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.
The Respondent is Alice Tasrawi of Cape Town, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (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 27, 2012, the Registrar 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 September 4, 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 September 4, 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 September 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2012.
The Center appointed Mihaela Maravela as the sole panelist in this matter on October 3, 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.
The Panel notes that the Registrar has confirmed the specific language of the registration agreement as English. In these circumstances, the Panel is satisfied that English is appropriate as the default language of the proceedings in accordance with paragraph 11 of the Rules. 4. Factual Background
The Complainant was incorporated in Scotland, Edinburgh in 1727 and is one of the oldest banks in the United Kingdom. It was incorporated as a public limited company in UK in 1968. The Complainant is a worldwide financial service provider, with an established presence in Europe, the Middle East, the United States of America, South America, and Asia.
The Complainant offers its services globally under the trademark RBS, registered inter alia as a:
- UK trademark, Registration No. 2004617, registered on January 5, 1996;
- Community trademark, Registration No. 97469, registered on March 23, 1998;
- United States trademark, Registration No. 3185538, registered on December 19, 2006.
In addition, the Complainant owns an extensive international portfolio of registered trademarks for the letters RBS, either by itself or in phrases incorporating it, including RBS BANK and RBS BANKLINE. Many of such registrations are as Community trademarks.
The Complainant is also the owner of a substantial number of domain names comprising the trademark RBS, amongst which:
- , registered on September 6, 1994;
- , registered on April 30, 1995;
- , registered on April 18, 2005.
The disputed domain name was registered on June 26, 2012. The Respondent’s website resolves at time of rendering this decision to a page stating that a hosting account has been set up successfully and that it is under construction, and the only indication as to its former contents has been provided by the Complainant, as a print out of the screen of the website, filed with the Complaint.
No other information as to the Respondent, its services or activities, is available to the Panel, as the Respondent did not reply to the Complainant’s contentions.
On July 4, 2012, the Complainant addressed a cease and desist letter to the Respondent, by email. The registrant of the disputed domain name answered “I am not”. The Complainant followed-up, asking what it meant, however no response was received. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to the famous trademark RBS, which has been registered by the Complainant around the world. The dominant part of the disputed domain name reproduces the trademark RBS and is bound to create confusion and a risk of association with the Complainant’s trademark. Addition of the suffix “private” only enhances the confusing similarity between the disputed domain name and the trademark RBS, strengthening the impression that the former belongs to, or is affiliated to the latter.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not legally or economically related to the Complainant and has never been authorized or licensed by the Complainant to use in any manner the trademark RBS. The Respondent is neither making any legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent used the disputed domain name to pass off as the Complainant, as he replicated the contents of the Complainant’s website “www.” in order to, as the Complainant alleges, “phish for financial information in an attempt to defraud the Complainant’s customers”.
The Complainant finally submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant contends that it is due to the considerable value and goodwill of the trademark RBS that the Respondent registered the disputed domain name, and dismisses the possibility that the Respondent was unaware of the Complainant’s rights at the time of registration of the disputed domain name. Moreover, by replicating the contents of the Complainant’s website “www.”, the Respondent used the disputed domain name to engage in a phishing scam, so as to “deceive the Complainant’s customers and manipulate them into divulging sensitive financial information”. As to the Respondent’s website being currently inactive, the Complainant submits that such passive holding could still qualify as an act of bad faith. The Respondent’s failure to respond to the Complainant’s cease and desist letter requesting voluntary transfer of the disputed domain name is further indicative of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Proper Respondent
Initial WhoIs domain name search enquiries, submitted in evidence, produced an apparent registrant name of Contact Privacy Inc Customer 0131619309. Following the request for registrar verification, the Registrar disclosed the correct details of the Respondent. Consequently, the Complainant amended its Complaint and named Alice Tasrawi, as the Respondent.
This suggests that a privacy service was in use, to shield the identity of the disputed domain name registrant from the general public. In general there may be wholly legitimate reasons for a person wishing to protect its identity by means of a privacy or proxy service. As has been noted by previous UDRP panels, the use of privacy services is becoming an increasingly common, and is a trend which is likely to continue. Under such arrangements the name of the “true” underlying or beneficial registrant is typically not displayed in the registrar’s publicly accessible WhoIs database, and is instead disclosed (if at all) only after the Complaint has been filed. At that point, some registrars, presumably in consultation with the privacy service, also apparently disclose the information directly in the publically available WhoIs database.
Paragraph 1 of the Rules defines the “respondent” as the holder of a domain-name registration against which a complaint is initiated.
As the Registrar provided the information regarding the disputed domain name registrant before the proceedings were formally commenced (see also Hoffmann-La Roche Inc. v. Aditya Roshni, Web Services Pty,WIPO Case No. D2008-1086), Alice Tasrawi is the disputed domain name holder currently listed in the publicly available WhoIs database and the private protection service was disabled immediately after receiving the request for registrar verification, in the specific circumstances of this case, this Panel elects to treat Alice Tasrawi as the Respondent in this case. Notification of Proceedings to Respondent
Fundamental due process requirements must be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
Based on the methods employed to provide the Respondent with notice of the Complaint, the Respondent’s obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to submit a response is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814. The Panel is satisfied that the Complaint was properly notified to the Respondent, that Alice Tasrawi is the registrant of the disputed domain name and therefore the Respondent.
In this respect it should also be emphasized that the Center must attempt reasonably to contact the Respondent, but can do no better than to send communications to the email and physical address on official record or provided in the Complaint in the WhoIs and provided by the Registrar. It is noted that the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of actual service. In the present case the Complaint and the Written Notice and associated communications were sent to the physical and emails addresses available in the WhoIs data base and provided by the Registrar. The Panel is satisfied that the Center has exercised the utmost care and has fulfilled its obligations under paragraph 2 of the Rules. See also Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten,WIPO Case No. D2008-0463.
Because the Respondent has defaulted in providing a response to the allegations of the Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (id., paragraph 15(a)).
In order that the remedy requested in the Complaint is granted, paragraph 4(a) of the Policy requires that the Complainant prove each of the following:
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. A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Panel has verified, in accordance to the consensus view of previous UDRP panels (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 4.5.), the trademark registrations indicated by the Complainant in its Complaint and is satisfied that the Complainant is the owner of RBS registered trademarks, including inter alia a:
- UK trademark, Registration No. 2004617, registered on January 5, 1996;
- Community trademark, Registration No. 97469, registered on March 23, 1998;
- United States trademark, Registration No. 3185538, registered on December 19, 2006.
These registrations predate the registration of the disputed domain name, i.e. June 26, 2012.
As to the confusing similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
The disputed domain name incorporates entirely the Complainant’s trademark RBS, a trademark found in numerous UDRP decisions to be distinctive and well-known (see The Royal Bank of Scotland Group Plc v. IRBS, WIPO Case No. D2012-0854; The Royal Bank of Scotland Group Plc v. Contact Privacy Inc. / Nat,WIPO Case No. D2012-0856; The Royal Bank of Scotland Group Plc v. Fastdomain Inc / Hyper Link Technology, Jeetender Rajouria,WIPO Case No. D2012-0666), due to its use, investment in advertising and brand protection, as well as its presence in protected trademarks and a considerable number of domain names worldwide (see The Royal Bank of Scotland Group Plc v. Arbechay, Adalbrecht Engelbert, WIPO Case No. D2012-0665).
The addition of the word “private” is generic and non-distinctive, and where such word is combined with well-known trademarks, a finding of confusing similarity is generally recognized (see The Royal Bank of Scotland Group Plc v. Contact Privacy Inc. / Nat,WIPO Case No. D2012-0856).
The impression of the Internet user will be that the disputed domain name belongs to the Complainant or at least is connected to the Complainant and its services. Even in the latter case, it is the Panel’s view that such connection may be strengthened where the trademark is well-known (see also The Royal Bank of Scotland Group Plc v. Arbechay, Adalbrecht Engelbert, WIPO Case No. D2012-0665).
Further, as to the addition of the generic top-level domain (gTLD) ".com", this does not bear any relevance to the comparison at hand, as use of a gTLD is required of domain name registrants, and has no impact on the overall impression made by the dominant part of the disputed domain name, “rbs”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, therefore the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of the domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (See WIPO Overview 2.0, paragraph 2.1.).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent replied in an email communication to the Complainant only “I am not” to the cease and desist letter provided by the Complainant. However, the Respondent did not file any formal Response countering the Complainant’s arguments and thus has failed to overturn such prima facie case.
Absent any response or defense by the Respondent, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given to the Respondent to use the trademark RBS (see Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055 on absence of license or permission excludes bona fide or legitimate use).
Further, the Respondent’s failure to act upon the Complainant’s cease and desist letter also indicates that the disputed domain name registration lacks the entitlement of a legitimate interest.
The Panel further finds that the Respondent is not commonly known by the disputed domain name, that it is not making legitimate, noncommercial 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.
Finally, the evidence submitted by the Complainant as to the contents of the website before it was taken down which appear to represent a replica of the Complainant’s “www.” website is indication of bad faith on the part of the Respondent, irrespective of whether such replication was intended for a phishing scam for financial information or mere passing off.
Under these circumstances, the Panel finds that the Respondent registered the disputed domain name to profit from the Complainant’s trademark goodwill and reputation, which is incompatible with making a legitimate, noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting, prima facie, evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris,WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 said website location or of a product or service on that website location.”
The print screen submitted by the Complainant as evidence showing that the Respondent replicated the contents of the Complainant’s website “www.” on its website, including the RBS logo, is in itself sufficient proof of registration in bad faith, with the intention of creating confusion with the Complainant’s genuine services for commercial gain.
As noted above, the trademark RBS is well-known. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Also, the Respondent registered the disputed domain name almost 20 years after the Complainant registered its trademarks.
As regards the use of the disputed domain name at the time of filing the Complaint, the mere fact that content had been taken down and the website renders to an under construction hosting account, cannot lead the Panel to dismissing the Complaint for failure to satisfy the requirement under paragraph 4(a)(iii) of the Policy.
The passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of respondent’s behaviour are indicative of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel is of the opinion that any possibly contemplated use of the disputed domain name cannot avoid amounting to passing off, given the confusing similarity with the Complainant’s trademark and associated online banking services.
Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:
- the Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210);
- the Respondent’s failure to respond to, or act upon the Complainant’s cease and desist letter, requesting voluntary transfer;
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name,
- any use of the disputed domain name would lead the public to the conclusion that it, and its connecting website, is associated with the Complainant,
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.
The Panel 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 and providing false contact information are all additional factors supportive of the Respondent’s bad faith conduct. (see The Royal Bank of Scotland Group Plc v. Contact Privacy Inc. / Nat,WIPO Case No. D2012-0856).
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 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.
Mihaela Maravela
Sole Panelist
Dated: October 17, 2012
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