The Complainant is The Royal Bank of Scotland Group Plc of Edinburg, Scotland, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Melbourne IT Digital Brand Services of the United Kingdom.
The Respondent is Pavel Kornilov of Dubai, the United Arab Emirates.
The disputed domain name <rbs.ae > (“the Domain Name”) is registered with AE Domain Administration (.aeDA).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2012. On April 23, 2012, the Center transmitted by email to .aeDA a request for registrar verification in connection with the Domain Name. On April 25, 2012, .aeDA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (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 April 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2012. The Response was filed with the Center on May 17, 2012.
The Center appointed Warwick Smith as the panelist in this matter on May 30, 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 Complainant is a company incorporated in Scotland. It was originally founded in Edinburgh in 1727, and it is one of the oldest banks in the United Kingdom. It was incorporated as a public limited company in that country in 1968.
The Complainant has had a presence in the United Arab Emirates (the “UAE”) since 1973. It operates two branches in that country, one in Dubai and one in Abu Dhabi. It also has a business presence in Russia, and operates a website there at “www.rbsbank.ru”.
The Complainant provides its banking and financial services worldwide under the mark RBS. It says that it has registered that mark in numerous jurisdictions around the world, including in the UAE, and it provided details of a total of 6 registrations of the mark RBS in the UAE, all dating from December 25, 2004. The Respondent did not challenge these details.
The Complainant operates websites of “www.rbs.com”, and “www.rbsbank.ae”. A webpage from the Complainant’s website at “www.rbsbank.ru” features the use of the RBS mark preceded by a device, in the following form (the “RBS Mark”):
The Domain Name was registered on June 23, 2011.
The Domain Name resolves to a website titled “RBS Middle East” (“the Respondent’s website”), where a variety of financial and investment services are offered. The Respondent’s website contains a claim that the Respondent has operated in Russian and international markets since 2004.
At the foot of the Respondent’s website, the following copyright claim appears:
“©2011 RBS All rights reserved.”
The Complainant says that there has been no disclaimer on the Respondent’s website making it clear that the Respondent has no relationship with the Complainant.
In accordance with normal practice, the Panel has visited the Respondent’s website. The Panel did that on June 5, 2012. The Panel noted, under a heading “Financial Services”, the following:
“RBS Middle East offers its customers a full range of services, including all types of banking transactions, financing, financial consulting …”
The Panel also noted, in a section of the Respondent’s website headed “Message from our Chairman”, assertions that the Respondent has over 2,000 corporate customers, and partners in more than 50 countries in Europe, Asia, Africa, North and South America, and Australia.
The Respondent’s website contained what appeared to be click-on links consisting of the expressions “Privacy” and “Legal Disclaimer”. However when the Panel clicked on those expressions he was not taken to any new web page or text.
The Complainant says that it has not authorized the Respondent to use its mark in a domain name and has never had any business relationship with the Respondent.
The Complainant says that it has not found anything to indicate that the Respondent is commonly known by the Domain Name. It has been unable to find any evidence of a business operated by the Respondent under the name “RBS” in the Russian Federation. The Complainant says that it has also run searches in Internet search engines on the expression “Middle East RBS”. It says that the results generated were predominantly associated with it, and that no results referred to the Respondent. A search on “RBS Middle East” on the website at “www.yellowpages.ae” returned no matching results, and a search for “RBS” in that business directory returned only a reference to the Complainant.
None of those search results were questioned in the Response.
The Panel notes that the Response consisted of an uncertified letter on the letterhead of “RBS Middle East Limited”. That letterhead contained on the left hand side a reproduction of the Complainant’s RBS Mark, immediately above the words “RBS GROUP”. To the left of the RBS Mark, there was a small device mark which was similar (but not identical) to the device used by the Complainant with its RBS Mark on the website at “www.rbsbank.ru” (as depicted on page 2 of this decision).
The Complainant tried to contact the Respondent on August 9, 2011, when it sent a cease and desist letter via email. It contended in the email that the Respondent’s unauthorized use of the Complainant’s RBS trademark within the Domain Name violated the Complainant’s rights in that mark. It asked for an explanation for the Respondent’s registration of the Domain Name.
When no response had been received by August 29, 2011, the Complainant sent a reminder email. Again, no reply was received. The Complainant sent further emails to the Respondent in September and October 2011, but still did not receive any response. The present proceeding was formally commenced on April 27, 2012.
The Complainant contends:
1. The Domain Name is identical to the Complainant’s RBS registered mark. Anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant, and the Respondent’s website could be mistaken for a website endorsed by the Complainant. By using the Complainant’s trademark as the dominant part of the Domain Name, the Respondent has been exploiting the goodwill and the image of the Complainant’s mark, and that may result in dilution and other damage to the Complainant’s mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relies on the following matters:
(i) The Respondent has no registered trademark or trade name corresponding to the Domain Name.
(ii) The Respondent has not been using the Domain Name in any way which might give it a legitimate interest in the Domain Name, and has no claim to any rights based on common usage.
(iii) The Complainant has not licensed or authorized the Respondent to use its RBS mark in a domain name.
(iv) Although there is no relationship between the Complainant and the Respondent, the Respondent has not posted any disclaimer on the Respondent’s website.
(v) It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in its RBS mark at the time the Domain Name was registered. The obvious assumption is that it was the fame of the Complainant’s RBS mark that motivated the Respondent to register the Domain Name.
(vi) The Complainant’s RBS mark is famous worldwide, and any use of such a trademark in a domain name would violate the Complainant’s rights as trademark owner.
(vii) The Respondent is not commonly known by the Domain Name.
(viii) It could not be mere coincidence that the Respondent has set up a website at a domain name which includes the Complainant’s RBS Mark, offering services in the same field of business as the Complainant, in countries where the Complainant has carried on business for decades (and for far longer than the Respondent).
(ix) The apparent absence of any listings in the business directory at “www.yellowpages.ae” confirms that the Respondent has no right or legitimate interest in respect of the Domain Name.
(x) By using the Domain Name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain.
3. The Domain Name has been registered or is being used in bad faith. The Complainant relies on the following matters:
(i) The Respondent’s website resembles in nature a website of the Complainant. Capitalizing on the Complainant’s well known RBS mark by incorporating it in a domain name which resolves to a website offering financial services, is clearly an attempt to trade off the Complainant’s goodwill in its RBS brand.
(ii) The copyright claim at the foot of the Respondent’s website creates an impression that the website is endorsed or owned by the Complainant.
(iii) The Complainant has several trademark registrations for RBS in the UAE that predate the registration of the Domain Name. Had the Respondent conducted a cursory look-up in one of the available search engines online, the Respondent would quickly have learned that RBS is a registered trademark.
(iv) The Respondent’s failure to respond to the Complainant’s cease and desist correspondence is consistent with the Respondent acting in bad faith.
(v) The Respondent has been misleadingly diverting consumers to the Respondent’s website, for the Respondent’s own commercial gain.
The Respondent contends:
The Complaint is unjustified. The Domain Name was available for registration during the .ae registration period, and it was registered without any restriction. The Respondent has the right under its registration contract to administer the Domain Name for one year from the registration date.
The Respondent has no connection with the Complainant and has been acting exclusively in its own interests. It is presently successfully developing and building up its own image and “therefore we exclude an intended adoption of the ‘RBS’ trademark.”
The Respondent says that it intends to continue using the Domain Name in its own interests.
Under Paragraph 6(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered or is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to: “ decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
It is not contested that the Complainant is the registered proprietor of the RBS Mark, in numerous jurisdictions, including in the UAE. The Complainant therefore has “rights” in that mark for the purposes of paragraph 6(a)(i) of the Policy.
The Domain Name is identical to that mark. The “.ae” ccTLD suffix is not taken into account in the comparison required by paragraph 6(a)(i) of the Policy.
The Complainant has therefore made out its case on this part of the Complaint.
Paragraph 6(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 6(a)(ii) of the Policy. Those circumstances are:
(i) Where before any notice to [the respondent] of the dispute, the respondent has made use of, or demonstrable preparations to use, the disputed domain name (or a name corresponding to the disputed domain name) in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of panels on the onus of proof under paragraph 4(a)(ii) of the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), which is in material respects identical to paragraph 6(a)(ii) of the Policy, is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), as follows:
“… a complainant is required to make 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 to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a 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 the 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 the complainant.”
In the Panel’s view, that approach to the onus of proof under paragraph 4(a)(ii) of the UDRP is sensible, and is equally applicable to paragraph 6(a)(ii) of the Policy.
In this case, the Domain Name is confusingly similar to the Complainant’s RBS Mark, and the Complainant has not authorized the Respondent to use that mark, whether in a domain name or otherwise. The Respondent has not denied that he was aware of the Complainant and its RBS Mark when he registered the Domain Name.
The Respondent is Mr. Pavel Kornilov, and while the Response has been filed on the letterhead of “RBS Middle East Limited”, purportedly part of the “RBS Group”, there is nothing in the evidence to suggest that Mr Kornilov, or any business or organization operated by him, has been commonly known by the name “RBS”. Indeed, there is nothing in the evidence which explains Mr. Kornilov’s connection (if any) with the Respondent’s website.
It is true that there is a copyright claim on the Respondent’s website by “RBS”, but against that, the Response refers to the Respondent, on three separate occasions, as “RBS Middle East Limited, UAE”, and it disavows any intention to adopt the name “RBS”, at least as a trademark.1
In the foregoing circumstances, there is insufficient evidence to establish a defense under paragraph 6(c)(ii) of the Policy.
The Respondent’s website is commercial in nature, so there can be no question of the Respondent having any rights or legitimate interests based on any legitimate noncommercial use of the Domain Name, without intent for commercial gain (such as might have provided a defense under paragraph 6(c)(iii) of the Policy).
The foregoing combination of circumstances provides sufficient prima facie proof that the Respondent has no rights or legitimate interests in respect of the Domain Name. The burden of production accordingly shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name.
The Respondent has manifestly failed to do that. The Respondent has registered a domain name consisting only of the Complainant’s RBS Mark, which is allowed to point to a website (the Respondent’s website) which offers services in precisely the same field of commerce in which the Complainant group has been participating in the UAE since 1973.
In the Panel’s view, the Respondent’s use of the Complainant’s RBS Mark in the Domain Name has been calculated to confuse Internet users into believing that the Respondent’s website is associated with or endorsed by the Complainant. The likelihood of confusion caused by the use of the RBS Mark in the Domain Name is compounded by the absence of any disclaimer on the Respondent’s website, the copyright claim on the Respondent’s website purportedly made by “RBS”, and the Respondent’s use of a letterhead which adopts an “RBS” device which appears to the Panel to be very similar to that used by the Complainant.
The impression of some sort of association with the Complainant is further compounded by the use of a letterhead which suggests that the operator of the Respondent’s website is part of an “RBS” Group of companies. But no evidence of the existence of such a group has been produced, and Internet users who were familiar with the banking and financial services provided by the Complainant’s group under their RBS Mark would inevitably assume that the Respondent’s website is the official website of the Complainant for the Middle East.
Having regard to all of those matters, the Panel has reached the clear view that the Respondent’s use of the Domain Name has been neither bona fide within the meaning of paragraph 6(c)(i) of the Policy, nor fair or legitimate within the meaning of those terms as used in paragraph 6(c)(iii) of the Policy.
Nothing in the one-page uncertified Response affects that view. First, it is irrelevant that the Respondent was the first to register the Domain Name during the relevant registration period. When he registered the Domain Name, the Respondent’s registration agreement bound him to the terms of the Policy. Thus the Respondent has been holding the Domain Name subject to the possibility that a trademark owner having a mark identical or confusingly similar to the Domain Name might file a complaint under the Policy alleging that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered or has been using the Domain Name in bad faith. That is precisely what has happened, and it can be no answer to the Complaint to say that the Respondent successfully registered the Domain Name without restriction. If the Respondent’s submission were correct, every bad faith cybersquatter would have a complete defense arising out of the very act of registration which is the subject of complaint. That is obviously not how the Policy was intended to work, and the Respondent’s submission in this case is rejected accordingly.
Nor does the Panel accept the submission that the operator of the Respondent’s website has been successfully building up its own image, and that it “excludes an intended adoption of the RBS trademark”. On the evidence produced, the Panel is satisfied that the registration and use of the Domain Name has been calculated to create a false impression that there exists some commercial connection between the operator of the Respondent’s website and the Complainant.
For the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 6(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration or use of a domain name in bad faith. Those circumstances include:
(iv) circumstances indicating that, by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Essentially for the reasons set out above in section 6C of this decision, the Panel also finds this part of the Complaint has been proved.
The Respondent has not denied that he was aware of the Complainant and its RBS Mark when he registered the Domain Name, which is of course identical to that mark. The Domain Name points to a website that offers identical (or very similar) services to those offered by the Complainant, and the Complainant holds a registered RBS mark in the UAE which has been in effect from a date well before the date of the registration of the Domain Name. Under paragraph 4 of the Policy, it was the Respondent’s responsibility to determine whether the registration or use of the Domain Name would infringe or violate someone else’s rights. On the evidence produced, in the Panel’s view the Respondent appears to have disregarded that responsibility.
The likelihood that Internet users familiar with the Complainant and its RBS Mark would be confused into wrongly believing that the Respondent’s website was somehow associated with the Complainant, must have been obvious to the Respondent, and if it was, the Respondent must be taken to have intended to create that confusion. The Respondent’s website being commercial in nature, the circumstances fall squarely within paragraph 6(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <rbs.ae> be transferred to the Complainant.
Warwick Smith
Panelist
Dated: June21, 2012
1 The Response includes the statement: “At the present time the company is successfully developing and is building up its own image, therefore we exclude an intended adoption of the ‘RBS’ trademark and we would like to inform you, that our company has no connection with the Royal Bank of Scotland Group Plc”.