WIPO Arbitration and Mediation Center

The Complainants in these Administrative Proceedings are The Royal Bank of Scotland Group plc ("the First Named Complainant") and The Royal Bank of Scotland plc. ("the Second Named Complainant").

The Respondents are "Christopher Graham" or "John Graham" dba GRA Marketing CL at Calle El Barranco, Cheyofa F11, El Morrow CP 38652, Arona, Tenerife ES, 38652.

This dispute concerns the domain name <royalbankofscotlandtenerife.com>.

The registrar with which the domain name is registered is Namesecure.com ("the Registrar")

On May 2, 2001, the Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999. The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on May 2, 2001, and the hard copy was received on May 3, 2001.

On May 4, 2001, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant by e-mail.

On May 8, 2001, the Center sent a Request for Registrar Verification to the Registrar. On May 11, 2001, Network Solutions responded to the Center by e-mail on behalf of the Registrar and confirmed that the said registration was registered by the Registrar, that the registrant was GRA Marketing CL, that the administrative contact was Christopher Graham and that the technical contact was NameSecure.

The Center reviewed the Complaint and was satisfied that the Complainant complied with the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy (hereinafter "the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.

On May 14, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name to the Respondent by post/courier (Complaint without attachments), facsimile (Complaint without attachments) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on May 14, 2001, and that the Respondent was required to submit a Response to the Center on or before June 2, 2001.

On May 15, the Center received a response to the said facsimile stating:

"Mr. John Graham. No longer at this establishment. Can be found somewhere in Prague or Buda Pesh."

On June 7, 2001, as no Response had been filed by the Respondent, the Center sent by e-mail, a Notification of Respondent Default to the Respondent. A copy of said Notification was at the same time sent to the authorised representative of the Complainant.

On June 21, 2001, the Center invited James Bridgeman to act as Administrative Panel in these proceedings.

On June 22, 2001, having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member.

On June 22, 2001, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the parties and advised that absent exceptional circumstances, the Administrative Panel was required to forward its decision to the Center by July 5, 2001. On the same date, the case file was transferred to the Administrative Panel.

In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.

The Complainants are public limited companies incorporated in Scotland. The First Named Complainant is the parent company of the Second Named Complainant and the owner of the trade marks relied upon, each of which consist of or incorporate the words THE ROYAL BANK OF SCOTLAND. The Second Named Complainant is the owner of a number of domain names which consist of or incorporate the said trade mark THE ROYAL BANK OF SCOTLAND referred to below.

The Complainants trade under the mark THE ROYAL BANK OF SCOTLAND which is owned by the First Named Complainant.

The Complainants, with their subsidiaries and affiliates provide an extensive range of banking and financial services to both companies and members of the public. Although the Complainants are based within the United Kingdom, they also operate in a number of other countries. The services provided by the Complainants include loans, mortgages, card services (credit cards, charge cards and debit cards), insurance services, equity finance, foreign exchange services, interest rate management products, structured and leveraged finance, trade finance and independent financial advice. They also conduct trading and capital markets business including derivatives trading, securitisation origination and trading, securities and credit trading, futures brokerage and structured trade finance origination.

The Complainants with their subsidiaries and affiliates currently have approximately 2,900 branches worldwide with a presence in all of the major towns and cities of the UK.

As no Response has been filed, the only information available about the Respondent is that provided in the Complaint and the verification information provided by Network Solutions on behalf of the Registrar.

According to the Registrar' records, the said domain name <royalbankofscotlandtenerife.com> is registered in the name of GRA Marketing CL and the Administrative Contact is Christopher Graham. In correspondence entered into between the Complainant and the Respondent, details of which are set out below, Mr. John Graham claimed to be the owner of the said domain name. The Complainants have carried out company searches in Spain and have been unable to identify any record of a company named GRA Marketing CL. The Complainants believe that GRA Marketing CL is therefore a business name of Christopher Graham or John Graham who may be the same person.

The Complainants are members of a large corporate banking organisation in the UK with relationships with approximately one third of the UK’s medium and large businesses. To illustrate the nature and extent of their commercial activities and reputation, the Complainants have submitted advertising and promotional documentation describing the services they offer.

The Complainants and their subsidiaries and affiliates hold assets of a value exceeding £320,004,000,000 and have submitted a table of data setting out the financial performance of the group in the years from 1994 to 2000 together with a copy of the groups financial statement for the year 2000.They claim that their THE ROYAL BANK OF SCOTLAND trade mark is a household name in the U.K., which members of the public associate with them.

The First Named Complainant has provided prima facie evidence of its ownership of a registered Community Trade Mark and a number of registered trade marks in the U.K. as well as a pending application for registration of a trademark in the U.K. Each of these registrations and the pending application either consists of or incorporates the words THE ROYAL BANK OF SCOTLAND viz.

- UK TRADEMARK registration number GB 1566043 THE ROYAL BANK OF SCOTLAND registered in class 9 of the register on February 2, 1996;

- UK service mark registration number GB 1566044 THE ROYAL BANK OF SCOTLAND registered in class 36 in respect of " banking, financial and insurance services all included in class 36", on February 2, 1996;

- UK trademark registration number GB 2209898 The Royal Bank of Scotland plc BUSINESS.NET and device, The Royal Bank of Scotland plc BUSINESS NET and device registered in classes 9 and 36 on May 12, 2000;

- trademark registration number GB 2242225 THE ROYAL BANK OF SCOTLAND CORPORATENET, The Royal Bank of Scotland CorporateNet registered in classes 9 and 36 on February 2, 2001;

- trademark application number GB 2248537 THE ROYAL BANK OF SCOTLAND BUSINESS ON-LINE, THE ROYAL BANK OF SCOTLAND BUSINESS ONLINE filed on October 13, 2000, in respect of services in classes 35 and 36.

- European trademark registration number EM97402 THE ROYAL BANK OF SCOTLAND registered in classes 9, 16, 35, 36 and 42 on June 15, 1998.

- The First Named Complainant has also registered trade marks which include or consist of the words THE ROYAL BANK OF SCOTLAND in Greece, Indonesia, Sweden, France, Greece, Italy and Benelux but has not furnished any details of these registrations.

The Complainants further submit that the Second Named Complainant is the owner of the following domain name registrations: <royal-bank-of-scotland.co.uk>, <royalbankofscotland.co.uk>, <royalbankofscotland.com>, <royalbankofscotland.net>, <royalbankofscotland.tv>, <royalbankofscotland-digital.co.uk>, <royalbankofscotland-digitalbanking.co.uk>, <royalbankofscotland-digital-banking.co.uk>, <royalbankofscotland-digitalbanking.com>, <royalbankofscotland-digital-banking.com>, and <royalbankofscotlandgroup.co.uk>.

The Complainants point out that in common with the domain name in dispute, most of the Complainants' domain names are made up of the Complainants’ THE ROYAL BANK OF SCOTLAND trade mark, followed by additional wording or words.

The Complainants submit that the said domain name <royalbankofscotlandtenerife.com> is identical/confusingly similar to the Complainants’ trademarks and domain names.

The Complainants submit that the only differences between the Complainants' trade mark THE ROYAL BANK OF SCOTLAND and the said domain name are the fact that the word "The" is not included as part of the domain name and the word "tenerife" has been added to the mark to form part of the domain name.

The Complainant submits that the English trade mark case of British Sugar plc -v- James Robertson & Sons Limited [1996] RPC 281, deals with the issue of whether or not marks are to be treated as identical where an additional word has been added to the original mark. In that case, it was held that the use of a product descriptor "toffee treat" amounted to the use of a sign identical to the registered trade mark "treat".

The Complainants believe that many of those who see the disputed domain name will overlook the inclusion of the word "tenerife" and believe that the disputed domain name belongs to the Complainants.

In the event that the Panel does not consider the domain name <royalbankofscotlandtenerife.com> to be identical to the Complainants’ trade mark, the Complainant submits that it is confusingly similar. In support of this claim, the Complainant submits that WIPO administrative panels have, in a number of cases, held that disputed domain names which make use of a complainant’s trade mark, and simply add other words, are confusingly similar to the complainant’s mark. The Complainant has cited four examples of such decisions viz. Parfums Christian Dior v. 1 Netpower, Inc. (WIPO Case No. D2000-0022, March 3, 2000), The British Broadcasting Corporation -v- Jaime Renteria (WIPO Case No. D2000-0050, March 23, 2000), Direct Line Group Ltd and Others v. Purge I.T. and Purge I.T. Ltd (WIPO Case No. D2000-0583, August 13, 2000), National Westminster Bank PLC v. Purge I.T. and Purge I.T. Ltd (WIPO Case No. D2000-0636, August 13, 2000).

The Complainants submit that even those persons who notice the word "tenerife" in said domain name <royalbankofscotlandtenerife.com> will still be confused into believing that the disputed domain name is owned by, or associated with the Complainant. In the case of Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico (WIPO Case No. D2000-0477, July 20, 2000) the Administrative Panel found that inter alia the domain name <walmartpuertorico.com> was confusingly similar to WAL-MART because consumers were likely to believe that any domain name incorporating the WAL-MART mark was associated with the complainant. The Complainant submits that this decision was consistent with the determination of the Administrative Panel in Wal-Mart Stores, Inc. v. Walmarket Canada (WIPO Case No. D2000-0150, May 2, 2000) in which it was decided that <walmartcanada.com> is confusingly similar to <WAL-MART>.

The Complainants further submit that said domain name <royalbankofscotlandtenerife.com> is misleading because the Complainants are a household name in the UK and are known to be a global company, the word 'tenerife' may confuse those who notice it into believing that this is the domain name for the Complainants’ Tenerife branch. This is all the more so given that there is a large number of British nationals living in Tenerife (some 60,000 - 80,000 as confirmed by the British Consulate, Tenerife) and so members of the public would not be surprised that a large British based bank appeared to have a branch there. Tenerife is also an extremely popular holiday destination for British people which would make it all the more likely that members of the public would be led to believe that the Complainants had a branch in Tenerife and that the disputed domain name has been registered by or for the Complainants. The Complainants do not have a Tenerife branch.

While the Respondent does not yet appear to have set up a web site at the <royalbankofscotlandtenerife.com> address, the Complainants argue that if a web site were to be established at that address, there can be no doubt that Internet users making use of search engines would be mistakenly directed to such a web site, instead of the Complainants’ www sites at <royalbankofscotland.com> and <royalbankofscotland.co.uk>

The Complainants use their web site to advertise their banking and financial services, to provide online banking services, and information about the Complainants and their services. One potential use for any web site set up by the Respondent at the <royalbankofscotlandtenerife.com> address, would be to advertise or sell services, which compete with those, provided by the Complainants. Any such use would result in the Complainants losing business and could cause damage to the Complainants and their customers if the Respondent's services were shoddy.

The Complainants submit that the Respondent has no rights or legitimate interest in respect of the said domain name <royalbankofscotlandtenerife.com>. The Respondent appears to trade as GRA MARKETING CL. The Complainants do not believe that the Respondent has been trading as THE ROYAL BANK OF SCOTLAND or advertising using the THE ROYAL BANK OF SCOTLAND mark.

The Complainants submit that the Respondent has not used the disputed domain name to date and that he has admitted this in his letter to the Complainants dated February 21, 2001. In support of this claim the Complainant has furnished a copy of said letter.

Furthermore, the Complainants do not believe that the Respondent has at any time been commonly known by the disputed domain name, THE ROYAL BANK OF SCOTLAND mark, or any variations thereof. If the Respondent were to trade using the disputed domain name or THE ROYAL BANK OF SCOTLAND mark, the Complainants claim that they would consider taking legal action.

Finally the Complainants submit that the disputed domain name <royalbankofscotlandtenerife.com> has been registered and is being used in bad faith.

The Complainants wrote to the Respondent on December 4, 2000, stating that the Complainants believed that the disputed domain name was confusingly similar to the Complainants' THE ROYAL BANK OF SCOTLAND trade mark and asking that the Respondent transfer the disputed domain name to the Complainants immediately, or cancel the registration. The Complainants state that the Respondent failed to respond to this letter and the Complainants therefore wrote again on January 29, 2001.

The Complainants state that on February 20, 2001, "John Graham" telephoned the Complainants in response to their letters of December 4, 2000, and January 29 2001. The Complainants have furnished this Administrative Panel with a note of the telephone conversation that took place with Mr. Graham the following day when the Complainants returned Mr. Graham’s call. The Complainants submit that it is clear from this telephone conversation that the Respondent's purpose in registering the disputed domain name was to extract money from the Complainants. Mr. Graham actually stated that he bought the disputed domain name, together with five other domain names made up of the names of well known banks in order to sell the domain names to the rightful trade mark owners. Mr. Graham also stated that he had been negotiating to sell all or some of those domain names to a purchaser in Poland, presumably as a way of pressurising the Complainants into purchasing the disputed domain name.

The Complainants state that they wrote to Mr. Graham by fax later that day (February 21, 2001), informing him that the Complainants were of the opinion that the Respondent had no legitimate interest in the disputed domain name, which had been registered and was being used by the Respondent in bad faith. In this letter, the Complainants also repeated their request that the disputed domain name be transferred to the Complainants immediately, or that the registration be cancelled.

Mr. Graham replied the same day by fax stating as follows:- "I am a buisness [sic] man who realised that certain large corporate buisnesses [sic] had neglected to register their names, and quite legaly [sic] I did so. These names are like any buisness [sic] open to the highest bider [sic]."

He continued: "You are more than welcome to make a reasonable offer and because of who you are I will give it my immediate attention".

The Complainants sent a further fax on February 21, 2001, and stated that they would be willing to pay the Respondent's actual out-of-pocket expenses incurred in registering the disputed domain name in exchange for a transfer of the disputed domain name.

Mr. Graham did not reply to this letter and so the Complainants wrote to him again on February 26, 2001, asking for a response.

On February 27, 2001, Mr. J. Graham replied. In his letter, Mr. Graham stated:- "With regards to your fax I feel that we are waisting [sic] each others time. If you wish to purchase the name royalbankofscotlandtenerife.com which my legal officer in USA has confirmed is legaly [sic] mine, I suggest you make an offer, or as I have already stated you are waisting [sic] my time."

On February 27, 2001, the Complainants sent Mr. Graham a copy of the Uniform Domain Name Dispute Resolution Policy and stated that they were considering filing a Complaint under the Uniform Domain Name Dispute Resolution Policy if the Respondent refused to transfer the disputed domain name in return for being paid out-of-pocket expenses.

In a further fax on February 27, 2001, Mr. Graham stated:- "Thank you for the fax however, I am well aware of this paperwork as I have already received it many times before from other companies."

The Complainants submit that these statements are in accord with the statements made by Mr. Graham in his letter of February 21, 2001, and on the telephone on February 21, 2001, which suggest that Mr. Graham has engaged in a pattern of registering domain names which incorporate famous trade marks belonging to household names.

Mr. Graham continued:"If you wish to proceed with this I am happy to do so. However should you wish to make an offer I suggest you do so by 14:00 hrs today the 27 February 2001"

The Complainants replied again on February 27, 2000, repeating their offer to pay the out-of-pocket expenses incurred in registering the disputed domain name in exchange for a transfer of the disputed domain name.

On February 28, 2001, the Mr. Graham wrote: "I am prepared to transfer the name royalbankofscotlandtenerife.com (which I am the legal owner of), for £7,400 which is the negotiated price or offer to me at this moment in time."

The Complainants submit that the cost of registering and hosting a domain name with the Registrar is currently approximately US$35 a year. Mr. Graham had only written five letters and made one short telephone call to the Complainants. Accordingly, £7,400 is far in excess of the Respondent's costs in respect of the disputed domain name and the Respondent's offer to transfer the disputed domain name for that sum is an attempt to extract money from the Complainants.

On February 28, 2001, the Complainants sent a further fax to the Respondent rejecting Mr. Graham’s offer and Mr. Graham’s response on the same day was: " I have been offered £7,000 by a third party, this third party is a legitimate party in Prague. Since you are not prepared to match that offer I thank you for your correspondence and wish you all the best."

The Complainants have furnished this Administrative Panel with copies of the above correspondence. The Complainants submit that it is quite clear from this correspondence that the Respondent registered the disputed domain name in bad faith in order to profit by selling it to the Complainants, who are the owners of THE ROYAL BANK OF SCOTLAND trade mark.

The Complainants submit that this allegation is supported by the fact that the Respondent has registered the following domain names as shown by the results of Network Solutions WHOIS database searches that have been furnished to this Administrative Panel:

- <bancomarchtenerife.com>;

- <bbvtenerife.com>;

- <barclaysbanktenerife.com>;

- <lacaixatenerife.com>.

The Complainants submit that each of the above domain names registered by the Respondent consist of the name of a well known European bank, followed by the word "tenerife". Mr. Graham explained by telephone on February 21, 2001, that he registered these domain names because he believed that the banks in question including the disputed domain name were the only banks in Tenerife (a statement which is untrue as there is no Royal Bank of Scotland in Tenerife).

The Complainants claim that the Respondent is engaging in a pattern of registering domain names in bad faith for the purpose of selling or otherwise transferring the domain names to trade mark owners for valuable consideration in excess of the domain name holder’s out of pocket costs directly related to the name. The Complainants submit that the Respondent is plainly threatening trade mark owners in order to pressurise them into making substantial payments in return for the transfer of the domain names, which may otherwise be used for passing off, trade mark infringement or even to libel the trade mark owners.

The Complainants submit that the Respondent realises that any use of the disputed domain name by the Respondent or by third parties is likely to be highly damaging to the Complainants’ business. In particular, if there were to be any use by the Respondent of the disputed domain name in an e-mail address, this would be damaging to the Complainants’ business since it would lead to an erosion of the Complainants’ reputation and goodwill. Such an e-mail address could also easily be used as an instrument of fraud (as e-mail addresses containing the names of banks have been in the past) to extract money from members of the public who believe that they are dealing with a legitimate bank.

The Complainants further argue that Respondent will also realise that, if he were to develop a web site at the address of the disputed domain name, this too would be highly damaging to the Complainants’ business as it would lead to an erosion of the Complainants’ reputation and goodwill. Members of the public would no doubt be diverted via search engines to such a web site, which might be used to divert business away from the Complainants.

It is submitted by the Complainants that under English law, in the Court of Appeal decision, British Telecommunications Plc & others v One in a Million Ltd [1999] F.S.R. 1, Aldous LJ held that the unauthorised registration of domain names which incorporated the names of well-known English companies amounted to both trade mark infringement under section 10(3) of the Trade Marks Act 1994 and passing off. Furthermore the Complainants submit that in registering the disputed domain name, the Respondent has equipped himself with such an instrument of fraud and has threatened to equip another with an instrument of fraud by stating that he intends to sell it.

The Complainants request this Administrative Panel to issue a decision that the said domain name be transferred to the Second Named Complainant.

B. Respondent

No response was filed by the Respondent.

Paragraph 4(a) of the Policy places on the Complainants the onus of proving that:

With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the said domain name <royalbankofscotlandtenerife.com> is confusingly similar to the Complainants' trademark and service mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <royalbankofscotlandtenerife.com> should be transferred to the Second Named Complainant.

James Bridgeman
Sole Panelist

Dated: July 5, 2001