinkedIn”, stating that the company was operating in financial service. It was also on “Finroad”, a financial network, giving reference to the domain name . The Complainant filed a complaint with “LinkedIn” and it removed the account, since the Respondent failed to prove its legitimate interest in the brand RBS INTERNATIONAL.
Finally, as the disputed domain name resolved to a website that could clearly make visitors believe that it was somehow connected to Complainant’s activity, the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleading diverting consumers for its own commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates the distinctive trademark RBS INTERNATIONAL. Since the Complainant has rights in the trademarks RBS and RBS INTERNATIONAL, this Panel finds that the disputed domain name is confusingly similar to the trademark RBS and identical to the trademark RBS INTERNATIONAL.
The Panel finds that the condition of the paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
There has been no Response to the Complaint. Therefore, the Panel has analyzed the case on the basis on the Complainant’s contentions and pieces of evidence, although most of them are not dated.
The Complainant contends that the Respondent has no connection or affiliation with it, and the Complainant asserts it has not consented to Respondent’s use of the trademark in the disputed domain name.
Given this situation, the Panel is of the opinion that the Complainant sufficiently showed that the Respondent does not make a bona fide offering of goods and services under the disputed domain name and has not been commonly known under the disputed domain name.
The Respondent is using the disputed domain name for financial purposes. Therefore, it is not making a legitimate non-commercial or fair use of the disputed domain name.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by the Panel to be evidence of the bad faith registration and use of a domain name. It provides that:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has 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) the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has 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 the Respondent’s website or location or of a product or service on your web site or location.
The RBS and RBS INTERNATIONAL trademarks enjoy worldwide reputation for banking and financial services.
In view of the reputation of the trademarks RBS and RBS INTERNATIONAL, the Panel is of the opinion that the Respondent must have been aware that the disputed domain name is identical to the protected trademark RBS INTERNATIONAL and confusingly similar to the protected trademark RBS of Complainant.
According to the provided screenshot of the website at the disputed domain name , the financial services which were previously offered were targeting the Complainant’s customers and the Respondent was using a logo that is inspired by the Complainant’s logo. This Panel is of the opinion that the Respondent is potentially phishing for customers’ financial information and such a risk can not be tolerated.
The Respondent’s reaction to the cease and desist letter shows that the Respondent aimed at selling the disputed domain name . The Panel is of the opinion that Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant who is the owner of the corresponding trademark or service mark. This constitutes bad faith registration, within the meaning of paragraph 4(b)(i) of the Policy.
The Panel also finds that the Respondent is using the disputed domain name to intentionally attempt to divert Internet traffic to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites. This constitutes bad faith use of the disputed domain name in application of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel finds that Complainant has established the finding of bad faith registration and use within the meaning of 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 be transferred to the Complainant.
Marie-Emmanuelle Haas
Sole Panelist
Dated: May 30, 2012
Full & Egal Universal Law Academy