The Complainants are The Royal Bank of Scotland Group Plc and Ulster Bank Ireland Limited of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland and Dublin, Ireland, United Kingdom of Great Britain and Northern Ireland, respectively, both represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Jagjit Devi of Kuala Lumpur, Malaysia. 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (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 names. On January 19, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain names.
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 William F. Hamilton as the sole panelist in this matter on February 27, 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 Complainants are venerable financial institutions. The Complainant the Royal Bank of Scotland Group Plc traces its roots back to a Royal Charter granted in 1727. The Royal Bank of Scotland Group plc has registered and owns the renown mark RBS and numerous trademarks that incorporate or utilize the RBS brand. The RBS mark, for example, was registered with the United States Patent and Trademark Office in 2006. The Complainant operates the websites and , registered respectively in 1994 and 1995. The co-Complainant, Ulster Bank Ireland Limited is a full owned subsidiary of the Royal Bank of Scotland Group plc. Ulster Bank Ireland Limited was founded in 1836 and became a fully owned subsidiary of the Royal Bank of Scotland Group plc in 2000. The Complainants own an international portfolio of registered marks for RBS and ULSTER BANK and domain names utilizing the RBS and ULSTER BANK marks.
The Respondent registered the disputed domain name on February 3, 2012, and registered the disputed domain name on April 14, 2012. 5. Parties’ Contentions A. Complainant
The Complainants assert that the disputed domain names are confusingly similar to the Complainants’ RBS and ULSTER BANK marks and differ only by the addition of generic suffixes. The Complainants assert that the Respondent was never authorized to use the Complainants’ marks or the disputed domain names and that the Respondent has no rights or legitimate interests in the disputed domain names. Finally, the Complainants assert the Respondent registered and initially used the disputed domain names in bad faith as phishing sites; and now is improperly passively holding the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Multiple Complainants
The Complainants are affiliated. As discussed above, Ulster Bank Ireland Limited is a full owned subsidiary of the Royal Bank of Scotland Group plc. The Panel considers that they have a specific common grievance against the Respondent. In the circumstances, the Panel therefore finds that it is appropriate to proceed to issue a decision in this case. B. Identical or Confusingly Similar
The disputed domain names are confusingly similar to the Complainants’ RBS and ULSTER BANK marks. A long line of UDRP cases hold that the addition of a generic suffixes such as “bk,” “bks,” or “online,” or combinations thereof, to an established trademark or service mark is insufficient to avoid a finding of confusing similarity. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488. The Panel finds that the disputed domain names are confusingly similar to Complainants’ RBS and ULSTER BANK marks.
The Panel concludes that the Complainant has established the first element of the Policy. C. Rights or Legitimate Interests
The Complainants disavow any licensing or business relationship with the Respondent that might constitute an authorization for the Respondent to use the RBS or ULSTER BANK marks or the disputed domain names. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055. The Panel finds that the disputed domain names have been used for the Respondent’s financial gain and not as a parody or for any other noncommercial use. An Internet search fails to disclose any legitimate business that is or could be conducted by the Respondent under the disputed domain names or through use of the Complainants’ marks. The Panel therefore finds that the Complainant has made out a prima facie case here. The Respondent has failed to respond to the Complaint or to demonstrate any rights or legitimate interests in the disputed domain names. The Panel finds that there is no evidence in the Record to rebut the Complainants assertions.
Therefore the Panel finds that the Complainants have sufficiently demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain names and has made out the second element of the Policy. D. Registered and Used in Bad Faith
The exhibits (Complaint Annexes 12A and 12B) provided by the Complainants of the former use of the Respondent’s landing pages at the disputed domain names evidences, in the view of the Panel, an effort by the Respondent to obtain, through artifice and false pretenses confidential banking information of the Complainants’ customers. Google, Inc. v. Robert Takovich,WIPO Case No. DMX2012-0006. That the Respondent’s websites at the disputed domain name is no longer active, and the disputed domain name is now a pay-per-click page, is of no moment as the disputed domain names have previously been used in bad faith and there is no reason to believe that the Respondent may not revert to “phishing” conduct. Indeed the passive holding of the disputed domain name may be considered a form of bad faith use. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), section 3.2.
The Panel finds that the Complainant has established that the disputed domain names were was registered and are being used in bad faith and has established the third element of the Policy. 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 names and be transferred to the Complainant.
William F. Hamilton
Sole Panelist
Date: March 10, 2013
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