Complainant is The Royal Bank of Scotland Group plc, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2020, 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 April 16, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 20, 2020. The Center verified that the Complaint together with the amended 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 April 22, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was May 12, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on May 13, 2020. The Center appointed Ingrida Kariņa-Bērziņa as the sole panelist in this matter on May 21, 2020. 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 financial institution chartered in Edinburgh, Scotland in 1727 and incorporated as a public limited company in the United Kingdom in 1968. It offers banking and financial services in several countries under the mark “RBS” (the “RBS Mark”) and is listed on the London Stock Exchange and the New York Stock Exchange as “RBS.” Complainant operates websites at various domain names including the RBS Mark, such as “www.rbs.com” and www.rbs.co.uk. Complainant is the proprietor of numerous trademark registrations for the RBS Mark, including the following: - European Union Trademark No. 000097469 for RBS (word mark) registered on March 23, 1998 for services in classes 35 and 36; - United Kingdom Trademark No. 00002004617 for RBS (word mark) registered on January 5, 1996 for goods and services in classes 9, 16, 35, 36, and 42; Respondent registered the disputed domain name on March 30, 2020. It currently resolves to a website featuring pay-per-click links to third-party websites including in the banking and Internet sectors. 5. Parties’ Contentions A. Complainant Under the first element, Complainant states that it has invested considerable resources in registering the RBS Mark in various jurisdictions. Complainant maintains a strong Internet presence through various websites including “rbs.co.uk” and “rbs.com”. It has established a website for employees and pensioners at “www.rbspeople.com”, featuring information on benefits. A subdomain, “rbsconnect.rbspeople.com” is used to provide Virtual Private Network remote access to employees and personnel. The disputed domain name consists of Complainant’s RBS Mark together with the generic, descriptive terms “connect” and “people”, along with a second inclusion of Complainant’s RBS Mark. The disputed domain name is a purposeful misspelling of Complainant’s subdomain, as Respondent has removed the full stop between the terms “rbsconnect” and “rbspeople.” This is an example of cybersquatting. The disputed domain name is confusingly similar to both Complainant’s subdomain and to the RBS Mark. Under the second element, Complainant states that its many registrations are evidence of the prima facie of the validity of the term “RBS” as a trademark. Respondent is not sponsored by or affiliated with Complainant, and Complainant has not granted Respondent permission to use its trademarks in any manner. Respondent is not commonly known by the disputed domain name. Further, Respondent registered the disputed domain name using a privacy service. Respondent is using the disputed domain name to link to a website featuring links to third-party websites, which presumably are pay-per-click links. Said use is not a bona fide offering of goods or services that would give rise to rights or legitimate interests. The disputed domain name is being offered for sale for a minimum offer of 500 USD, which exceeds Respondent’s out-of-pocket expenses in registering the disputed domain name. Respondent registered the disputed domain name significantly after Complainant registered the RBS Mark. Under the third element, Complainant states that the RBS Mark is known internationally and registered in numerous countries. Complainant has marketed and sold its goods and services using the RBS Mark since 1727, which predates the registration of the disputed domain name. Respondent has demonstrated knowledge of Complainant’s trademark, and the disputed domain name mimics Complainant’s subdomain. The RBS Mark is strongly associated with Complainant and any use of it suggests opportunistic bad faith. The evidence suggests that Complainant has intentionally attempted to attract a likelihood of confusion with Complainant and its trademarks. The disputed domain name is typosquatting in that it is a minor misspelling of Complainant’s subdomain and connected website. Respondent has been involved in numerous previous disputes involving domain names, and has registered various domains containing third-party trademarks, which demonstrates a pattern of cybersquatting. Respondent is offering the disputed domain name for sale and registered the disputed domain name using a privacy service. Complainant sent notice letters to which Respondent did not respond. On balance, the facts demonstrate that Respondent knew of and targeted Complainant’s trademark, and registered and used the disputed domain name in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a formal response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the RBS Mark through registrations in numerous jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s RBS Mark with the disputed domain name Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” It is the well-established view of UDRP panels that the addition of a generic Top-Level Domain (“gTLD”) to the disputed domain name is normally disregarded under the first element confusing similarity test and does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the RBS Mark with permission of Complainant. Rather, the record supports Complainant’s express assertion that such permission does not exist and that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. The Panel finds that the evidence submitted by Complainant therefore establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to timely file a response, has not submitted evidence or arguments demonstrating such rights or legitimate interests to the extent they could even be imagined to exist, nor has it rebutted any of Complainant’s contentions. The disputed domain name contains Complainant’s well-known RBS Mark in its entirety and mimics its subdomain, and it moreover resolves to a website containing pay-per-click links. Such circumstances are not compatible with a finding of rights or legitimate interests. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel finds bad faith under Policy, paragraph 4(b)(iv). The record in the case demonstrates that Complainant’s RBS Mark is widely known, and the disputed domain name incorporates Complainant’s Mark in its entirety, along with dictionary terms. Complainant’s rights in the RBS Mark significantly predate the registration of the disputed domain name. The composition of the disputed domain name moreover closely resembles Complainant’s subdomain. The Panel finds that such circumstances demonstrate Respondent’s knowledge of Complainant’s rights. Respondent has not provided any credible rationale for registering the disputed domain name, nor is any such rationale plausible. Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has engaged in bad faith use in using the disputed domain name for pay-per-click links. In the view of the Panel, the nature of the disputed domain name (particularly that it mimics Complainant’s subdomain), the absence of any plausible good-faith explanation for the registration and use of the disputed domain name, and the use of the disputed domain name for commercial gain are circumstances that support a finding of bad faith. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 Ingrida Kariņa-Bērziņa
Sole Panelist
Date: June 5, 2020
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