Complainant is the Royal Bank of Scotland Group Plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is WhoIsguard Protected, WhoIsguard, inc. of Panama city, Panama / Charles Adenuoye of Ibada, 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 October 6, 2014. On October 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2014, 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 Complainant on October 15, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on the same date.
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 Respondent of the Complaint, and the proceedings commenced on October 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2014. The Center received an informal email communication from Respondent on October 16, 2014. Respondent did not submit any formal Response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on November 7, 2014.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on November 13, 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
Complainant is a company incorporated in Scotland, founded in Edinburgh by Royal Charter in 1727, which consists of one of the UK’s oldest banks and offers its financial services under the RBS trademarks worldwide, having offices in various locations, as for United States of America, Europe, Asia, Africa and the Middle East.
Furthermore, Complainant owns several international trademark registrations for the term “rbs”, such as: UK Registrations No. 2004617 for RBS, since November 23, 1994, No. 2135884 for RBS PAYROLL SOLUTIONS, since June 13, 1994 and No. 2319253 for RBS POST CASH, since December 20, 2002, as per Annex 6.1 of the Complaint.
Complainant is the owner of other domain names as well, for instance, the domain names , registered in 1994, registered in 1995 and , registered in 2001.
The disputed domain name was registered by Respondent on July 31, 2014. 5. Parties’ Contentions A. Complainant
Complainant claims that it is the legitimate owner of the RBS trademark and of all other trademarks used in connection with this brand.
Complainant states that the dominant part of the disputed domain name comprises the term “rbs”, which is identical to the registered trademarks RBS, owned by Complainant worldwide (Annexes 6 and 8 of the Complaint).
Complainant also holds that the mere addition of the suffixes “avings” and “account” does not stray the similarity between the disputed domain name and the RBS trademark, which Complainant alleges to be instantly recognizable as a famous trademark.
Moreover, Complainant invokes previous decision Dr. Ing. h.c F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, which stated that it is a long established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kind of generic and non-distinctive prefixes and suffixes.
Complainant further argues that the term “avings account” is presumably a misspelling of “savings account”, and, in combination with the RBS trademark, reads “savings account”. Therefore, Complainant claims that the addition of the above mentioned term only contributes to strengthen the impression that there is an association with Complainant’s services and activities.
Additionally, Complainant contends that the term “rbs” corresponds to the distinctive element of the disputed domain name. In this sense, Complainant affirms that the terms “avings” and “account” are not likely to avoid confusion between the disputed domain name and the RBS trademarks, owned by Complainant.
Complainant also refers to several previous UDRP decisions: The Royal Bank of Scotland Group plc v. Immortal Ken,WIPO Case No. D2013-1564; The Royal Bank of Scotland Group Plc v. Li Qiang,WIPO Case No. D2013-2180; The Royal Bank of Scotland Group Plc v. rbseb,WIPO Case No. D2013-0735; The Royal Bank of Scotland Group Plc v. Mike Steinbock,WIPO Case No. D2013-0121 and The Royal Bank of Scotland Group Plc v. Samuel J Tummino,WIPO Case No. D2013-1232.
Complainant also claims that the disputed domain name is confusingly similar to its registered trademark RBS and that considering the reputation of the mentioned brand there is an imminent risk that consumers will be misguided into believing that the disputed domain name is in fact owned by Complainant.
Complainant concludes, therefore, that the use made by Respondent of the disputed domain name abuses the goodwill and image of the RBS trademark and may result in its dilution and cause other damages.
Complainant states that it has not found that Respondent has any registered trademarks corresponding to the disputed domain name. Moreover, Complainant alleges that no trading agreement, license or authorization of any other kind has ever been discussed between Respondent and Complainant.
Additionally, Complainant asserts that there was never a disclaimer on the website describing the non-existent relationship between Complainant and Respondent.
According to Complainant, what also proves that Respondent does not have legitimate interests in the disputed domain name is the fact that Respondent knew of Complainant’s rights to the name RBS at the time of registration of the disputed domain name, being also presumable that the fame of the referred trademark may have motivated Respondent to register the disputed domain name in the first place.
Moreover, as Complainant states through Annex 10 of the Complaint, Respondent has used the disputed domain name to pass itself as Complainant, in order to “phish” financial information in an attempt to defraud Complainant’s customers.
Complainant points out that it first tried to contact Respondent on September 21, 2014, through a cease and desist letter (Annex 15 of the Complaint), informing about Complainant’s rights over the RBS trademark. Respondent replied, confirming the removal of the contents of the page, however, after Complainant requested the transfer or deletion of the disputed domain name, Respondent no longer replied.
Complainant further claims that, as previously stated, the use of the disputed domain name consists of a phishing scam (as per Annexes 2, 10 and 12 of the Complaint), by using Complainant’s registered trademark in order to deceive Complainant’s customers and misguide them into divulging private financial information.
In addition, Complainant also contends that even though the disputed domain name is currently inactive, passive holding could still constitute an act of bad faith. Therefore, Complainant alleges that Respondent was not making a legitimate noncommercial or fair use without intent for commercial gain, but has been using the disputed domain name to lead Internet users to a fraudulent website, which is a clear evidence of bad-faith. B. Respondent
Respondent did not reply to Complainant’s contentions.
Respondent did, however, write an e-mail to the Center, on October 16, 2014, in the following terms:
“Send me the domain transfer information so I Can initiate the transfer process. You would also be liable to pay the reimbursement as mentioned on the agreement. Thanks.”
Nevertheless, the Panel does not consider said e-mail as an official Response. 6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of several trademark registrations for RBS worldwide and that such trademark is entirely incorporated in the disputed domain name .
The Panel acknowledges that RBS is a well-known trademark for banking and financial services, and believes that adding generic or descriptive terms to an otherwise distinctive and well-known trademark, does not exclude the disputed domain name from being considered confusingly similar to the registered trademark.
In the present case, Respondent added to Complainant’s trademark the generic terms “avings” (or “savings”) and “account”. Therefore, the Panel agrees that the mere addition of the suffixes “avings” and “account” will not prevent a finding of confusingly similarity between the disputed domain name and the RBS trademark, especially considering the words “savings” and “account” are directly connected to banking activities, which is Complainant’s field.
The Panel also concurs that the term “avings account” is presumably a misspelling of “savings account”. Therefore, the addition of the above mentioned terms only contributes to strengthen the impression that there is an association with Complainant’s services and activities, which is not true.
Moreover, the Panel considers that the disputed domain name may create a false association between Complainant and Respondent, misguiding consumers into believing that Respondent’s activities are somehow related to the products and services managed under Complainant’s RBS trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s RBS trademark. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
In this case Complainant has provided sufficient prima facie evidence of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name .
The Panel understands that there is no trademark registered in the name of Respondent bearing the term “rbs”, nor has Complainant entered into any agreement, authorization or license whatsoever with Respondent with respect to the use of the trademark in question.
Accordingly, Complainant established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant’s company and legal rights to the trademark RBS at the time of registration of the disputed domain name, considering its worldwide fame.
The disputed domain name was registered on July 31, 2014, that is, several years after Complainant’s registrations of the trademarks and domain names bearing its RBS trademark. Therefore, considering that Complainant’s trademark is famous and well known at least for financial and banking services, the Panel agrees that Respondent must have been aware of Complainant’s trademark at the time of registration.
The Panel also understands that the fact that Respondent used the famous mark RBS as the major component of the disputed domain name - considering that “savings” and “account” are generic terms, especially in relation to banking activities - in circumstances in which Respondent did not have any rights to the respective trademark, is an indicative of bad faith as well.
Moreover, it is clear to the Panel that the disputed domain name may create false associations between Complainant and Respondent, misleading consumers into believing that the disputed domain name is somehow related to Complainant’s trademark and activities.
In fact, the Panel also considers in this case the use of the disputed domain name for “phishing”, as claimed by Complainant. “Phishing” is a form of Internet fraud often related to banking activities that aims to obtain valuable information of clients, such as credit cards, social security numbers, user IDs, passwords, etc. A fake website is created that is similar to that of a legitimate organization, typically a financial institution such as a bank or insurance company, and this information is used for identity theft and other nefarious activities. In this sense, see Halifax Plc. v. Sontaja Sanduci,WIPO Case No. D2004-0237 and also CareerBuilder LLC v. Stephen Baker,WIPO Case No. D2005-0251. Thereby, the Panel believes that the use of the disputed domain name for “phishing” activities is another indication of Respondent’s bad faith, since such practice could seriously harm Complainant’s clients and also damage Complainant’s reputation.
The Panel also considers in this case the activity of typosquatting, considering that Respondent chose the omission of the “s”, of “rbs” in . By doing so, Respondent was evidently seeking to attract Internet users who mistype or misspell one of Complainant’s domain names to its website. Such registration and use of a misspelled domain name represents the practice of “typosquatting”, which constitutes bad faith. A similar understanding was employed in previous UDPR decisions, such as Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol,WIPO Case No. D2001-0302).
The Panel further notes that at the time of this Decision the disputed domain name is not being currently used with an online website, which can be discussed as “passive holding”, a kind of activity which may in certain circumstances constitute evidence of bad faith use. In this sense, the Panel refers to consensus view expressed in WIPO Overview 2.0, paragraph 3.2:
“3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?”
Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).”
Lastly, the fact that the last page to which the disputed domain name reverted displayed Complainant’s identical composite trademark, with references to banking activities (as per Annex 10 of the Complaint), is also a clear indications of Respondent’s attempt to mislead consumers by causing a false association with Complainant, which certainly constitutes bad faith.
Accordingly, the Panel concludes that the disputed domain name was registered and 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 Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: November 27, 2014
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