The Complainant is The Royal Bank of Scotland Group Plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is STEV INT of Hermosa Beach, California, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom eNom (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 names. On July 10, 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 July 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2013.
The Center appointed Fleur Hinton 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 commenced pursuant to Royal Charter in Edinburgh in 1727. It became a public limited company (“PLC”) in 1968. The Complainant offers its financial services worldwide and has many trade mark registrations and a large portfolio of domain names including many incorporating “rbs”. The domain name has been registered since 1994 and since 1995.
The disputed domain names were registered in 2013. 5. Parties’ Contentions A. Complainant
The Complainant argues that the fact that the trade mark RBS is so well known makes it a mark entitled to protection under Article 6bis of the Paris Convention so that all use of such a trade mark in relation to any goods or services whatsoever may be prevented by the owner.1
The Complainant argues that the disputed domain names are confusingly similar to its trademark RBS. In addition, it argues that when such a well-known mark is used together with a generic expression, such as “calculator” or “loan”, the generic expression does not suffice to prevent a finding of confusingly similarity.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names. It has not been authorized by the Complainant to use the RBS name and it has never had a business relationship with the Complainant. Further, it argues, the Respondent has used them to run a phishing scam knowing that the trade mark RBS is owned by the Complainant. It further says that the mere fact of registering a domain name does not give the registrant rights to the use of that domain name.
The Complainant submits that the disputed domain names were registered and have been used in bad faith. The Complainant says that the registration of so wellknown a trade mark is in itself evidence of bad faith. The Complainant also sent the Respondent a cease and desist letter on May 13, 2013, stating that the Respondent was infringing its trade mark rights by having registered the trade mark as a domain names. The Complainant requested the voluntary transfer of the disputed domain names. Despite the fact that the Complainant sent a reminder, it did not receive any response from the Respondent. In addition, the fact that the Respondent has used the disputed domain names to run phishing scams is of itself a sign that they were being used in bad faith. It seems obvious that the Respondent was relying on the Complainant’s fame and reputation in its RBS trade mark to persuade web browsers to divulge their confidential details to the Respondent through the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the remedy requested, the Complainant must satisfy the Panel that the criteria required by the UDRP have been met. These criteria are that:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names and are confusingly similar to the trade mark RBS registered in many countries by the Complainant and recognized as a well-known trade mark. This confusing similarity is in no way undermined by the addition of the generic terms “loan”, “calculator” or “calculation”. Many panels have held that the addition of a generic term to a domain name incorporating a trade mark will not suffice to make it distinguishable from that trade mark. Indeed, where the generic term is relevant to the goods and/or services offered by the owner of the well-known trade mark, such a term makes it even more likely that the disputed domain name will cause confusion since the generic term is something which people are likely to connect with the trade mark part of the domain name.
Moreover, the reputation enjoyed by the Complainant’s trade mark and the nature of the generic terms used here adds to the likelihood that people visiting a website using either of these disputed domain names will cause them to think that the websites are run by the Complainant.
The Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trade mark. B. Rights or Legitimate Interests
In the present case situations in which the Respondent could have rights or legitimate interests in the disputed domain names could be if the Respondent had authorization or a licence from the Complainant to use the disputed domain names or if the trade mark RBS were in some way connected to the Respondent. From the available record, the Panel notes, that the Respondent has not received any sort of licence or authorization from the Complainant. The second situation could occur if, for example, the Respondent had the initials “RBS” or was commonly known to run a business or some other organization by reference to the letters “RBS”.
In addition, the fact that the Respondent has used the disputed domain names as a crucial part of what the Complainant calls a phishing scam is of itself heavily indicative that it does not have rights or legitimate interests in the disputed domain names.
It is necessary that the Complainant establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. This the Complainant has done in the present case. The onus then shifts to the Respondent to lodge evidence and argument that it does have rights or legitimate interests in the disputed domain names. In this case the Respondent has not done so. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.1.
Therefore the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Complainant claims that the disputed domain names have been registered and are being used in bad faith. Typically, a domain name, which incorporates a complainant’s trade mark, is registered in bad faith when it is confusingly similar to the trade mark of the complainant and where the respondent has no rights or legitimate interests in it. The Panel finds that the Respondent registered the disputed domain name in bad faith.
The disputed domain names are not presently being used by the Respondent. Passive holding of a domain name does not, as such, prevent a finding of bad faith use. In the circumstances of this case, the Panel finds that passive holding of the disputed domain names amounts to bad faith use. When the disputed domain names were being used, they were used as part of a scam designed to persuade web browsers to give to the Respondent confidential information and, in some cases, money. This is evidence of use in bad faith.
Under these circumstances the Panel finds that the disputed domain names were registered and used in bad faith by the Respondent. 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.
Fleur Hinton
Sole Panelist
Date: September 2, 2013
1 This article states that the rights of the owner of a well-known trade mark (within the meaning of the article) will be protected. However, whilst that is true of course, it is not one of the grounds upon which the Policy applicable in these proceedings allows a domain name to be cancelled or transferred upon application by the Complainant.
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