The Complainant is The Royal Bank of Scotland Group plc of London, 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 Nelson Alvarado of Waterbury, Connecticut, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with The Registry at Info Avenue, LLC d/b/a Spirit Telecom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2012. On August 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2012, the Center reminded the Registrar of the registrar verification request. On August 31, 2012, the Center reminded the Registrar for the second time of the registrar verification request. No response was received from the Registrar by September 12, 2012. The Center transmitted the first formal reminder to the Registrar on September 12, 2012. On September 19, 2012, a further communication regarding the registrar verification request was transmitted to the Registrar. On September 20, 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. On September 21, 2012, the Center transmitted by email a request for registrar confirmation. On September 21, 2012, the Registrar transmitted by email to the Center its response confirming that the disputed domain name has been locked and the language of the registration agreement is English.
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 September 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2012.
The Center appointed Theda König Horowicz as the sole panelist in this matter on November 2, 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, The Royal Bank of Scotland Group plc, is a company incorporated in Scotland which offers its financial services worldwide under the mark RBS. The Complainant has notably an important presence in the United States.
The Complainant owns several registrations for the trademark RBS, including:
- UK Trademark Registration No. 2004617 dated January 5, 1996, in international classes 9, 16, 35, 36 and 42,
- CTM Trademark Registration No. 97469 dated March 23, 1998, in international classes 9, 16, 35, 36 and 42,
- US Trademark Registration No. 3529700 of 2008,
- US Trademark Registration No. 3185538 of 2006,
- US Trademark Registration No. 3198052 of 2007.
In addition to its trademark registrations, the Complainant holds a wide portfolio of domain names containing its trademark RBS. The Complainant operates its official website under the domain names and .
The Respondent registered the disputed domain name on June 1, 2012 and linked the disputed domain name to a website identical to the Complainant’s official website.
The Complainant sent a cease and desist letter to the Respondent by email on June 13, 2012. Despite reminders, no response was received. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is clearly confusingly similar to the Complainant’s registered trademark RBS. The suffixes “London” and “online” do not detract from the overall impression but are rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant, as the Complainant is very active online and has a strong presence in London.
The Complainant further states that the Respondent has no rights or legitimate interests in respect of the disputed domain name notably because:
- the Respondent has no registered or common law rights corresponding to the disputed domain name,
- the Complainant has not provided any authorization or license to the Respondent over its trademark RBS,
- the Respondent knew of the Complainant’s legal rights in the mark RBS which proves that his interests cannot have been legitimate,
- the Respondent has used the disputed domain name to pass himself off as the Complainant in order to defraud the Complainant’s customers through a fraudulent website identical to the Complainant’s.
Finally, the Complainant invokes that RBS is a famous trademark worldwide and that the Respondent was aware of the rights the Complainant has in the trademark and the value of the said trademark at the point of the registration of the disputed domain name. Furthermore, there is no connection between the Respondent and the Complainant. In addition, the disputed domain name was used for fraudulent purposes. The Respondent is thus not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, but is committing a criminal offence and misleadingly diverting consumers for his own commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has shown to have rights in the trademark RBS in many countries, including but not limited to the United Kingdom and the United States.
The disputed domain name contains the Complainant’s mark in its entirety.
The Panel finds that the addition of the descriptive suffix “online” and the geographical term “London” are not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
As underlined by the Complainant, the addition of both these suffixes do as a matter of fact increase the confusion considering that the Complainant is known for being established in the United Kingdom, for having offices in London and for having an official presence on the Internet.
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
In particular the Complainant has established that it has not provided any authorization or license to the Respondent over its trademark RBS and that the Respondent has linked the disputed domain name to a website identical to the Complainant’s official website. By doing so, the Respondent obviously tried to pass itself off as the Complainant.
The burden of production on this factor therefore shifts to the Respondent to rebut the showing by providing concrete evidence that he has rights or legitimate interests in the disputed domain name (See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Respondent has remained silent in these proceedings.
Under the circumstances, the Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances constituting evidence of the registration and use of a domain name in bad faith.
Based on the case file and the reputation of the trademark RBS, the Panel finds that the Respondent must have known the Complainant’s trademark RBS when he registered the disputed domain name.
Considering the use of the disputed domain name by the Respondent, that is by making a link to a website identical to the Complainant’s website and apparently using it to defraud the Complainant’s customers, it is obvious, without having to go into a long development, that the Respondent used it in bad faith.
For the above-mentioned reasons and in the absence of any defense by the Respondent, the Panel thus concludes that the third condition instituted by paragraph 4(a)(iii) is fulfilled as well. 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.
Theda König Horowicz
Sole Panelist
Dated: November 16, 2012
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