The Complainant is The Royal Bank of Scotland Group Plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, United Kingdom of Great Britain and Northern Ireland.
The Respondent is irbs of Afghanistan. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 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 the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2012, 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 for the disputed domain name.
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 April 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2012.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on May 30, 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 June 7, 2012, the Panel issued Administrative Panel Procedural Order No. 1 requesting the Complainant to provide recent copies of the official databases concerning the five trademarks and the two domain names cited in the complaint. The Complainant responded and sent these pieces of evidence on June 14, 2012. 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 well-known registered trademarks RBS and RBS INTERNATIONAL by appending evidence of the following registrations:
- United Kingdom trademark for RBS, Registration No. 2004617, registered on January 5, 1996;
- Community trademark for RBS, Registration No. 97469, registered on March 23, 1998;
- United States trademark RBS, Registration No. 3185538, registered on December 19, 2006;
- United States trademark for RBS with stylized items, Registration No. 3198052, registered on January 16, 2007;
- United States trademark for RBS with stylized items, Registration 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; and
- , registered on April 30, 1995.
The disputed domain name was registered on July 9, 2011.
The disputed domain name resolved to a page displaying “Customers Online Access” with the slogan “Your Security is Our Utmost Concern” proposing an online access and mentioning: “Royal Bank of Scotland considers your online security to be of great importance. We never ask you for personal details per email”.
The Complainant sent a cease and desist letter to the Respondent on September 5, 2011. The Complainant also sent a follow up on September 14, 2011. The Respondent did not reply to these letters. 5. Parties’ Contentions A. Complainant A.1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The dominant part of the disputed domain name comprises the letters “RBS”, which is identical to the famous trademark RBS rightfully registered by the Complainant, and to its domain names.
The fame of the RBS trademarks has been confirmed in numerous previous UDRP decisions (see Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a. Telmex Management Services, Inc.,WIPO Case No. D2002-0155; The Royal Bank of Scotland Group plc and The Royal Bank of Scotland plc v. “Christopher Graham” or “John Graham” dba GRA Marketing CL,WIPO Case No. D2001-0626; 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).
The addition of the non-distinctive letter “i" and of a hyphen to the trademark RBS is not a distinguishing factor. The combination of a generic term with a mark does not prevent a domain name from being found confusingly similar (see Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488).
In this Panel’s view, by using the Complainant’s trademarks, the Respondent exploits the goodwill and the image of these trademarks for an improper use of the disputed domain name, i.e. for phishing purposes, which may result in dilution and other damage for the Complainant’s trademark as well as 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 the letters “RBS” or the disputed domain name.
Neither license nor authorization has been given by the Complainant to the Respondent to use its trademarks, which is a factor in the finding a lack of rights or legitimate interests (see Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312).
The Respondent’s failure to respond to the cease and desist letter further indicates this lack of rights or legitimate interests in the disputed domain name.
It is highly unlikely that the Respondent would not have known of the Complainant’s rights in the RBS trademark at the time of the registration and it is rather obvious that the fame of this trademark motivated the Respondent to register the disputed domain name.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and has intentionally chosen a domain name based on the renown of a registered trademark, in order to generate traffic on a website operating phishing scheme, where it presents itself as the Complainant and requires account and log-in information from Internet users.
Using a disputed domain name to operate phishing scheme does not give the Respondent rights or legitimate interests in the disputed domain name (see Juno Online Servs., Inc. v. Nelson, NAF Claim No. 241972; and Allianz of Am. Corp. v. Bond, NAF Claim No. 69796). A.3. The domain name was registered and is being used in bad faith
The RBS trademarks are well-known and trademarks with a substantial and widespread reputation in the finance industry worldwide. The Respondent was thus aware of the Complainant’s rights. Further, the website to which the disputed domain name resolved states: “Royal Bank of Scotland considers your online security to be of great importance. We never ask you for personal details per email.” This makes obvious the fact that the Respondent was aware of the Complainant and of its RBS trademark.
The Complainant sent out a cease an desist letter on September 5, 2011 advising the Respondent of the unauthorized use of the RBS trademarks and requesting a voluntary transfer of the disputed domain name.
A follow up letter was sent on September 14, 2011, but no response was received.
A failure of a Respondent to respond to a cease and desist letter has been considered relevant in finding of bad faith (see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460).
Moreover, the Respondent used the Complainant’s registered trademarks and the disputed domain name to deceive Complainant’s customers, providing a platform for fraudulent phishing activity, purporting to be part of the Complainant’s business.
The phishing scheme is evidence of the Respondent’s bad faith registration and use of the disputed domain name (see Hess Corp. v. GR, NAF Claim No. 770909; Juno Online Servs., Inc. v. Nelson, NAF Claim No. 241972; and Morgan Stanley v. Dominec Williams, NAF Claim No.1426319). 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 proves each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name 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 well-known and distinctive trademark RBS in its entirety. Since the letter “i" is non-distinctive for online services and does not serve to distinguish the disputed domain name from the Complainant’s RBS trademark , this Panel finds that the disputed domain name is confusingly similar to the trademark RBS.
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 in the disputed 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 disputed domain name or a name corresponding to the disputed 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 disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case there has been no Response to the Complaint. Therefore, the Panel has analyzed the case on the basis on the Complainant’s contentions and evidence in the record.
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 its 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 at the disputed domain name and has not been commonly known under the disputed domain name.
The Respondent is using the disputed domain name for phishing purposes. Therefore, it is not making a legitimate noncommercial 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 trademarks enjoy worldwide reputation for banking and financial services.
In view of the reputation of the RBS trademarks, the Panel is of the opinion that the Respondent must have been aware that the disputed domain name is confusingly similar to the Complainant’s RBS trademark.
The Panel 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 registration, within the meaning of paragraph 4(b)(iv) of the Policy.
Moreover, according to the provided screenshot of the website at the disputed domain name , the Respondent purports to be part of the “Royal Bank of Scotland Group” in order to phish personal and financial information of Internet users. In this Panel’s opinion, such a situation cannot be tolerated.
The Panel therefore finds that Respondent’s operation of a phishing scheme to collect personal information is evidence 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: June 25, 2012
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