The Complainant is The Royal Bank of Scotland Group Plc of Scotland, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Mike Steinbock, of Templeton, 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 January 18, 2013. On January 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2013, 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.
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 January 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2013.
The Center appointed Leon Trakman as the sole panelist in this matter on February 25, 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 the Rules, paragraph 7. 4. Factual Background
The 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. The Complainant offers financial services worldwide under its various trademarks, all having in common the first letter of its name “RBS” (Royal Bank of Scotland). Among these trademarks is a US trademark registration No. 3185538, dated October 3, 2006. The Complainant also operates websites at domain names such as , registered in1994 and , registered in 1995.
According to the Registrar’s WhoIs database, the Respondent in this administrative proceeding is, Mike Steinbock, of Templeton, California. 5. Parties’ Contentions A Complainant
The Complainant alleges, firstly, that the disputed domain name is identical or confusingly similar to the Complainant’s trademark under the Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1). Secondly, the Respondent has no rights or legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2). Thirdly, the Respondent registered and used the disputed domain name in bad faith, contrary to Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is identical to the core component in the Complainant’s mark, namely, RBS. That confusion is accentuated by the fact that the name RBS is widely known internationally and associated with the Complainant and which it seeks now to protect.
The addition of the suffixes “online” and “uk” does not detract from such confusion. Given that the Complainant engages extensively in online banking particularly in the UK market, the combination of “online” and “uk” add to that confusion by giving the impression that the disputed domain name belongs to the Complainant. In fact, the Respondent has no affiliation with the Complainant. The Respondent also does not have permission from the Complainant to use the Complainant’s name.
Nor does the Respondent’s use of the generic top-level domain (gTLD) “com” render the disputed domain name distinctive. The fact that the Respondent uses generic prefixes and suffixes that differ from the Complainant’s mark does not impede the Panel from holding that the disputed domain name is confusingly similar to the Complainant’s mark. Indeed, the The suffixes in the disputed domain name do not detract from the overall impression, but strengthen the impression that the Respondent, in using that name, is affiliated with the Complainant. See, for example, Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488.
Accordingly, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, RBS. B. Rights or Legitimate Interests
The mere registration of a domain name does not give the owner a right or legitimate interest in the domain name. Evidence is needed to establish that the Respondent has a right or legitimate interest in a domain name. No such evidence is present in this case. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests. The Respondent does not have any registered trademarks or trade names associated with the disputed domain name. The Respondent is not an authorized dealer of the Complainant. The Respondent does not have any license or other authorization from the Complainant. Indeed, the Respondent has never had a business relationship with the Complainant. As the panel held in Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc.,WIPO Case No. D2001-1314, “[G]iven the notoriety of the Complainant's Deutsche Bank Mark, any use which the Respondent would make of any domain name, as here, that incorporated the Complainant's Deutsche Bank Mark, or one confusingly similar thereto, would likely violate the exclusive trademark rights which the Complainant has long held in its mark".. The same reasoning applies in the instant case. Given the widely known mark of the Complainant, RBS, the Respondent’s use of the confusingly similar disputed domain name adds credence to the determination that the Respondent has no rights or legitimate interests in the disputed domain name.
Insofar as the Respondent intended to use its website to “phish” for financial information from the Complainant’s customers, such action is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy. The conduct of a Respondent who exploits “the [Complainant’s] goodwill and consumer trust to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name.” See Vivendi Universal Games v Ballard, NAF Claim No. 146621. The same reasoning applies in the instant case. It is reasonable to conclude that the Respondent intended to use the disputed domain name to redirect the Complainant’s customers, or aspirant customers, to the Respondent’s website in order to capitalize on the Complainant’s goodwill and reputation for the Respondent’s financial gain and at the Complainant’s expense. C. Registered and Used in Bad Faith
The Respondent has registered and is using the disputed domain name in bad faith. The Panel finds that the Respondent knew of the Complainant’s trademark at the time it registered the disputed domain name, given the Complainant’s long-standing and internationally recognized use of its trademark. The Panel also concludes that the Respondent registered the disputed domain name precisely in order to capitalize, in bad faith, upon the Complainant’s name and reputation, intending to pass itself off as the Complainant by directing the Complainant’s customers or prospective customers, to the Respondent’s website.
The Respondent’s bad faith is further evidenced in the intention to deceive Internet users into divulging sensitive financial information to the Respondent in their reasonable belief that they are disclosing such information to the Complainant, not to a wholly unauthorized third party, namely, the Respondent. This Panel cites in support the reasoning used in Juno Online Servs., Inc. v. Iza, NAF Claim No. 245960. A respondent is in bad faith in using a domain name to “redirect…Internet users to a website that imitates [c]omplainant’s billing website and is used to fraudulently acquire personal information from [c]omplainant’s clients.”
Additional evidence of the Respondent’s bad faith use includes the Respondent’s failure to reply to the Complainant’s “cease and desist” letter sent to the Respondent on December 4, 2012 in which the Complainant advised the Respondent of the unauthorized use of the name, and requested its voluntary transfer of the disputed domain name to the Complainant. See further News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
Finally, the fact that the website to which the disputed domain name directs Internet users is not currently in use does not detract from the Respondent’s bad faith. “[T]here is no evidence or suggestion that the Respondent has any intention of using the domain name for any purpose or legitimate activity consistent with good faith use.” See Koç Holding A.S. v. KEEP B.T,WIPO Case No. D2009-0938
Had the Respondent disclosed on its website that its “services” were unrelated to that of the Complainant, it could have been a factor in establishing that the Respondent had not used the disputed domain name in bad faith. However, the disclosure on the website by itself is insufficient to allay the reasonable inference that the Respondent used the disputed domain name that was confusingly similar to the Complainant’s mark.
Accordingly, the Panel holds that the Respondent’s registration of the disputed domain name was in bad faith, and that the disputed domain name is being used 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.
Leon Trakman
Sole Panelist
Date: March 4, 2013
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