WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Royal Bank of Scotland Group Plc. v. Brandi J Copp

Case No. D2013-0450

1. The Parties

The Complainant is The Royal Bank of Scotland Group Plc., London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Melbourne IT Digital Brand Services AB, Sweden.

The Respondent is Brandi J Copp of Haysville Kansas, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <rbslondon.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2013. On March 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2013, 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 March 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2013. No official Response was filed with the Center, however, two emails were received from Brandi Copp on March 15 and 19, 2013 stating the following “I have received a letter about a domain name and I have no idea what this is or what it is about. I am concerned as to how you got my information. This looks to be fraud and I have no problem talking this to the police. You need to explain as to how you for my information”.

The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on April 17, 2013. 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 in this administrative proceeding is The Royal Bank of Scotland Group Plc, a company incorporated in Scotland and the proprietor of the RBS trademark, and other trademarks used in connection with the RBS brand.

The Complainant was founded in Edinburgh by Royal Charter in 1727 and is one of the oldest banks in the UK. It was incorporated as a public limited company in the UK in 1968.

The Complainant holds several USPTO trademarks with registration numbers 3529700, 3185538, 3198052 registered in 2008, 2006 and 2007.

The Complainant operates websites such as “www.rbs.com” (registered 1994) and “www.rbsgroup.com” (registered in 1995).

The disputed domain name was registered on January 21, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the dominant part of the Disputed Domain Name comprises the term “RBS”, which is identical to the registered trademark RBS. The addition of the suffix “london” does not have any impact on the overall impression of the dominant part of the Disputed Domain Name, RBS. The addition of the top-level domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of 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 rights or legitimate interests in the Disputed Domain Name. Consequently the Respondent may not claim any rights established by common usage. It is also clear, that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark RBS.

The Complainant asserts that the Respondent has used the Disputed Domain Name to pass itself off as the Complainant in order to defraud the Complainant’s customers through a script being run as a “man in the middle attack. The Respondent used the Disputed Domain Name to “phish” for financial information in an attempt to defraud the Complainant’s customers.

The Complainant alleges that it is obvious that the Respondent knew of the Complainant’s legal rights in the name RBS at the time of the registration and it is the fame of the trademark that has motivated the Respondent to register the Disputed Domain Name.

The Complainant informs it first tried to contact the Respondent on January 25, 2013 through a cease and desist letter. Despite a reminder sent, no response was received.

The Complainant also alleges that even if the website is currently inactive, such passive holding could still constitute an act of bad faith and any realistic use of the Disputed Domain Name by the Respondent would constitute “passing off” and/or trademark infringement.

To summarize, the Complainant alleges that RBS is a famous trademark worldwide, that it is obvious that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration, that there is no connection between the Respondent and the Complainant and that, by using the Disputed Domain Name for fraudulent purposes, the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is committing a criminal offence and misleadingly diverting consumers for his own commercial gain.

B. Respondent

No official Response was filed with the Center, however, two emails were received from Brandi Copp on March 15 and 19, 2013 stating the following “I have received a letter about a domain name and I have no idea what this is or what it is about. I am concerned as to how you got my information. This looks to be fraud and I have no problem talking this to the police. You need to explain as to how you for my information”.

6. Discussion and Findings

The Panel notes the Respondent’s communications suggesting that the Disputed Domain Name may have been registered by a third Party using the Respondent’s details without its knowledge or authorization. However, the Respondent has not put forward any evidence to substantiate any such claim. The Panel finds that pursuant to the Rules and Policy, the registrant is the proper Respondent under the circumstances and will proceed to issue its decision accordingly. See Intesa Sanpaolo S.p.A. v. Sally R. Fosbrink, Shivasdf Ltd.co, WIPO Case No. D2012-0586.

Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s RBS trademark. The fame of the trademark has been confirmed in numerous previous UDRP decisions. To name a few, Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a. Telmex Management Services, Inc., WIPO Case No. D2002-0155; The Royal Bank of Scotland Group plc and The Royal Bank of Scotland plc v. "Christopher Graham" or "John Graham" dba GRA Marketing CL, WIPO Case No. D2001-0626; The Royal Bank Of Scotland Group Plc v. Btcgroup, Henry Gonzales, WIPO Case No. D2012-2093; The Royal Bank Of Scotland Group Plc v. Domain Whois Protection Service / Zhu Jinxiong, WIPO Case No. D2012-2094; The Royal Bank Of Scotland Group Plc And National Westminster Bank Plc V Pritpal Jittla, NAF Claim No. 660550; The Royal Bank of Scotland Group plc v rbspayments, NAF Claim No. 728805; The Royal Bank of Scotland Group plc, Citizens Financial Group, Inc., Churchill Insurance Co. Ltd., Hanco ATM Systems Ltd. & Privilege Insurance Co. Ltd. v. Domaincar c/o Perthshire Marketing aka Domaincar, NAF Claim No. 671079; The Royal Bank of Scotland Group plc and The Royal Bank of Scotland International Limited v Yorgi Brawn, NAF Claim 787945; The Royal Bank of Scotland Group plc v Navigation Catalyst Systems, Inc, NAF Claim No. 813065; The Royal Bank of Scotland Group plc v Caribbean Online International Ltd., NAF Claim No. 849147; The Royal Bank of Scotland Group plc v. Domain Discreet c/o ATTN: rbs-edinburgh.com, NAF Claim No. 986696; The Royal Bank of Scotland Group plc v Teddy Jackson, NAF Claim 992134; The Royal Bank of Scotland Group plc v Jim Bowen, NAF Claim No. 1045991; The Royal Bank of Scotland Group plc v Ramzi Takch, NAF Claim No. 1106036, The Royal Bank of Scotland Group plc v PrivacyProtect.org c/o Domain Admin, NAF Claim No. 1128875; The Royal Bank of Scotland Group plc v UBA c/o ICB011857 ICB011857, NAF Claim No. 1189004; The Royal Bank of Scotland Group plc v N/A c/o Bryan I., NAF Claim No. 1199346

The Panel finds that the addition of a geographic term, such as “london”, is not enough to escape a finding of confusing similarity. On the contrary, ir is likely to increase the possibility of confusion amongst consumers. Also, under the Policy, the addition of the “.com” generic Top-Level Domain is immaterial when considering the issue of confusing similarity between a complainant’s trade mark and a domain name.

The Panel, therefore, finds that the Complainant has established the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has alleged that the Respondent has no rights or legitimate interests in the Disputed Domain Name that contains in its entirety the Complainant’s RBS trademark.

The Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production shifts to the Respondent to show that it does have rights or legitimate interests in the Disputed Domain Name, according to paragraph 4(a)(ii) of the Policy. The Respondent did not file a formal response and the email she sent does not address the merits of the dispute and, therefore, the Respondent did not submit any evidence of rights or legitimate interests over the disputed domain name.

With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared 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. In fact, the Complainant has submitted evidence showing that the Disputed Domain Name has been used in connection with phishing scam.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.

With respect to paragraph 4(c)(iii) of the Policy, there is no evidence that the Respondent has made or is making a legitimate noncommercial or fair use of the disputed domain name. At the time of this Decision, the Disputed Domain Name was and is used to host a website that only shows the following message: “ThanK You for visiting ROYAL BANK OF SCOTLAND, LONDON BRANCH. You will be redirected to our official website in a few second please wait.” This is not a legitimate noncommercial or fair use of the Disputed Domain Name. Customers seeking the Complainant’s services are likely to believe that such website is an official website of the Complainant.

In view of the above, the Panel finds that the Complainant has established the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has intentionally registered the Disputed Domain Name, which reproduces the Complainant’s famous trademark RBS together with a geographic term. By the time the Disputed Domain Name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant’s rights in the trademark RBS.

The Complainant’s allegations of bad faith are not contested. The evidence provided by the Complainant confirms that it had long been using its RBS registered trademark when the Disputed Domain Name was registered. The Panel finds that the Respondent must have been aware of the Complainant’s rights in the trademark when it registered the Disputed Domain Name. The Panel finds that the evidence showing that the Disputed Domain Name was used in connection with fraud and phishing scams is sufficient for a finding of bad faith registration and use of the Disputed Domain Name.

Also, under paragraph 4(b)(iv) of the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

At the time of this Decision, the Disputed Domain Name was and is used to host a website that only shows the following message: “ThanK You for visiting ROYAL BANK OF SCOTLAND, LONDON BRANCH. You will be redirected to our official website in a few second please wait.” This is evidence of the intention by the Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

In light of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Complainant has established the third element of 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 <rbslondon.com> be transferred to the Complainant.

Luiz E. Montaury Pimenta
Sole Panelist
Date: May 2, 2013