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 tom dobberfuhl / Private Registration US of San Antonio, Texas, United States of America (“United States”) and Sunnyvale, California, United States, respectively. 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 April 22, 2012. On April 23, 2012, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On April 25, 2012, Melbourne IT Ltd. 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 26, 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/amended Complaint on April 27, 2012.
The Center verified that the Complaint together with the amendment to 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 April 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2012. The Respondent did not submit a formal response. Accordingly, the Center notified that it would be proceeding to Panel Appointment on May 22, 2012.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 5, 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 company incorporated under the laws of Scotland and is the owner of the RBS trademark. The Complainant was founded in 1727, and is one of the oldest banks in the United Kingdom. The Complainant offers financial services worldwide under the RBS trademark and has spent a significant amount of money promoting and developing the RBS trademark. The Complainant owns an international portfolio of registered trademarks for RBS, including United Kingdom Trademark Registration No. 2004617 dated November 23, 1994, and Community Trademark Registration No. 97469 dated April 1, 1996.
In addition to the United Kingdom and Community Trademark registrations, the Complainant also owns several United States trademark registrations for RBS, including Registration Nos. 3,529,700; 3,185,538; and 3,198,052; respectively registered in 2008, 2006 and 2007.
The Complainant opened its first American office in 1960, and continue to provide financial services in the United States.
The disputed domain name was registered on August 11, 2011, and at the time the Complaint was filed the disputed domain name reverted to a website that provides links to websites of third parties.
In e-mail communications to the Center, the Respondent Tom Dobberfuhl advised that he was the victim of identity theft at the relevant time, and claimed that the perpetrators had used that information to register the disputed domain name and open a website using his name and address.
Although the Respondent Mr. Dobberfuhl indicated that it would be “easy enough” to provide additional information in support of his position, he did not actually file any formal Response in these proceedings, and he did not provide any documents or other tangible proof of the alleged identity theft. In his informal communications to the Center, the Respondent Mr. Dobberuhl advised that, “I initiated a dispute to have my name removed from as the registrar.” 5. Parties’ Contentions A. Complainant Confusingly Similar
The Complainant owns many trademark registrations for the trademark RBS around the world including: United Kingdom Trademark Registration No. 2004617, Community Trademark Registration No. 97469, and United States of America Registration Nos. 3,529,700; 3,185,538; and 3,198,052, which date back to as early as November, 1994. The disputed domain name is identical to the Complainant’s registered trademark, except for the addition of the word “groups” and the “.org” gTLD designation. The addition of the generic word “groups” does not distinguish the disputed domain name from the RBS trademark. It is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with generic prefixes and suffixes (see Dr. Ing.h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488). The Complainant further contends that the addition of a url designation does not distinguish the domain name from the Complainant’s trademark. Rights or Legitimate Interests
The Respondent is not publicly known by the RBS name, and the Complainant submits that the Respondent cannot have any rights or legitimate interest in the domain name, because the Complainant has exclusive rights to the RBS trademark. The Respondent has no past or current business relationship with the Complainant, and the Respondent was never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondent is not making a bona fide use of the disputed domain name, and has used the domain name in connection with a website which diverts unsuspecting internet users to third-party websites for purposes of monetary gain. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (1) the Complaint’s trademark rights in the mark RBS are well-known, and the Respondent had to be aware of the Complainant’s trademark rights when he registered the domain name ; (2) the Respondent registered a confusingly similar domain name and is using the disputed domain name in association with a website which provides links to third party websites for the purposes of monetary gain; and (3) the Respondent has used the disputed domain name in connection with a website that operated a fraudulent phishing scheme, which displayed links that included the terms: “account”, “bank insurance files”, “login” and “payment transfer”. Complainant notes that the “phishing” website connected with the disputed domain name has been since shut down and now reverts to a “pay per click” site as previously noted. B. Respondent
The Respondent did not file a formal reply to the Complainant’s contentions. The Respondent’s only submission was in the form of e-mails which mentioned the identity theft problem, described above. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the mark RBS by virtue of United Kingdom Trademark Registration No. 2004617, Community Trademark Registration No. 97469, and United States Registration Nos. 3,529,700; 3,185,538; and 3,198,052, which date back to as early as November, 1994.
The Panel finds that RBS is a well-known mark that has received worldwide recognition, and that the disputed domain name is confusingly similar to the Complainant’s registered trademark RBS, even with the addition of the generic word “groups” and the gTLD “.org” designation. The Panel finds that the addition of a generic word, such as “groups” does not serve to distinguish the disputed domain name from the Complainant’s well-known trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
On the existing record, the Respondent has failed to provide any evidence of a legitimate interest or right in the disputed domain name. The Panel adopts the reasoning in Banco Bradesco S/A v. Martha Dantas,WIPO Case No. D2010 0646:
“[*]In this case, Complainant has offered meaningful explanations and has provided enough evidence of its exclusive rights concerning the mark BRADESCO. Therefore the burden shifts to Respondent to bring forward evidence of its rights or legitimate interests, if such evidence exists.
[*]However, though Respondent has replied to communication from the Center, indicating that she has nothing to do with the registration of the disputed domain name , and that this event possibly occurred because she once had her personal documents and credit card stolen, Respondent has failed to counter Complainant’s arguments or to provide any evidence of rights or legitimate interests in the disputed domain name.
[*]Such failure by Respondent to file a Response leaves the Panel to decide the case on the basis of the available record and the evidence provided by Complainant”.
The same reasoning can be applied in this case. The Respondent replied in an email communication to the Center, indicating that he has nothing to do with the registration of the disputed domain name , and that the Registration had been entered in his name because his identity was stolen the previous year. However, neither the Respondent, whether or not he is the true registrant of the disputed domain name, nor any other, filed any formal Response countering the Complainant’s arguments and there is no evidence in the record of rights or legitimate interests of someone other than the Complainant in the disputed domain name. Accordingly, upon consideration of the evidence filed in the Complaint, the Panel is satisfied that the Respondent lacks any legitimate right or interest in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is prepared to find that the Complainant’s trademark RBS is well-known in the United Kingdom and internationally. Accordingly, the Panel concludes that the Respondent, as the listed Registrant, must have chosen the disputed domain name deliberately to trade on the Complainant’s reputation. The Respondent’s use of the confusingly similar domain name in association with a pay per click website for the purposes of monetary gain is evidence of bad faith under the Policy. The fact that at one time the dispute domain name reverted to a website that operated a suspected “phishing scheme” also supports the conclusion of bad faith.
Accordingly, the Panel finds that Complainant has satisfied the requirement under 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 domain name, be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Dated: June 19, 2012
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