The Complainant is The Royal Bank of Scotland Group, Plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Boo J Tega of Angola.
The disputed domain name <rbsgrouponline.com> (the “Domain Name”) is registered with Todaynic.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2014. On April 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 16, 2014, 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 April 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2014.
The Center appointed Tee Jim Tan, S.C. as the sole panelist in this matter on May 28, 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.
4.1 The Complainant is The Royal Bank of Scotland Group Plc, a company which was founded in Edinburgh by Royal Charter in 1727 and incorporated as a public limited company in 1968. It has its principal place of business in Scotland, UK. It is the proprietor of a number of trademark registrations for the word mark RBS (the “Mark”) as well as device marks bearing the Mark (both the Mark and the device marks will collectively be referred to as the “RBS Marks”). According to the international portfolio of registered RBS Marks exhibited with the Complaint, it has no less than 300 registrations. In particular, in the United States of America, the Complainant has been the registered proprietor of the RBS Marks in Classes 9, 16, 35, 36, 38 and 42 since 2007. The Complainant also owns several domain names, such as <rbs.com> and <rbsgroup.com>. These domain names were owned by the Complainant since 1994 and 1995 respectively.
4.2 The Complainant uses the RBS Marks in respect of goods and services in the financial industry. It offers its financial services worldwide under the RBS Marks and has spent a significant amount of money promoting and developing the RBS Marks.
4.3 The Respondent is the registrant of the Domain Name at which the website “www.rbsgrouponline.com” is located (the “Website”). The Domain Name was registered on December 17, 2013.
Amongst others, the Complainant contends as follows:
5.1 The Complainant has very strong rights in the RBS Marks based on (a) its extensive use of the marks, including in connection with its domain names and (b) the numerous trademark registrations of the RBS Marks.
5.2 The Domain Name is identical or confusingly similar to the Mark and the reasons are as follows:
5.2.1 Given the reputation of the Mark, there is a considerable risk that the public will perceive the Domain Name either a domain name owned by the Complainant or that there is some kind of commercial relation between the Respondent and the Complainant.
5.2.2 The addition of the generic terms “group” and “online” will not prevent a finding of confusing similarity between the Domain Name and the Mark. Also, the addition of the generic Top-Level Domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the Domain Name and is irrelevant to determine the confusing similarity between the Domain Name and the Mark.
5.3 The Respondent has no rights or legitimate interests in respect of the Domain Name for the following reasons:
5.3.1 There is no evidence that the Respondent has any registered trademarks or trade names corresponding to the Domain Name.
5.3.2 No licence or authorization of any kind has been given by the Complainant to the Respondent to use the Mark.
5.3.3 The Respondent knew of the Complainant’s legal rights in the Mark at the time of the registration and it is the fame of the Mark which motivated the Respondent to register the Domain Name.
5.3.4 The Respondent has used to Domain Name to pass itself off as the Complainant to defraud the Complainant’s customers through a fraudulent website and in order to “phish” for financial information in an attempt to defraud the Complainant’s customers.
5.3.5 There is no disclaimer on the website describing the non-existent relationship with the Complainant.
5.4 The Domain Name was registered and used in bad faith for the following reasons:
5.4.1 The Respondent failed to respond to the Complainant’s cease and desist letter dated February 28, 2014 as well as the two subsequent reminders given by the Complainant. The failure of the Respondent to respond to the cease and desist letter and the reminders is relevant in finding bad faith.
5.4.2 The Respondent used the Domain Name to engage in a phishing scam and to deceive the Complainant’s customers into divulging their sensitive financial information.
5.4.3 The Respondent has no relationship whatsoever with the Complainant and the registration of the Domain Name in relation to some of the activities of the Complainant can only be in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in order to succeed:
(i) The Domain Name is identical with or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in absence of exceptional circumstances, decide the dispute based on the Complaint.
6.1 The Complainant has provided evidence of its trademark registrations for the RBS Marks in numerous countries worldwide. It is also incontrovertible that the Complainant has been providing financial services under the RBS Marks for several years and has operated its websites <rbs.com> and <rbsgroup.com> since 1994 and 1995 respectively. Hence, the Panel is satisfied that the RBS Marks are well known and distinctive of the Complainant’s products and services and that the Complainant has rights in the RBS Marks.
6.2 It is noted that the Domain Name incorporates the Mark in its entirety. Thus, in the Panel’s view, the Domain Name is substantially similar to the Mark in visual and aural terms, and the similarity is likely to mislead the public and Internet users to believe, and to act on the belief, that the Domain Name belongs to the Complainant or is in some way associated with the Complainant.
6.3 The Panel agrees that the likelihood of confusion is unlikely to be dispelled by the addition of the generic terms “group” and “online”. In this regard, it also agrees with the panel in Dr. ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 which had stated the long-established principle that confusing similarity is generally recognized when well known trademarks are paired up with different kinds of generic prefixes and suffixes. Further, the panel in The Royal Bank of Scotland Group Plc v. Mike Steinbock, WIPO Case No. D2013-0121 held, in relation to the domain name <rbsonlineuk.com>, that the addition of the suffixes “online” and “uk” does not detract from confusion. Rather, “the combination of “online” and “uk” add to the confusion by giving the impression that the disputed domain name belongs to the Complainant”. In the Panel’s view, these decisions are further supported by the fact that the Complainant owns the domain names <rbsgroup.com> and <rbs.com>. Accordingly, the addition of the terms “online” and “group” would in fact increase the likelihood of confusion.
6.4 Hence, the Panel is satisfied that the Domain Name is confusingly similar to the RBS Marks and that paragraph 4(a)(i) of the Policy is satisfied.
6.5 Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. Accordingly, the Respondent may demonstrate any of the following:
(i) the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or
(ii) the Respondent has been commonly known by the 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 Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
6.6 The Respondent has not filed a Response, and the Panel does not therefore have before it any evidence of the circumstances set out above or any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Domain Name.
6.7 Generally speaking, once a complainant makes a prima facie showing based on available evidence, the respondent must come forward with contrary evidence. The consensus position on this point is well-stated in Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110:
“While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complainant in the often impossible task of proving the negative. This should, as indicated correctly in WIPO Case No. D2001-0121, Julian Barnes v. Old Barn Studios, be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.”
6.8 In addition, the Panel notes paragraph 14 of the Rules which states:
“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.”
6.9 When applying this provision, previous UDRP panels have generally concluded that the respondent’s default does not automatically result in a decision in favour of the complainant. Nevertheless, a panel may draw negative inferences from the respondent’s default as per paragraph 14 of the Rules, particularly with respect to those issues uniquely in the knowledge and possession of the respondent. Indeed, several cases decided under the Policy have adopted the approach that if a respondent fails to respond and dispute the complainant’s claims, it may be inferred that the claims are true: see, e.g., Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, where the panel inferred the lack of response as “indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”.
6.10 In the present case, the Panel would make the same inference, especially as there is also no evidence that prior to its registration of the Domain Name, the Respondent is or has been known by the name RBS or that it has used or registered trademarks that are identical with or similar to the Domain Name. On the contrary, the Panel accepts that the RBS Marks have been widely used and recognised prior to the date of registration of the Domain Name such that at that date, the Respondent knew or must have known that the Complainant owns the rights to the RBS Marks. Furthermore, the use to which the Domain Name has been put does not give rise to any rights or legitimate interests.
6.11 For the above reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name and finds for the Complainant in respect of paragraph 4(a)(ii) of the Policy.
6.12 In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) Circumstances showing that the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances showing that the Respondent has registered the Domain Name primarily for the purposes of disrupting the business of a competitor; or
(iv) The Respondent has, by using the Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its 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.
6.13 By failing to file a Response to the serious claims of the Complainant, the Respondent did not take the opportunity to demonstrate that it had legitimate reasons to register and use the Domain Name and to assist the Panel to consider if the claims are legitimate and properly made out. If the Respondent legitimately registered and/or used the Domain Name in good faith, there is no reason for it to fail to submit a response and challenge the Complainant’s claims. In the Panel’s opinion, the failure to file a Response is a further indication of the fact that the Domain Name was registered and is being used in bad faith by the Respondent.
6.14 Numerous cases decided under the Policy indicate that a finding of bad faith may be made where the respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name: see, e.g., Turkcell Iletisim Hizmetleri A.S. v. Ozgur Karadag, WIPO Case No. D2011-2038.
6.15 In the present case, the Complainant has registrations of the RBS Marks worldwide which pre-date the Respondent’s registration of the Domain Name on December 17, 2013. It has also provided documentary evidence showing its use of the RBS Marks in the form of registered domain names. Hence, it is implausible that the Respondent was unaware of the RBS Marks prior to December 17, 2013.
6.16 In these circumstances, it can be inferred from the Respondent’s choice of the Domain Name that its intent was or must have been to create a false impression of an association with the Complainant and/or the Complainant’s products and services. This inference is enhanced by the get-up of the Respondent’s website which imitated the Complainant’s billing website.
6.17 Further, having reviewed the printscreens of the Website which the Complainant has provided (Annex 10 and Annex 12), the Panel notes that the Website has the “look and feel” of a website belonging to the Complainant. It is therefore of the view that the unwary Internet user (such as a customer of the Complainant) is likely to erroneously believe that Website belongs to the Complainant or is associated with the Complainant. The Respondent knew or must have known of such likelihood, which is another reason why, in the Panel’s view, the Respondent registered and is using the Domain Name in bad faith.
6.18 The Panel is satisfied on the balance of probabilities that the Domain Name was registered and is being used in bad faith. It therefore finds for the Complainant in relation to 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 Domain Name <rbsgrouponline.com> be transferred to the Complainant.
Tee Jim Tan, S.C.
Sole Panelist
Date: June 9, 2014