Complainant is The Royal Bank of Scotland Group plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Domain Admin, CSTIT of Victoria, Australia. 2. The Domain Names and Registrar
The Disputed Domain Names , , , and are registered with R Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2016. On May 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 20, 2016.
The Center appointed Michael A. Albert as the sole panelist in this matter on June 23, 2016. 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
Founded in 1727, Complainant is one of the oldest banks in the United Kingdom. Since its founding, Complainant has grown to be one of the top United Kingdom banks. Complainant is the owner of trademark registrations for the NWOLB mark in the United Kingdom (Reg. No. 2438953, Filing Date November 20, 2006) and in the European Union (EUTM Reg. No. 014352661, Filing Date July 9, 2015). Complainant operates its website at the domain name (registered in 1999), through which Complainant provides its customers with online banking services.
Respondent registered the Disputed Domain Names with the Registrar: (registered on March 30, 2016), (registered on April 1, 2016), (registered on March 31, 2016), and (registered on March 30, 2016). The Disputed Domain Names , and previously resolved to host websites that replicated the design of Complainant's "www." website. Currently, these Disputed Domain Names redirect Internet users to websites featuring links to third-party websites, some of which directly compete with Complainant's business. The fourth Disputed Domain Name, , resolved to a website featuring third-party links since its date of registration.
Complainant sent Respondent two cease-and-desist letters (the first on April 11, 2016) regarding the Disputed Domain Names. Respondent did not offer a response. 5. Parties' Contentions A. Complainant
Complainant contends that the granting of the NWOLB trademark registrations by the United Kingdom Intellectual Property Office (IPO) and the European Intellectual Property Office (EUIPO) is prima facie evidence of the validity of the NWOLB trademarks, of Complainant's ownership of this trademark, and of Complainant's exclusive right to use the NWOLB trademark in commerce on or in connection with the goods and/or services specified in the registration certificates. Moreover, Complainant contends that the NWOLB mark is a highly distinctive trademark and that awareness of the NWOLB trademark is widespread within the banking industry in, at least, the United Kingdom.
As to the first element of the Policy (confusing similarity), Complainant contends that the Disputed Domain Names are confusingly similar to Complainant's trademark because the Disputed Domain Names incorporate the NWOLB mark in its entirety. Complainant further contends that in creating the Disputed Domain Names, Respondent has added common typographical errors of generic or descriptive terms such as "customer", "support" and "help" to the end of Complainant's NWOLB trademark. Because these generic terms closely relate to Complainant's business, Complainant contends that the Disputed Domain Names are confusingly similar to Complainant's trademark. Finally, Complainant contends that this obvious misspelling of generic terms in combination with Respondent's previous use of Disputed Domain Names to display websites essentially identical in design, color scheme, pictures, and text to Complainant's website is likewise confusingly similar to Complainant's trademark.
As to the second element of the Policy (no rights in the disputed domain name), Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names because the pertinent WhoIs information identifies the registrant of the Disputed Domain Names as "Domain Admin, CSTIT". Complainant contends that this WhoIs information does not resemble the Disputed Domain Names in any manner, and therefore, Respondent is not commonly known by the Disputed Domain Names. In addition, Complainant contends that the Disputed Domain Names' websites (in this case, the three active websites) previously resolved to exact replicas of Complainant's "www." website and that Respondent's purpose was to deceive Internet users into believing that those Disputed Domain Names – and their websites – were associated with the Complainant and its NWOLB mark. Complainant contends that these websites now feature links to third-party websites, some of which directly compete with Complainant's business. Finally, Complainant asserts that it has not licensed or otherwise authorized Respondent's use of the NWOLB mark in any form, including domain names. Accordingly, Complainant contends that there is no evidence that Respondent has used or intends to use the Disputed Domain Names in connection with a bona fide offering of goods or services or any other legitimate use or interest.
As to the third element of the Policy (bad faith), Complainant asserts that Respondent's conduct indicates that the registration and use of the Disputed Domain Names was in bad faith. Complainant alleges that Respondent had actual knowledge of Complainant's mark because the Disputed Domain Names are confusingly similar to Complainant's trademark and because the Disputed Domain Names , and previously resolved to websites that were replicas of Complainant's "www." website. These replicas included Complainant's NWOLB trademark and logo. Complainant also alleges that Respondent used the Disputed Domain Names to mislead consumers and to capitalize on the fame and goodwill of Complainant's trademarks in order to increase traffic to the Disputed Domain Names' websites for Respondent's own pecuniary gain and to "phish" for personal information from Complainants' customers. Therefore, Complainant concludes that Respondent's use of the Disputed Domain Names does not constitute a use in connection with a bona fide offering of goods or services or any other legitimate use or interest. Complainant notes that Respondent has not responded to its cease-and-desist letters (the first sent on April 11, 2016). B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
"(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith."
Respondent provided no Response, and the deadline for doing so expired on June 19, 2016. Accordingly, Respondent is in default. Given Respondent's default, the Panel can infer that Complainant's allegations are true where appropriate to do so. See Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.
The Panel finds that Complainant has met each of the elements required by the Policy. In particular, the Disputed Domain Names are confusingly similar to Complainant's marks, Respondent has no rights or legitimate interests in the Disputed Domain Names, and Respondent registered and is using the Disputed Domain Names in bad faith. A. Identical or Confusingly Similar
Complainant's rights in its NWOLB mark are evidenced by its registrations with the United Kingdom Intellectual Property Office (IPO) and the European Intellectual Property Office (EUIPO) and in its continued use of its mark. The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), at paragraph 1.1: "If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark".1
The Panel next turns to whether the Disputed Domain Names are confusingly similar to Complainant's NWOLB mark for purposes of paragraph 4(a)(i) of the Policy. Domain names that include complainant's mark with insignificant alterations and/or generic terms have been found confusingly similar by panels in previous cases under the Policy. See, e.g., Heartland Payment Systems v. Purple Bucquet,WIPO Case No. D2010-0722 (finding that a disputed domain name that adds one letter to the complainant's mark is confusingly similar because "an unsuspecting consumer would find the disputed domain name visually and phonetically similar and almost identical to the complainant's mark); Abbott Laboratories v. United Worldwide Express Co., Ltd.,WIPO Case No. D2004-0088 (noting that panels routinely hold that the addition of a generic term to a mark in a domain name does not distinguish the domain name from that mark); Dr. Ing. h.c.F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888 (finding that the descriptive term "autoparts" added to the "Porsche" trademark added "confusion by leading users to believe that the Complainant operate[d] the website associated with the disputed domain name"); Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo,WIPO Case No. D2003-0707 (finding that the deliberate misspelling of a mark fails to distinguish a disputed domain name from a complainant's mark); Rollerblade, Inc. v. McCrady,WIPO Case No. D2000-0429 (finding that the Top-Level Domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). In addition, the Respondent's use of the Disputed Domain Names may, in certain circumstances, be relevant in this consideration. See, e.g., National Westminster Bank plc v. Babalola, Awokoya,WIPO Case No. D2012 1737 (finding that the respondent's use of the domain names to display websites identical or substantially and confusingly similar to complainant's website indicates to the panel that respondent viewed the disputed domain names to be confusingly similar to complainant's trademark).
Here, the Disputed Domain Names differ from Complainant's NWOLB mark only in the above regards. The Disputed Domain Names differ from Complainant's mark by (1) the addition of an "s" at the end of Complainant's mark, (2) the addition of generic terms (e.g., "customer help" and "customer support") or misspelled versions of generic terms (e.g., "customer suports" and "customer helps") following the "s," and (3) the addition of ".com" following the generic terms. Nonetheless, the Disputed Domain Names incorporate Complainant's mark in its entirety. Moreover, Respondent has not refuted Complainant's contention that the additional generic terms heighten confusion by referring to activities that closely relate to and describe Complainant's business. Finally, Respondent's use of slightly misspelled versions of generic terms in two of the Disputed Domain Names and Respondent's use of three of the Disputed Domain Names to display websites essentially identical in design, color scheme, pictures, and text to Complainant's website both indicate that Respondent viewed the Disputed Domain Names to be confusingly similar to Complainant's trademark.
Respondent does not rebut the above showing or make any contrary claim or assertion. Consequently, the Panel finds the Disputed Domain Names confusingly similar to Complainant's NWOLB mark in which Complainant has rights. The first condition of paragraph 4(a) is, therefore, satisfied. B. Rights or Legitimate Interests
The Panel next turns to whether Respondent has no rights or legitimate interests in the Disputed Domain Names for purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy provides that:
"[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
As discussed further below, the Panel considers that (1) Respondent did not use – and currently does not use – the Disputed Domain Names for a bona fide offering of goods or services as defined by the Policy; (2) Respondent is not commonly known by the Disputed Domain Names; and (3) Respondent used the Disputed Domain Names to misleadingly divert Complainant's customers.
Three of the Disputed Domain Names previously resolved to replicas of Complainant's "www." website. These websites now feature links to third-party websites, some of which directly compete with Complainant's business. Moreover, at the time these Disputed Domain Names were registered, Respondent had actual knowledge of Complainant's trademark, as evidenced by the inclusion of the NWOLB trademark and logo in Respondent's replica websites. See, e.g., Raymond Weil SA v. Watchesplanet (M) Sdn Bhd,WIPO Case No. D2001-0601 ("[A]t the time of the registration of the Domain Name, the Respondent was fully aware of the Complainant's trademark. The Panel, therefore, finds that the Respondent selected and used the Domain Name solely in order to attract internet users to its website by trading on the fame of the Complainant's trademark. This does not constitute a 'bona fide' offering of goods"). Similarly, while the fourth Disputed Domain Name always apparently resolved to a website linking to third-party websites, Respondent has not offered any evidence that its purpose was for anything other than that for which the other three were registered. In addition, the WhoIs information identifies the registrant of the Disputed Domain Names as "Domain Admin, CSTIT." This WhoIs information does not resemble the Disputed Domain Names in any manner, and therefore, it appears that Respondent is not commonly known by the Disputed Domain Names.
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use its NWOLB mark in any form. See, e.g., Arcelormittal S.A. v. Ram Mittal,WIPO Case No. D2016-0449 (treating the lack of authorization to use complainant's trademark as prima facie evidence of the absence of respondent's rights or legitimate interests in a disputed domain name).
Consequently, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names for purposes of paragraph 4(a)(ii) of the Policy. The second condition of paragraph 4(a) is, therefore, satisfied. C. Registered and Used in Bad Faith
Finally, the Panel turns to whether or not the Disputed Domain Names have been registered and used in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy provides that:
"the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
[...]
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Complainant's registration of the NWOLB mark can permit in some circumstances an inference that Respondent knew of Complainant's mark prior to registration of the Disputed Domain Name. See, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113 ("[T]he Panel concurs with previous […] UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements"). Here, it can be inferred that Respondent had actual knowledge of Complainant's NWOLB mark because Complainant's mark and logo were included on websites previously resolving from three of the Disputed Domain Names. Currently, these Disputed Domain Names resolve to a website that feature links to third-party websites, some of which directly compete with Complainant's business. The use of the Disputed Domain Names in this manner is evidence of use in bad faith. See, e.g., F. Hoffmann-La Roche AG v. Transure Enterprise Ltd.,WIPO Case No. D2008-0422 (finding use in bad faith where disputed domain name was aimed at attracting Internet traffic associated with complainant's mark for commercial gain). Respondent has not contested Complainant's allegations that Respondent used the Disputed Domain Names to mislead consumers and to capitalize on the fame and goodwill of Complainant's trademarks in order to increase traffic to the Disputed Domain Names' websites for Respondent's own pecuniary gain and to "phish" for personal information from Complainant's customers.
The Panel notes that Respondent ignored Complainant's attempts to resolve this dispute outside of this administrative proceeding. Past panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See, e.g., Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330 (failure to positively respond to a demand letter provides "support for a determination of 'bad faith' registration and use"). Even without this factor, however, the above evidence would suffice.
In conclusion, the Panel finds that Respondent's registration and use of the Disputed Domain Names falls within the meaning of paragraph 4(b)(iv) of the Policy. The final condition of paragraph 4(a) is, therefore, satisfied. 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 Complainant.
Michael A. Albert
Sole Panelist
Date: June 30, 2016
1 Although the WIPO Overview 2.0 is not binding precedent, it embodies a consensus of positions set forth in the opinions of several UDRP panelists. See Fresh Intellectual Properties, Inc. v. 800N, Inc.,WIPO Case No. D2005-0061. The Panel considers it is prudent for panelists to follow such a consensus in order to promote consistency among UDRP decisions. See Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014. See also, Last Minute Network Limited v. Web Domain Names,WIPO Case No. D2007-1161.
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