The Complainant is The Royal Bank of Scotland Group Plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“U.K.”), represented by Melbourne IT Digital Brand Services, U.K.
The Respondent in this administrative proceed is Contact Privacy Inc. of Toronto, Ontario, Canada and “Nat” of Port Harcourt, Nigeria. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Tucows Inc. 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 Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On April 23, 2012, Tucows 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 25, 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 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 May 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2012.
The Center appointed Charné Le Roux as the sole panelist in this matter on June 7, 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 was incorporated in Scotland in 1727, and was incorporated as a public limited company in the U.K. in 1968. It is one of the oldest banks in the U.K. The Complainant opened its first office in the United States of America (“U.S.A.”) in 1960 and is currently one of the largest providers of liquidity in the U.S.A. The Complainant offers its financial services worldwide under the mark RBS and has expended a significant amount of money in promoting and developing this particular mark.
The Complainant owns a substantial international portfolio of registered trade marks for the term “RBS” and also marks incorporating the term “RBS”, such as: RBS BANKLINE, RBS CARRIER CASH, RBS FASTPAY, RBS FINANCE, RBS LIQUIDITY MANAGER and the like. These registrations cover most of the European Union, the U.S.A., Canada, Asia and also Nigeria where the Respondent, as identified by the Registrar, Tucows, Inc. is located. These registrations were filed as early as November 1994. The Complainant also owns a significant number of domain names that incorporate the mark RBS, including the domain names: and , registered in 1994 and 1995, respectively, and from which it operates its website. The list of the RBS domain names owned by the Complainant includes names such as: , , , , and so forth, totaling a number of over 1100 such domain names.
The Disputed Domain Name was registered on March 30, 2011. The website at the Disputed Domain Name resolves to a pay-per-click website on which sponsored links such as “CASH BACK ON CREDIT CARD”, “VISA CREDIT” and “APPLY FOR A CREDIT CARD” appear. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is a famous and global provider of financial services with a substantial and widespread reputation in the finance industry. It owns the trade mark RBS and submitted evidence as to the extensive number of trade mark registrations and domain names for RBS, and names incorporating RBS, in many countries in the world. The Complainant’s first U.K. trade mark registration for RBS was obtained in November 1994. Its domain name was also obtained in 1994.
The Complainant contends that the Disputed Domain Name is confusingly similar to its RBS trade mark in that it incorporates the RBS trade mark with the generic terms “groups” and “finance”.
The Complainant contends that the Disputed Domain Name was designed to lead consumers who are searching for the Complainant’s services to the website to which the Disputed Domain Name resolves.
The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
i) the Complainant has not authorized the Respondent to register or use the RBS trade mark in any way. It is not a dealer of the Complainant’s services and has never had a business relationship with the Complainant;
ii) the Respondent has not responded to the Complainant’s cease and desist letter in order to demonstrate a right or legitimate interest in respect of the Disputed Domain Name;
iii) the Respondent should have known of the Complainant’s rights in the RBS mark, given its notoriety across the world;
iv) the Respondent is not commonly known by the Disputed Domain Name; and
v) the Respondent is not using the Disputed Domain Name in connection with the bona fide offering of goods or services, but rather misleads the public by diverting them to the website to which the Disputed Domain Name resolves in order to generate traffic for a commercial benefit.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant and given the prominence of its RBS trade mark worldwide, the Respondent must have been aware of the Complainant and its trade mark.
The Complainant submits that it is due to the fame of the RBS trade mark that the Respondent registered the Disputed Domain Name. It notes that the website to which the Disputed Domain Name is redirected is commercial and features sponsored links using terms such as “CASH BACK ON CREDIT CARD” , “VISA CREDIT” and “APPLY FOR A CREDIT CARD”.
The Complainant submits that the Respondent’s absence of a reaction to its cease and desist letter is also indicative of the Respondent’s bad faith.
The fact that the Disputed Domain Name incorporates the terms “groups” and “finance” which relate to the main business activities of the Complainant furthermore shows, according to the Complainant, that the Respondent must have been aware of the Complainant and its principal RBS brand.
The Complainant submits that the Respondent’s concealment of its identity is also proof of bad faith.
The Complainant finally submits that the Respondent attempts to attract, for commercial gain, Internet users to the website to which the Disputed Domain Name resolves by creating the likelihood of confusion with the Complainant’s trade mark.
The Complainant requests that the Disputed Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
i) that the Disputed Domain Name is identical or confusingly similar to the mark in which it has rights;
ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules, the Panel will draw such inferences from the Respondent’s default as it considers appropriate. This will include the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant owns both registered and unregistered rights in the trade mark RBS, and that this trade mark is well-known worldwide.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s RBS trade mark. The addition of the words “groups” and “finance” are generic and non-distinctive, and where such words are combined with well known trade marks, a finding of confusing similarity is generally recognized.
The first requirement of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel considers that the Respondent’s use of the Disputed Domain Name is not in connection with the bona fide offering of goods and services, such as to confer on the Respondent rights or legitimate interests for the purposes of the Policy. On the contrary, its use of the Disputed Domain Name takes unfair advantage of the extensive and substantial reputation of the Complainant’s RBS trade mark and of the Disputed Domain Name’s identity to or confusing similarity with that trade mark, in order to divert Internet users seeking information about the Complainant or its services to the Respondent’s website where they are lured with terms such as “CASH BACK ON CREDIT CARD”, “VISA CREDIT” and “APPLY FOR A CREDIT CARD”.
The Panel finds that the Respondent has undoubtedly adopted the Disputed Domain Name and the website associated with it to profit from the Complainant’s reputation in its RBS trade mark.
The Panel further finds that the Respondent is not commonly known by the Disputed Domain Name, that it is not making legitimate, non-commercial or fair use of the Disputed Domain Name, that it is not authorized by the Complainant to use the Disputed Domain Name and that there is no other basis on which it could claim to have rights or legitimate interests in the Disputed Domain Name in this case.
The second requirement of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds on the evidence that by using the Disputed Domain Name, the Respondent is intentionally attempting to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s RBS trade mark as to the source, sponsorship and affiliation or endorsement of the Respondent’s website. In the Panel’s view, Internet users seeking information about the Complainant’s services or branches of the Complainant are liable to be diverted by confusion between the Disputed Domain Name and the Complainant’s mark, to the Respondent’s website, where they are lured with terms such as “CASH BACK ON CREDIT CARD” , “VISA CREDIT” and “APPLY FOR A CREDIT CARD”. This allows the Respondent to profit from and exploit the goodwill associated with the Complainant’s RBS trade mark.
The Panel also finds that the Respondent’s silence both to the cease and desist letter sent by the Complainant, as well as these proceedings, coupled with the Respondent’s concealment of its identity in using a privacy service are all additional factors supportive of the Respondent’s bad faith conduct.
In accordance with paragraph 4(b)(iv) of the Policy, the Panel is satisfied that there is evidence of registration and use of the Disputed Domain Name in bad faith.
The third requirement of paragraph 4(a) of the Policy has been met. 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.
Charné Le Roux
Sole Panelist
Dated: June 21, 2012
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