The Complainant is The Royal Bank of Scotland Group Plc of Edinburgh, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is ooktri plc of United States of America; Domain ID Shield Service CO., Limited of Hong Kong, China. 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 was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2013. On July 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2013, 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 July 12, 2013 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 July 14, 2013.
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 July 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 19, 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 is one of the oldest banks in the United Kingdom, having been incorporated in Scotland in 1727. It is the owner of the RBS trademark used in connection with the offering of its financial services worldwide.
Among several registrations for the RBS trademark are the ones obtained before the United States Patent and Trademark Office (USPTO) under numbers 3529700, 2185538 and 3198052 (Annexes 6-8 to the Complaint).
The Complainant also operates the and domain names, respectively registered in 1994 and 1995. 5. Parties’ Contentions A. Complainant
According to the Complainant the disputed domain name is confusingly similar to its world famous RBS trademark since the suffixes “cot” and “intl” added to it do not detract the overall impression left by the Complainant’s famous trademark.
The fame of Complainant’s trademark has been confirmed in numerous previous UDRP decisions such as 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 v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093; and The Royal Bank of Scotland Group plc v. Domain Whois Protection Service / zhu jinxiong, WIPO Case No. D2012-2094, having the panel in The Royal Bank of Scotland Group Plc v. Mike Steinbock, WIPO Case No. D2013-0121 stated that “[t]he 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”.
Furthermore the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
a) the Respondent does not hold any registered trademark or trade name corresponding to the disputed domain name;
b) the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to register and use the RBS trademark in the disputed domain name;
c) the disputed domain name was used in a fraudulent scheme to defraud Complainant’s customers in a phishing scam (Annex 12 to the Complaint), what clearly does not qualify as a bona fide offering of goods or services.
As to the registration of the disputed domain name in bad faith the Complainant asserts that it is implausible that the Respondent would be unaware of the Complainant at the time of registration of the disputed domain name given the fame of its RBS trademark.
Moreover, a warning letter advising of the unauthorized use of Complainant’s rights and requesting the voluntary transfer of the disputed domain name was sent to the Respondent with no reply. A reminder was also sent, not being replied to as well (Annex 11 to the Complaint).
Lastly, in spite of the current absence of an active website resolving to the disputed domain name such conduct can be found as an act of bad faith since the Respondent can initiate further fraudulent scams as long as the disputed domain name lies in its hands.
Therefore Complainant believes that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain but is rather misleadingly diverting consumers for its own benefit. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established its rights in the RBS trademark.
In this Panel’s view the suffixes “cot” and “intl” added to the Complainant’s famous RBS trademark in the disputed domain name are not sufficient to avoid a risk of undue association by the Complainant’s customers or Internet users in general since “cot” can be read in conjunction with the “s” which immediately leads to Scotland and “intl” is commonly used as an abbreviation for international. Given the Scottish origin of the Complainant and its international range of business it is very likely that Internet users might associate the disputed domain name with the Complainant.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired 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 Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that no authorization, license, permission or consent was granted for the use of RBS trademark in the disputed domain name.
Also, the absence of any indication that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, further demonstrate the absence of rights or legitimate interests in the disputed domain name.
According to the evidence submitted by the Complainant (Annex 12 to the Complaint) the Respondent used the disputed domain name in a phishing scam seeking to mislead Internet users for commercial gain by profiting from the confusing similarity between the disputed domain name and the Complainant’s mark. The Panel finds that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the use of the disputed domain name in connection with a phishing scheme with the intention of defrauding consumers into revealing personal and proprietary information.
The above in this Panel’s view constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s famous trademark and therefore evidences bad faith.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 name, , be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 29, 2013
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