The Complainant is The Royal Bank of Scotland Group plc of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by Melbourne IT Digital Brand Services, U.K.
The Respondent is Najeeb Alim of Cincinnati, Ohio, United States of America (“U.S.”).
The disputed domain name <rbsexclusivecommercialfunding.info> is registered with GoDaddy.com, LLC. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2012. On August 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2012, 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 September 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2012.
The Center appointed Mihaela Maravela as the sole panelist in this matter on October 12, 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.
The Panel notes that the Registrar has confirmed the specific language of the registration agreement as English. In these circumstances, the Panel is satisfied that English is the appropriate language of the proceedings in accordance with paragraph 11 of the Rules.
The Complainant was incorporated in Scotland, Edinburgh in 1727 and is one of the oldest banks in the United Kingdom of Great Britain and Northern Ireland (“UK”). It was incorporated as a public limited company in UK in 1968. The Complainant is a worldwide financial service provider with an established presence in Europe, the Middle East, the United States of America, South America, and Asia.
The Complainant offers its services globally under the trademark RBS, registered inter alia as a:
- UK trademark, Registration No. 2004617, registered on January 5, 1996;
- Community trademark, Registration No. 97469, registered on March 23, 1998;
- United States trademark, Registration No. 3185538, registered on December 19, 2006.
In addition, the Complainant owns an extensive international portfolio of registered trademarks for the word RBS, either by itself or in phrases incorporating it, including RBS BANK and RBS BANKLINE. Many of such registrations are as Community trademarks.
The Complainant is also the owner of a substantial number of domain names comprising the trademark RBS, amongst which:
- <rbs.com>, registered on September 6, 1994;
- <rbsgroup.com>, registered on April 30, 1995;
- <rbsprivatebanking.com>, registered on April 18, 2005.
The disputed domain name <rbsexclusivecommercialfunding.info> was registered on May 20, 2011.
No other information as to the Respondent, its services or activities, is available to the Panel, as the Respondent did not reply to the Complainant’s contentions.
On September 29, 2011, the Complainant addressed a cease and desist letter to the Respondent, by email, followed up on October 5, 2011. The Respondent did not reply to any of these letters.
The Complainant claims that the disputed domain name <rbsexclusivecommercialfunding.info> is confusingly similar to the trademark RBS, which has been registered by the Complainant around the world. The dominant part of the disputed domain name <rbsexclusivecommercialfunding.info> reproduces the trademark RBS and is bound to create confusion and a risk of association with the Complainant’s trademark. Addition of the suffix “exclusive commercial funding” is three generic words that only describes the intention with the site, i.e. to give exclusive commercial funding and only enhances the confusing similarity between the disputed domain name and the trademark RBS, strengthening the impression that the former belongs to, or is affiliated to the latter.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using RBS in any other way that would give them any legitimate rights in the name. The Respondent is not legally or economically related to the Complainant and has never been authorized or licensed by the Complainant to use in any manner the trademark RBS. The Respondent is neither making any legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent used the disputed domain name to display information on the website to which the disputed domain name resolves that they are in the business of giving a type of mortgage to the public. The Complainant contends that the Respondent is using the Complainant’s trademark to attract Internet users and drive traffic to their own site and in that way “steal business” from the Complainant.
The Complainant finally submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant contends that it is due to the considerable value and goodwill of the trademark RBS that the Respondent registered the disputed domain name, and dismisses the possibility that the Respondent was unaware of the Complainant’s rights at the time of registration of the disputed domain name. Moreover, by using the disputed domain name to drive traffic to their own website using the Complainant’s trademark for their own commercial gain the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain. The Respondent’s failure to respond to the Complainant’s cease and desist letter requesting voluntary transfer of the disputed domain name is further indicative of bad faith.
The Respondent did not reply to the Complainant’s contentions.
It is essential to this proceeding that fundamental due process requirements must be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules established procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
Based on the methods employed to provide the Respondent with notice of the Complaint, the Respondent’s obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to submit a reply is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (id., paragraph 15(a)).
In order that the remedy requested in the complaint is granted, paragraph 4(a) of the Policy requires that the Complainant prove each of the following:
i) that the disputed domain name is identical or confusingly similar to the mark in which it has rights;
ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
iii) that the disputed domain name has been registered and is being used in bad faith.
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Panel has verified, in accordance to the Consensus View of WIPO panels ((See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), Paragraph 4.5.)), the trademark registrations indicated by the Complainant in its complaint and is satisfied that the Complainant is the owner of RBS registered trademarks, including inter alia a:
- UK trademark, Registration No. 2004617, registered on January 5, 1996;
- Community trademark, Registration No. 97469, registered on March 23, 1998;
- United States trademark, Registration No. 3185538, registered on December 19, 2006.
These registrations predate the registration of the disputed domain name, i.e. May 20, 2011.
As to matter of similarity for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
The disputed domain name <rbsexclusivecommercialfunding.info> incorporates entirely the Complainant’s trademark RBS, a trademark found in numerous UDRP decisions to be distinctive, well-known worldwide (see The Royal Bank of Scotland Group Plc v. IRBS, WIPO Case No. D2012-0854; The Royal Bank of Scotland Group Plc v. Contact Privacy Inc. / Nat, WIPO Case No. D2012-0856; The Royal Bank of Scotland Group Plc v. Fastdomain Inc / Hyper Link Technology, Jeetender Rajouria, WIPO Case No. D2012-0666) and strong, due to its use, investment in advertising and brand protection, as well as its presence in protected trademarks and a considerable number of domain names worldwide (see The Royal Bank of Scotland Group Plc v. Arbechay, Adalbrecht Engelbert, WIPO Case No. D2012-0665).
The addition of the words “exclusive commercial funding” is generic and non-distinctive, and where such words are combined with well-known trademarks, a finding of confusing similarity is generally recognized (see The Royal Bank of Scotland Group Plc v. Contact Privacy Inc. / Nat, WIPO Case No. D2012-0856).
The impression of the Internet user will be that the disputed domain name belongs to the Complainant or at least is connected to the Complainant and its services. Even in the latter case, it is the Panel’s view that such connection is all the more heightened where the trademark is well-known (see also The Royal Bank of Scotland Group Plc v. Arbechay, Adalbrecht Engelbert, WIPO Case No. D2012-0665).
Further, as to the addition of the generic top-level domain (gTLD) “.info”, this does not bear any relevance to the comparison at hand, as use of a gTLD is required of domain name registrants, and has no impact on the overall impression made by the dominant part of the disputed domain name, “rbs”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, therefore the requirement of paragraph 4(a)(i) of the Policy is satisfied.
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(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 disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of WIPO panels is that the burden of proof in establishing no rights or legitimate interests in respect of the disputed domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (See WIPO Overview, Paragraph 2.1.).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In the absence of a response or defense by the Respondent, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given to the Respondent to use the trademark RBS (see Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the absence of any license or permission from the Complainant excludes bona fide or legitimate use).
Further, the Respondent’s failure to act upon the Complainant’s cease and desist letter also indicates in this Panel’s view that the disputed domain name registration lacks the fundament of entitlement or legitimate interest.
The Panel finds that the Respondent does not appear to have any rights or legitimate interests in the disputed domain name. Rather, the Respondent appears to act as a competitor of the Complainant, offering a kind of trust services in the real estate sector, as an alternative to the mortgage loans. This is not in the opinion of this Panel a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances, the Panel finds that the Respondent registered the disputed domain name to profit from the Complainant’s trademark goodwill and reputation, which is incompatible with making a legitimate, noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting, prima facie, evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris, WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 the said website location or of a product or service on that website location.”
After reviewing the website to which the disputed domain name resolves, it appears that the website is redirected to webdeco.com website where a kind of trust services in the real estate sector, as an alternative to the mortgage loans, are presented. The website includes the RBS logo. All these facts have been considered by this Panel to be proof of registration in bad faith, with the intention of creating confusion with the Complainant’s services for commercial gain.
As noted above, the trademark RBS is well-known. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Also, the Respondent registered the disputed domain name almost 20 years after the Complainant registered its trademarks.
Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:
- the Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210);
- the Respondent’s failure to respond to, or act upon the Complainant’s cease and desist letter, requesting voluntary transfer;
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name,
- any use of the disputed domain name would lead the public to the conclusion that it, and its connecting website, is associated with the Complainant,
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name. The Respondent provided no explanations for which he registered the disputed domain name.
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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 <rbsexclusivecommercialfunding.info> be transferred to the Complainant.
Mihaela Maravela
Sole Panelist
Dated: October 26, 2012