The Complainant is The Royal Bank of Scotland Group plc of Scotland, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Tao Chen of Chongqing, China.
The disputed domain name <rbscfd.com> (the “Disputed Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2013. On December 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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.
On December 18, 2013, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. On the same day, the Complainant transmitted an email to the Center, confirming its request that English be the language of the proceeding. The Respondent did not submit any comments by the specified due date.
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 in English and Chinese, and the proceedings commenced on December 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2014.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on February 12, 2014. 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 facts pertinent to the decision in this case are:
(i) The Complainant is the owner of the trademark RBS, which has been registered in many countries, inter alia:
a. Community Trademark, Registration No. 97469, registered on March 23, 1998.
b. International Trademark, Registration No. 856518, registered on December 10, 2004.
(ii) The Complainant has used the trademark RBS on which the Complaint is based, in connection with its banking and financial services.
(iii) The Disputed Domain Name <rbscfd.com> was registered on November 27, 2013.
The Complainant’s contentions can be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to the registered trademark of the Complainant.
The Disputed Domain Name contains the “rbs” element, which is identical to the Complainant’s RBS trademark. The incorporation of the additional suffix of “cfd” does not distinguish the Disputed Domain Name <rbscfd.com> from the Complainant’s RBS trademark.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has never authorized nor otherwise licensed the Respondent to use the Complainant’s RBS trademark. The Respondent has been using the web site to which the Disputed Domain Name resolves to pass itself off as the Complainant, which is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Disputed Domain Name was registered and is being used for the purpose of misleading Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s well-known RBS trademark as to the sponsorship, affiliation and endorsement of the Respondent’s web site.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement for the Disputed Domain Name is Chinese. The Complainant requested, in its email dated December 18, 2013 to the Center, that the language of the proceeding be English. The Complainant raised the following arguments to support its request: First, the Complainant is not familiar with Chinese due to its nationality and the place of its registered office. Second, the language of the administrative proceeding should be English due to the fact that the Respondent has chosen to register the Disputed Domain Name with a generic Top-Level Domain (gTLD) “.com”suffix.
Paragraph 11(a) of the Rules allows the Panel to determine the language of proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceedings should not be prejudicial to either of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“[I]n certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The Panel notes the following facts:
(i) The Respondent’s web site at the Disputed Domain Name appears to contain considerable text in the English language (as evidenced by the screen shot provided by the Complainant in Annex 10 to the Complaint). The Panel is therefore satisfied that the Respondent is familiar with the Complainant’s requested language.
(ii) The Panel notes that all the Center’s communications to the Respondent were made in both Chinese and English and that the Respondent was given the opportunity to object to the Complainant’s request that English be the language of the proceeding. The Respondent was also advised that, in the absence of any response from the Respondent, the Center would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of the proceeding. The Panel finds that the Respondent has been given a fair opportunity to object, and has not done so.
(iii) The Panel finds that the Complainant, being an entity incorporated under the laws of Scotland, UK, is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint and its attachments into Chinese.
(iv) The Respondent has shown no interest in responding and/or participating to this proceeding and thus the Panel finds that requiring the Complainant to translate the Complaint into Chinese will cause unnecessary delay to the proceeding.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of proceedings and the decision will be rendered in English.
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has established that it is the proprietor of the RBS trademark.
It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is generally sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark and the addition of a descriptive or non-distinctive element to the disputed domain name typically does not sufficiently differentiate the disputed domain name from the trademark (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, also see the generally adopted UDRP panel views under paragraph 1.9 of the WIPO Overview 2.0. Further, the gTLD suffix “.com” in the Disputed Domain Name is inconsequential because the use of a gTLD is required of domain name registrants, and “.com" in the instant case does not serve to distinguish the Disputed Domain Name from the trademarks in which the Complainant has rights. (Gruner + Jahr Printing & Publishing Co. v. Global Media Consulting, WIPO Case No. D2000-1395).
In the present case, the Disputed Domain Name incorporates the Complainant’s distinctive trademark RBS in its entirety, while adding only a non-distinctive element of “cfd” as a suffix to the Disputed Domain Name. The addition of this non-distinctive element is insufficient to effectively differentiate the Disputed Domain Name from the Complainant’s trademark. The RBS element is still immediately recognizable as the Complainant’s trademark. Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy sets out the following circumstances which in particular but, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] 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) [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 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 UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby:
“[…] 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 the 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 present case, the Complainant has established that it is the owner of the RBS trademark. The Complainant states that the Respondent has never received any authorization or license to use the Complainant’s trademark in the Disputed Domain Name.
The Panel notes that the registrant of the Disputed Domain Name is “Tao Chen”, and there is no evidence in the record to suggest that the Respondent might be commonly known by a name similar to the Disputed Domain Name. There is no evidence that the Respondent has any trademark or service mark rights in the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Thus, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not respond to the Complaint or give any explanation as to why the Disputed Domain Name was chosen and registered.
The Panel notes that the Respondent uses the web site at the Disputed Domain Name to attempt to pass itself off as the Complainant by stating on the web site to which the Disputed Domain Name resolves that “RBSCFD is one of its brands Fund Ltd. The Bank of Scotland were cast. Bank of Scotland Investment Fund Limited Bank of Scotland Group is an independent business entity. Bank of Scotland Investment Fund Limited is authorized and regulated by the UK Financial Services Authority of market behavior (FCA), regulation number 122139” (as evidenced by the screen shot provided by the Complainant in Annex 10 to the Complaint), while the Complainant asserts that the Respondent is not entitled to have any rights or any relationship with the RBS trademark and the Respondent did not produce any evidence establishing otherwise.
Therefore, given the allegations and evidence provided by the Complainant, and in the absence of any reply from the Respondent, the Panel finds it is reasonable to conclude that the Respondent deliberately chose to include the Complainant’s RBS trademark in the Disputed Domain Name for the purpose of achieving commercial advantage by misleadingly diverting Internet users to the web site at the Disputed Domain Name and that such use cannot be considered a legitimate noncommercial or fair use. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
In relation to bad faith at the time of registration, the Panel notes that the Complainant has established that its RBS trademarks have been registered in many countries and acquired an international reputation prior to the date the Disputed Domain Name was registered in 2013. The Respondent’s choice to incorporate the identical “rbs” element as the primary distinctive element of the Disputed Domain Name suggests that the Disputed Domain Name was registered in bad faith. There is no allegation or evidence suggesting that the Respondent selected RBS trademark as used in the Disputed Domain Name for any reason other than the reputation of the trademark. The subsequent use of the Complainant’s RBS trademark in the web site to which the Disputed Domain Name resolves further shows that the Complainant’s RBS trademark was chosen for the Disputed Domain Name in bad faith (as evidenced by the screen shot provided by the Complainant in Annex 10 to the Complaint). The Respondent did not reply to the Complaint nor submit any evidence to the contrary, and the Panel therefore finds that the Disputed Domain Name was registered in bad faith.
In relation to use in bad faith, the Panel notes the fact that the Complainant has sent a warning letter (as shown in Annex 11 to the Complaint) to the Respondent in an attempt to resolve the dispute regarding the Disputed Domain Name, but the Respondent failed to reply. The Panel also notes that the Disputed Domain Name resolves to a web site in which the Respondent uses the RBS trademark with a clear attempt to pass itself off as the Complainant or an entity connected to the Complainant by the statement of “RBSCFD is one of its brands Fund Ltd. The Bank of Scotland were cast. Bank of Scotland Investment Fund Limited Bank of Scotland Group is an independent business entity. Bank of Scotland Investment Fund is authorized and regulated by the UK Financial Services Authority of market behavior (FCA), regulation number 122139” (as evidenced by the screen shot provided by the Complainant in Annex 10 to the Complaint). The Panel finds that such use demonstrates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion. Therefore, the Panel finds that the Disputed Domain Name is being used in bad faith.
Based on the above findings, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.
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 <rbscfd.com> be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: February 26, 2014