The Complainant is The Royal Bank of Scotland Group Plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT DBS AB, Sweden.
The Respondent is Domain eRegistration 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 originally concerning the disputed domain names and was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2012. On November 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 3, 2012 and December 4, 2012 respectively, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 4, 2012 providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 10, 2012, the Complainant requested to remove the disputed domain name from the Complaint. On the same day, the Complainant filed an amendment to the Complaint regarding the disputed domain name .
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 13, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 2, 2013.
On December 13 and 14, 2012, the Center received two email communications stating a willingness to transfer the disputed domain name to the Complainant. On December 14, 2012, the Center invited the Complainant to comment if it wished to suspend the dispute. On December 17, 2012, upon receipt of the Complainant’s request, the proceedings were formally suspended until January 17, 2013.
No settlement was reached between the parties. On January 14, 2013, the Complainant requested to re-institute the proceedings. On January 15, 2013, the Center confirmed the re-institution of the proceedings and the Response due date was extended to January 31, 2013.
No formal response was filed by the specified due date. Accordingly, on February 1, 2013, the Center informed the parties that it would proceed with the panel appointment. On February 4, 2013, the Center received an email communication stating that the disputed domain name had been successfully transferred to the Complainant. On the same day, the Center requested the Complainant to confirm that it had actual control over the disputed domain name. Upon request of the Complainant, the proceedings were formally suspended on February 5, 2013 until February 11, 2013. Again, no settlement was reached between the parties. The disputed domain name had not been transferred to the Complainant.
The Center appointed Brigitte Joppich as the sole panelist in this matter on February 13, 2013. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant, The Royal Bank of Scotland Group Plc, was founded in 1727 and is one of the oldest banks in the United Kingdom. It was incorporated as a public limited company in the United Kingdom in 1968. The Complainant offers its financial services worldwide under the mark RBS and has spent a significant amount of money promoting and developing this mark.
The Complainant owns numerous trademark registrations for RBS, inter alia United States trademark registration no. 3185538 RBS, registered on December 19, 2006; Community trademark registration no. 4119954 RBS, registered on January 17, 2006; and International trademark registration no. 856518 RBS, registered on September 1, 2005 and designating 29 countries (hereinafter referred to as the “RBS Marks”). The Complainant’s trademarks cover numerous goods and services in international classes 9, 16, 35, 36, 41, and 42. The Complainant also operates numerous websites, e.g. at the domain names (registered in 1994) and (registered in 1995).
The disputed domain name was created on September 27, 2012 and was used to link to a website that included the Complainant’s logo and pictures of credit cards issued by the Complainant. It was also used to carry out phishing attack, as evidenced by annexes to the Complaint.
On October 1, 2012, the Complainant sent a cease and desist letter concerning the disputed domain name to the Respondent requesting, inter alia, the transfer of the disputed domain name. The Respondent did not reply to the cease and desist letter. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the world famous RBS Marks, as the dominant part of the disputed domain name comprises the term “rbs”, while the addition of the suffixes “online” and “gps” is irrelevant and does not have any impact on the overall impression of the dominant part of the name, RBS, instantly recognizable as a world famous trademark.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as it has no registered trademarks or trade names corresponding to the disputed domain name, as nothing suggests that the Respondent uses RBS in any other way that would confer legitimate rights in the name on the Respondent, as no license or authorization to use the RBS Marks of any other kind has been granted by the Complainant to the Respondent, as the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of such domain name, and as the Respondent’s use of the disputed domain name included an attempt to “phish” for financial information in order to defraud the Complainant’s customers, which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to the Policy.
(3) The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant states that the Respondent used the disputed domain name to engage in a phishing scam and therefore to deceive the Complainant’s customers and to manipulate them into divulging sensitive financial information, which constitutes bad faith registration and use under the Policy. It further states that the Complainant’s RBS Marks are famous worldwide and that it is obvious that the Respondent was aware at the moment of the registration of the disputed domain name of the Complainant’s rights in the trademark and the value of said trademark. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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 fully incorporates the Complainant’s highly distinctive and well established RBS Marks.
The additional terms “i”, “online” and “gps” do not hinder a finding of confusing similarity. Firstly, the term “gps” refers to the Complainant’s own online solution enabling its customers to manage their cash flow and to access timely and detailed account information. Such term is therefore not qualified to distinguish the disputed domain name from the Complainant’s RBS Marks. Secondly, the additional terms “i” and “online” are merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of generic terms, such as “i” or “online” (cf. Broadcom Corporation v. Copitraxx Ltda, NAF Claim No. 250029 ( et al.); Apple Corps Limited v. Gods-D, NAF Claim No. 98464 ( et al.); Sanofi-Aventis v. Abadaba S.A.,WIPO Case No. D2006-1611 ( et al.); The Royal Bank of Scotland Group Plc v. Zeremina Inc,WIPO Case No. D2012-2364 (); The Royal Bank of Scotland Group plc v. Dhenica Reyes,WIPO Case No. D2012-1727 (); The Royal Bank of Scotland Group plc v. James Milner,WIPO Case No. D2012-1724 ()).
Furthermore, it is well established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Respondent’s use of the disputed domain name was not bona fide under the Policy. The Respondent used the disputed domain name in connection with a phishing activity. Such use does not constitute rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s 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 its 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 respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge, and the intent to capitalize on the fame, of the Complainant and thus in bad faith under paragraph 4(a)(iii) of the Policy. The mark RBS is highly distinctive and has been used by the Complainant in connection with its services for many decades. Given that the Respondent registered the disputed domain name to use it in connection with a website that included the Complainant’s logo and pictures of credit cards issued by the Complainant and to carry out phishing attacks, it is almost inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant.
As to bad faith use, the Panel finds that the disputed domain name was used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainant’s trademark for financial gain by creating a website that included the Complainant’s logo and pictures of credit cards issued by the Complainant with the likely purpose of collecting the data of people reaching such website (so-called “phishing”, cf. Hemmings Motor News Inc. v. Giacomo Pegorari,WIPO Case No. D2012-1807; Confédération Nationale du Crédit Mutuel v. Nicolas Pete,WIPO Case No. DBZ2009-0001; Banca Intesa S.p.A. v. Moshe Tal,WIPO Case No. D2006-0228; Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa,WIPO Case No. D2006-0614; Australia and New Zealand Banking Group Limited v. Bashar Ltd,WIPO Case No. D2007-0031; Confédération Nationale du Crédit Mutuel and Crédit Industriel et Commercial S.A. v. Trabaja Jayam, Zeb Fi Tarmatek,WIPO Case No. DLC2009-0002).
Therefore, the Panel finds that the Respondent has also been using the disputed domain name in bad faith, and the Complainant has thus satisfied the requirements of paragraph 4(a)(iii) of the Policy 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.
Brigitte Joppich
Sole Panelist
Date: February 24, 2013
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