The Complainant is the Royal Bank of Scotland Group, Plc. of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Remond Bestor of Lagos, Nigeria. 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 April 9, 2014. On April 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2014, 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 April 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed William R. Towns as the sole panelist in this matter on May 21, 2014. 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 a well-established bank in the UK and the owner of the RBS trademark. The Complainant for many years has used the RBS mark internationally with respect to financial and banking services. The Complainant owns registrations for RBS and RBS-composite marks in a wide number of countries around the world, including the UK, the United States of America, Egypt, China, South Africa, Columbia, Israel, and Switzerland. The Complainant also is the owner of a sizeable number of domain names comprised of or including the RBS mark, used by the Complainant to promote its financial services, including online banking.
The Respondent registered the disputed domain name on December 10, 2013. Prior to the filing of the instant Complaint, the disputed domain name resolved to a website bearing a strong resemblance to the Complainant’s official websites – in all likelihood a phishing site designed to solicit account information from unsuspecting bank customers. The Complainant upon learning of this dispatched a cease and desist letter to the Respondent, and followed with several reminders. The Respondent remained silent in the face of these communications, although the Panel notes the disputed domain name no longer resolves to an active website. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is one of the oldest banks in the UK, founded in Edinburgh by Royal Charter in 1727, and incorporated as a public limited company in the UK in 1968. The Complainant submits that it offers financial services worldwide under the RBS mark, and owns an international portfolio of registered trademarks for RBS and RBS-composite marks. According to the Complainant the RBS mark enjoys substantial inherent and acquired distinctiveness, and has acquired the stature of a well-known mark within the meaning of Article 6bis of the Paris Convention, as extended by Articles 16.2 and 16.3 of TRIPS.
The Complainant maintains that the disputed domain name is confusingly similar to its RBS mark. According to the Complainant, “RBS” is the dominant part of the disputed domain name, and the additions of the generic prefix “online” and suffix “logon” do not overcome the confusing similarity arising from the incorporation of the RBS mark in the disputed domain name. Further, given that the Complainant engages extensively in online banking, the Complainant urges that Internet consumers are likely to be left with the misleading impression that the disputed domain name belongs to the Complainant. In addition, the Complainant argues that the Respondent’s use of the disputed domain name with a phishing site indicates that the Respondent plainly recognized the confusing similarity between the Complainant’s RBS mark and the disputed domain name.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant explains that it has found no trademarks or trade names registered to the Respondent that correspond to the disputed domain name, that the Respondent has not in any manner been licensed or authorized to use the Complainant’s RBS mark, and that the Respondent has not been commonly known by the disputed domain name. According to the Complainant, it is clear that the Respondent knew of the Complainant’s rights in the RBS mark when registering the disputed domain name, and that the Respondent has used the disputed domain name to pass itself off as the Complainant, operating a “phishing” website in order to fraudulently acquire financial information from the Complainant’s customers. The Complainant urges that the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use within the contemplation of the Policy.
In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain in bad faith to exploit and profit from the considerable value and goodwill of the Complainant’s well-known RBS mark, to the injury of both the Complainant and the Complainant’s customers. The Complainant urges that the Respondent is using the disputed domain name to engage in a phishing scam with the intent to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information. While acknowledging that the Respondent’s website is currently inactive, the Complainant submits that in the circumstances at hand the Respondent’s passive holding of the disputed domain name still constitutes an act of bad faith, as any realistic use of the disputed domain name by the Respondent would constitute passing off and/or trademark infringement, citing The Royal Bank of Scotland Group Plc v. Zeremina Inc,WIPO Case No. D2012-2364 and Koç Holding A.S. v. KEEP B.T.,WIPO Case No. D2009-0938. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s RBS mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant’s mark in its entirety. The addition of the common prefix “online” and suffix “logon” in the Panel’s view does not dispel the confusing similarity of the disputed domain name to the Complainant’s mark, particularly given that the Complainant uses the RBS mark with online banking services.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s RBS mark. The disputed domain name, however, incorporates the Complainant’s mark in its entirety, and the Respondent has used the disputed domain name to divert Internet consumers to what by all appearances is a phishing site.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he 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 consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is apparent that the Respondent was aware of the Complainant’s RBS mark when registering the disputed domain name. The Panel considers it a reasonable inference from the record that the Respondent registered the disputed domain name to exploit and profit from the goodwill and reputation of the Complainant’s RBS mark. The Respondent, without the Complainant’s authorization, registered a domain name incorporating the Complainant’ distinctive and well-known RBS mark, which the record reflects the Respondent has used in furtherance of a fraudulent scheme directed at the Complainant’s online banking customers. Internet users could easily believe the website to which the disputed domain name resolves belongs to the Complainant.
Having regard to all of the relevant circumstances in this case, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant have satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’ 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 examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the Panel’s assessment, the Respondent plainly was aware of the Complainant’s RBS mark when registering the disputed domain name. In the absence of any explanation from the Respondent, the Panel concludes from the record that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’ RBS mark, with the intent to profit therefrom. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
That the Respondent now appears to be passively holding the disputed domain does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Considerations that supported a finding of bad faith in Telstra Corporation Limited v. Nuclear Marshmallows, supra, are present in this case as well. The Complainant’s mark is distinctive and well-known, and is not susceptible to use in a generic sense. As in Telstra Corporation Limited v. Nuclear Marshmallows, supra, there is no evidence of any actual good faith use of the disputed domain name by the Respondent, or of any demonstrable preparations to make a good faith use of the disputed domain name.
Accordingly, the Panel finds that the Complainant have satisfied the requirements of paragraph 4(a)(iii) 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.
William R. Towns
Sole Panelist
Date: June 4, 2014
1 See “WIPO Overview of WIPO Panel Views and Selected UDRP Questions, Second Edition” (WIPO Overview 2.0, paragraph 1.2.).
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