Complainant is The Royal Bank of Scotland Group plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Melbourne IT Digital Brand Services, UK.
Respondent is Dennis Oiboh of Ijebu Ode, Nigeria and WhoisGuard, WhoisGuard Protected, Daniel Nise of Los Angeles, California, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (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 28, 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 Complainant on September 3, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 3, 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 Respondent of the Complaint, and the proceedings commenced on September 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2012. The Center received informal email communications from Respondent on September 5 and 7, 2012. Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on September 28, 2012
The Center appointed Steven Auvil as the sole panelist in this matter on October 9, 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
Complainant is a company incorporated in Scotland. Complainant owns several registered trademarks for the term “rbs” including the following:
- UK Trademark Registration No. 2004617 dated November 23, 1994 in classes 9, 16, 35, 36, 42;
- Community Trademark Registration No. 97469 dated April 1, 1996 in classes 9, 16, 35, 36 and 42;
- US Trademark Registration No. 3185538 dated December 19, 2006 in classes 9, 16, 35, 36;
- US Trademark Registration No. 3529700 which consists of a representation of a stylized daisy wheel with the letters “rbs” dated November 11, 2008 in classes 6, 9, 11, 14, 16, 17, 18, 20, 21, 24, 26, 27, 28, 30, 32, 35, 36, 41, 42;
- US Trademark Registration No. 3198052 which consists of a representation of a stylized daisy wheel with the letters “rbs” dated January 16, 2007 in classes 9, 16, 35, 36, 38, 41, 42; and
- Complainant is the owner of numerous other trademark registrations incorporating “rbs” around the world.
Complainant is the registrant of the domain names , which was created on September 6, 1994, and , which was created on April 30, 1995.
The disputed domain name was registered on February 16, 2012. 5. Parties’ Contentions A. Complainant
Complainant was founded in Edinburgh by Royal Charter in 1727 and is one of the oldest banks in the UK. It was incorporated as a public limited company in the UK in 1968. Complainant contends that it offers its financial services worldwide under the mark RBS and has spent a significant amount of money promoting and developing this mark.
Complainant contends that the disputed domain name is identical or confusingly similar to the mark in which it has rights by virtue of the fact that the dominant part of the disputed domain name comprises the Complainant’s mark RBS. Complainant contends that the fame of the trademark has been confirmed in numerous previous UDRP decisions, including 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..
Complainant contends that the addition of the term “ukgroup” will not have any impact on the overall impression of the dominant part of the disputed domain name. Complainant states that the term “uk” which refers to the United Kingdom is completely insufficient to dispel user confusion from inevitably occurring. Complainant argues that doing so very likely exacerbates rather than ameliorates the confusion. Complainant reasons that well-known and widely followed naming conventions in forming domain names, Internet users in a given country or who have an interest in that country and desire to reach a website of a corporation or other entity operating in that country would likely think to construct a domain name by simply appending the name of the country to the RBS mark.
Complainant contends that the word abbreviation “group” reflects Complainant’s business name “The Royal Bank of Scotland Group Plc”. Complainant states that the addition of the generic top-level domain (gTLD) “org” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the disputed domain name. Complainant contends that the disputed domain name is therefore confusingly similar with Complainant’s trademark.
Complainant next contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. Complainant also contends that Respondent may not claim any rights established by common usage. Additionally, Complainant has not granted Respondent any license or authorization of any other kind to use the RBS trademark. Further, Complainant states that Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant. Additionally, Complainant argues that there is not a disclaimer on the website describing the non-existent relationship with Complainant.
According to Complainant, Respondent obviously knew of Complainant’s legal rights in the name RBS at the time of the registration and it was the fame of the trademark that motivated Respondent to register the disputed domain name. Complainant states that Respondent has used disputed domain name to pass itself off as the Complainant in order to defraud Complainant’s customers through a fraudulent website identical to Complainant’s. Additionally, Complainant contends that Respondent used the disputed domain name to “phish” for financial information in an attempt to defraud Complainant’s customers.
Complainant then contends that Respondent registered and used the disputed domain name in bad faith. Complainant states that the website has been shut down due to fraudulent activities of Respondent. Namely, Respondent used the disputed domain name to engage in a phishing scam. Complainant states that Respondent was using the disputed domain name to deceive Complainant’s customers and manipulate them into divulging sensitive financial information. Complainant argues that the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith. B. Respondent
The Center received informal emails communications from Respondent on September 5 and 7, 2012. The Respondent did not provide a formal Response to Complainant’s contentions. 6. Discussion and Findings
The Panel’s jurisdiction is limited to a determination of whether Complainant has proved the necessary elements of a claim for transfer or cancellation of the disputed domain name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, the Policy, paragraph 4(a), requires Complainant to prove each of the following elements:
(1) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a formal Response, the Panel will decide this administrative proceeding based on Complainant’s undisputed allegations for which there are support, pursuant to the Rules, paragraphs 5(e), 14(a), and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, paragraph 14(b). A. Identical or Confusingly Similar
Complainant has demonstrated that it owns rights in the registered trademark RBS in several countries or regions, including the United Kingdom, United States of America, and the European Union.
The Panel finds that the disputed domain name is identical and confusingly similar to Complainant’s RBS marks. It is well-settled that the addition of merely generic, descriptive or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437. The addition of the characters “ukgroup” to Complainant’s RBS trademark does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark. Internet users would be confused into thinking that the disputed domain name was associated with Complainant’s business in the UK. Additionally, Internet users would assume that the term “group” referred to Complainant’s business name “The Royal Bank of Scotland Group Plc”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark RBS. B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared 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; (ii) Respondent has been commonly known by the disputed domain name; or (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Policy, paragraph 4(c).
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the complainant, but panels have long recognized that the information needed to prove such a right or interest is normally in the possession of the respondent. In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of production passes to the respondent to show that it does indeed have such a right or interest. See, e.g., Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. For the reasons that follow, the Panel finds that Complainant has made a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case.
Nothing in the record suggests that Respondent is commonly known by the disputed domain name or that, before any notice of this dispute, Respondent used, or demonstrably prepared 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. In fact, Complainant has presented evidence that the disputed domain name is currently inoperable and that the disputed domain name was previously used in a scheme to “phish” for customers’ financial information. A scheme to illegitimately obtain personal and financial information from Complainant’s customers cannot qualify as either a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
The undisputed record indicates that Respondent registered the disputed domain name 18 years after Complainant established rights in the RBS trademark (UK Registration No. 2004617). Given the record before the Panel, it is a reasonable inference that Respondent was aware of Complainant and Complainant’s business when Respondent registered the disputed domain name and that Respondent deliberately incorporated Complainant’s RBS trademark in the disputed domain name with intent for commercial gain to misleadingly divert customers.
The Panel, especially in the absence of any formal response from Respondent, considers that the circumstances described in the Policy, paragraph 4(c), of proof of a right or legitimate interest by Respondent in the disputed domain name are not likely to exist. For these reasons, in accordance with the Policy, paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the disputed domain name in bad faith.
The Policy identifies the following circumstances that, if found, are evidence of registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product on Respondent’s website or location.
Policy, paragraph 4(b).
As already mentioned, the Panel finds that it is likely that Respondent was aware of Complainant and its business when Respondent registered the disputed domain name, which evidences bad faith on Respondent’s part. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
In fact, Complainant has provided evidence that Respondent had previously used the disputed domain name to pass itself off as Complainant and “phish” for customers’ financial information. The screenshot provided by Complainant of the website at the disputed domain name, demonstrates that Respondent purports to be part of the “Royal Bank of Scotland Group” in order to phish personal and financial information of Internet users (Annex 10 to the Complaint). The type of “phishing” scheme orchestrated by Respondent is evidence of bad faith use of the disputed domain name pursuant to the Policy.
In this case, in which Respondent failed to respond to the Complaint, the Panel finds that the totality of the circumstances supports the conclusion that Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel concludes that the bad faith element of the Policy is satisfied. 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 Complainant.
Steven Auvil
Sole Panelist
Dated: October 26, 2012
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