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, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Whois Privacy Protection Service, Inc, Whois Agent, of Bellevue, Washington, United States of America; and Soheil Asgari of Wiesbaden, Germany, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2012. On January 24, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 24, 2012, eNom 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 the Complainant on January 26, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 31, 2012.
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 the Respondent of the Complaint, and the proceedings commenced on February 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on February 23, 2012.
The Center appointed John Katz QC as the sole panelist in this matter on March 5, 2012. 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 public limited company having been incorporated as such in the United Kingdom of Great Britain and Northern Ireland (“UK”) in 1968. Its history goes back to 1727 when it, or its predecessor entity, was founded in Edinburgh by Royal Charter. It is one of the oldest banks in the UK.
The Complainant offers a broad range of financial and similar services, which are not limited to banking. They include personal finance, wealth management, insurance and global transaction services. These services cover the globe and the group website shows the truly international spread of services. There is in particular a heavy presence in the United States, since 1960. There is also a presence in Germany and many other countries in the European Union (“EU”).
The Complainant’s website also features a page displaying “our brands” with a detailed review of the various brands and the services offered under and by reference to those brands.
The brand protection of the Complainant has been achieved via a very substantial portfolio of registered trade marks throughout the world. The Complainant operates websites and which were registered in 1994 and 1995 respectively.
The domain name portfolio in evidence shows an equally impressive list of domain name registrations.
The Complainant also claims that the ROYAL BANK OF SCOTLAND mark is well known or famous, thus entitled to the greater recognition and protection afforded by the Paris Convention and TRIPs agreement.
The disputed domain name was registered on May 3, 2011, and it expires on May 3, 2012. The Registrar, eNom, notified the Center in its verification response that the registrant of the disputed domain name was “Soheil Asgari” with an address in Wiesbaden, Germany. Email contact details were provided. As a result the amended Complaint was sent also to the registrant as provided by the Registrar.
Contact details for the registrant, which were given by the Registrar were both physical and electronic. Attempts to communicate with the Respondent via the notified physical and email addresses produced only electronic responses claiming that the individual’s contact information had been used illegally and that the email address listed is a private email address. The person replying from the provided email address said that he or she knew nothing about “royalbank”.
The Respondent “Whois Privacy Protection Service Inc” is a Washington, United States, based company which offers a domain name hosting service to registrants who wish to protect their personal information from being displayed on the public WhoIs database. The information regarding the true registrant is kept separately and privately. For the purposes of contacting registrants pursuant to the UDRP it is necessary to send an email to the address shown on the WhoIs database record.
By use of a privacy service, the true identity of the actual domain name owner or user is in this case masked. The attempts to contact the correct or proper Respondent have all corresponded with the Registrar-provided and publicly available contact details. A letter sent by the Complainant before commencing this action to Whois Privacy Protection Service Inc drew no response.
The website associated with the disputed domain name is blocked or suspended so could not be accessed for the purposes of understanding what activities are associated with the true respondent. There is therefore no further factual material about the “true” Respondent.
The disputed domain name has as its suffix “.cc”, a reference to the Cocos or Keeling Islands, located in the Indian Ocean south west of the Indonesian Island of Java and to the north west of Australia. The islands are part of the territory of Australia. They are small coral atolls or islands with a minute population. They are an unlikely location for a website of the Complainant. 5. Parties’ Contentions A. Complainant
In this proceeding the Complainant relies upon its registered trade marks, together with its numerous domain name registrations, and also its global common law goodwill by virtue of its international trading and service facilities and brand awareness. These registered trade marks include a registration in Australia for THE ROYAL BANK OF SCOTLAND. It contends that THE ROYAL BANK OF SCOTLAND mark is a famous mark, that it has acquired distinctiveness, and any use of THE ROYAL BANK OF SCOTLAND mark alone or in conjunction with any other word or phrase would be taken as a mark or a use of a mark associated with the Complainant. The use of a name similar to that of the Complainant’s trade mark by someone other than the Complainant, for any activity, could potentially be extremely detrimental to the brand image of the Complainant.
Much of the case for the Complainant relies upon its extensive trading facilities and the services it offers around the world.
The Complainant is known as the Royal Bank of Scotland or “RBS” as an abbreviation. The Complainant contends that the disputed domain is identical to the Complainant’s trade mark or brand as it incorporates the trade mark ROYAL BANK OF SCOTLAND without alteration. That the disputed domain name uses “Royal Bank of Scotland” as one word is not a difference, nor that the disputed domain name deletes the word “the”. The suffix “.cc” is nothing more than a country designation or TLD, which relevantly adds nothing distinctive, but is merely necessary to enable the domain name and website to operate. The Complainant argues that any member of the public seeing the disputed domain name will perceive it to be a domain name owned by the Complainant or somehow associated with the Complainant, contrary to the fact. As a result there is damage to the goodwill of the Complainant and the image of its trade mark and brand. B. Respondent
As the Respondent has defaulted there is no evidence or submission from it. As indicated above the Complainant sent a letter before commencing this action to the Respondent, but received no reply. Email traffic to the email address has drawn the response from the person at that address claiming no association with the disputed domain name or registrant.
The Respondent has been given every opportunity to respond. It has not done so. Nevertheless, even without any response from the Respondent the Complainant must still make out its case.
As there is no evidence at all from the Respondent it is difficult to contemplate what contentions it might raise in response to the Complainant. 6. Discussion and Findings
As part of the UDRP process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief. A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to a trade mark in which the Complainant has rights.
The Complainant must first establish that it has such rights either to common law or registered trade marks or service marks.
The Complainant has registered trade marks in a number of countries worldwide. These trade marks, most, if not all of which, feature THE ROYAL BANK OF SCOTLAND mark either alone or in conjunction with other words or a device, are in diverse countries and regions including the Middle East, Russian Federation, Latin America, South East Asia and Oceania. The portfolio of registered marks (only a few are pending) is impressive. They include registrations in Australia.
In addition the Complainant has a very large number of domain name registrations, the diversity of which highlights the extent to which the Complainant has gone to protect its rights.
Further, the global presence and trading activities of the Complainant are such that the Complainant has undoubtedly a worldwide reputation and goodwill at common law. The Panel finds that brand awareness of the Complainant must be extensive and in all likelihood sufficient to establish THE ROYAL BANK OF SCOTLAND mark and RBS mark as famous marks.
There is a considerable body of case law in relation to what constitutes a confusingly similar or identical mark in trade mark jurisprudence.
In the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 34 the Court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant’s mark if the former “reproduced without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer.”
The Panel considers this statement equally applicable to the facts of the present Complaint. If one looks at the disputed domain name from the viewpoint of whether or not when viewed as a whole “it contains differences so insignificant that they go unnoticed by the average consumer”, it must follow that the disputed domain name incorporates the identical mark to that for which the Complainant has protection.
The only addition to the disputed domain name is the country of origin suffix “.cc”. The Complainant has a number of domain names which it has registered, these beginning with the prefix “rbs” or “royalbankofscotland”, and followed by country designation.
As earlier mentioned, the country designation has been held by prior UDRP panels to fail to be a distinguishing or distinctive feature. Thus, and without any possibility of argument, the disputed domain name not only takes the essence of one or more of the Complainant’s trade marks, indeed it takes the very name.
The Panel accordingly finds that the disputed domain name is identical to one or more trade marks of the Complainant.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out. B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent has not put forward in evidence any business or trading operation known as, or by reference to, the disputed domain name or ROYAL BANK OF SCOTLAND trade mark thereby justifying a proprietory right to the disputed domain name or trade mark.
Under paragraph 4(a)(ii) of the Policy a respondent can justify its registration of a domain name on certain grounds, some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from such default that the Respondent has no rights or legitimate interests or can claim none in the disputed domain name.
The Complainant puts its argument forward on the basis that nothing can be found out about the Respondent that might indicate it is known by or has a business association or connection with the ROYAL BANK OF SCOTLAND trade mark, Royal Bank of Scotland group, or similar.
The Complainant has not authorized the Respondent to register or use the disputed domain name. Absent any authority, the Respondent must therefore rely upon whatever it can point to as justifying some rights or legitimate business interests. In the absence of any response at all from the Respondent, the associated website being blocked or frozen, and in light of the email responses, it can only be assumed that there are no rights or legitimate interests that can be claimed.
There being no adequate response from the Respondent, the Panel finds that the Complainant more than satisfies its obligations of proof under this head.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out. C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other panelists’ decisions, together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
The trade mark registrations of the Complainant and its domain name registrations go back many years. The history of the Complainant as a bank goes back approaching now 300 years. The disputed domain name was registered in May 2011. Given the matters discussed in the sections above, it is an ineluctable conclusion that the registration in 2011 was in bad faith and for the purposes of trading on the goodwill of the Complainant.
Very shortly after the disputed domain was registered, the Complainant sent a letter to the stated address of the Respondent by post and by email. The responses from the contact person nominated have been discussed above in earlier sections.
The absence of any substantive reply and the fact that the associated website is frozen lead this Panel to the inescapable conclusion that the disputed domain name was likely registered for the purposes of cyber-squatting or typo-squatting, deliberately, so as to confuse or deceive Internet users into thinking, if they even noticed the significance, that this was a domain name and associated website registered in the Cocos Islands by the Complainant. As such, there can be no other finding but that there has been registration in bad faith.
As for the further requirement of use in bad faith, there presumably has been an associated website before access to it was frozen and in any case passive holding of a domain name incorporating a well-known trademark does not necessarily preclude a finding of bad faith in all circumstances. See e.g. WIPO Overview 2.0, paragraph 3.2 and cases cited therein. There is little prospect in any event of any legitimate use being claimed and therefore the Panel considers use in bad faith is similarly established.
In the particular circumstances the Panel finds that the Respondent not only registered the disputed domain name in bad faith, but also, during its currency with the associated website, used it in bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out. 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.
John Katz QC
Sole Panelist
Dated: March 19, 2012
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