The Complainant is The Royal Bank of Scotland Group Plc of Edinburgh, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain eRegistration of London, United Kingdom.
The disputed domain name <rbsgprs.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2014. On October 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2014, the Complainant provided an additional annex to the Complaint, indicating that the disputed domain name reverted to an inactive website. On October 3, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 9, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 9, 2014.
The Center verified that the Complaint together with the amendment to 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 October 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 31, 2014.
The Center appointed James A. Barker as the sole panelist in this matter on November 7, 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 Complainant is the owner of numerous registrations for the trademark RBS in the United Kingdom, the United States of America (the "United States"), and many other countries, in connection with financial services and other products and services that the Complainant offers worldwide. The Complainant also operates websites at "www.rbs.com" (registered in 1994) and "www.rbsgroup.com" (registered in 1995).
The disputed domain name <rbsgprs.com> was registered on June 23, 2014.
The Complainant provided evidence that, as at October 1, 2014, the disputed domain name did not revert to an active website.
The Complainant provided a screen-shot of a previous website at the disputed domain name. That website prominently featured the Complainant's mark, a heading "Manage your money on the move", and otherwise appeared to be a legitimate website of the Complainant's, relating to mobile banking services.
The dominant part of the disputed domain name comprises the term "rbs", which is identical to the registered trademark RBS registered by the Complainant as trademarks and domain names in numerous countries all over the world.
The fame of the RBS trademark has been confirmed in numerous previous UDRP decisions before the Center. In The Royal Bank of Scotland Group plc v. State Layers, WIPO Case No. D2012-0115, the panel stated: "Further, the global presence and trading activities of the Complainant are such that the Complainant has undoubtedly a worldwide reputation and goodwill at common law. Brand awareness of the Complainant must be extensive and in all likelihood sufficient to establish the RBS mark as a famous mark."
The addition of the suffix "gprs" will not prevent a finding of confusingly similarity between the disputed domain name and the trademark RBS, instantly recognizable as a famous trademark. It is not entirely clear why the Respondent has decided to add "gprs" to the RBS trademark or what "gprs" would actually refer to in this case, but presumably it refers to ""General Packet Radio Service". Should that be the case, it is very likely referring to the Complainant's mobile banking services, for which "GPRS" is a necessity.
In light of the fame of RBS trademark, the Complainant argues that "rbs" is the distinctive element of the disputed domain name. In The Royal Bank of Scotland Group plc v. Tao Chen, WIPO Case No. D2013-2175, concerning the domain name <rbscfd.com>, the Panel stated: "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". The Complainant states that this approach has been taken is several other administrative proceedings involving the Complainant. Further, given that the disputed domain name has been used in relation to a phishing scam, the Respondent itself has viewed the disputed domain name to be confusingly similar to the RBS trademark.
Secondly, the Complainant says that the Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. Consequently, the Respondent may not claim any rights established by common usage. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark RBS. The Respondent knew of the Complainant's legal rights in the name "RBS" at the time of the registration of the disputed domain name. The Respondent has used the disputed domain name to pass itself off as the Complainant in order to defraud Complainant's customers through a fraudulent website.
Thirdly, the Complainant says that the Respondent has registered and used the disputed domain name in bad faith. The trademark RBS in respect of financial services belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation in the finance industry. The considerable value and goodwill of the mark RBS is, most likely, a large contribution to this and also what made the Respondent register the disputed domain name. The Complainant sent a cease and desist letter to the Respondent, but received no reply.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below.
It is well-established under the Policy that the generic Top Level Domain ("gTLD") ".com" extension, being merely a functional component, is to be disregarded for the purpose of determining confusing similarity. If that element is disregarded, the issue is whether the letters "rbsgprs" are confusingly similar to the textual elements of the Complainant's mark RBS.
The Complainant's mark is wholly and firstly incorporated in the disputed domain name. This is an indicator of confusing similarity. On the other hand, those letters are not sharply distinguished from the larger number of letters that follow it. There is no hyphen, or other break, between the first three letters, and the last four. It is also, as the Complainant itself admits, difficult to identify a clear association with the last four letters. Such an association might distinguish the last four letters and, as such, more clearly identify the first three letters comprising the Complainant's mark. There otherwise appears to be no meaning of those letters, and they comprise more than 50% of the disputed domain name.
The Complainant speculates that these last four letters refer to "General Packet Radio Service" which, as such, create an association with the Complainant's mobile banking service. It is not clear from the case file whether "gprs" is a common or readily understood acronym in this respect. The Panel considers that it is more likely that these four letters might be intended to be suggestive of the word "groups". A similar association with the Complainant's mark and the word "groups" was the subject of a previous case involving the Complainant's mark, and a domain name very similar to the disputed domain name:
The Royal Bank of Scotland Group plc v. Reserved Bench of Strategic Geographers / Domain ID Shield Service, WIPO Case No. D2012-0115. In that case, the panel accepted that the letters "grps" are an abbreviation for "groups," and refer to "Group" in the Complainant's name - The Royal Bank of Scotland Group Plc. On an overall impression, the Panel considers there is some potential for "rbsgprs" to also be read in the same way.
There have also been a number of other cases involving the Complainant's marks, with the addition of letters that had no obvious meaning, that were decided in the Complainant's favor: See, e.g., The Royal Bank of Scotland Group Plc v. Li Qiangm, WIPO Case No. D2013-2180, which involved the domain name <rbsmsf.com>. In that case the panel considered that the Complainant and its mark, "is well known across the world especially in relation to financial services. Consequently, the degree of familiarity and "recognizability" that the RBS trade name possesses are at a level which makes the disputed domain name objectionable, notwithstanding the additional letters [...]". This case involves a similar comparison.
For these reasons, the Panel considers that the disputed domain name is confusingly similar to Complainant's RBS trade mark. The additional letters "gprs" do not sufficiently distinguish that mark. This approach is consistent with that taken in a number of other decisions under the Policy which involved the Complainant's mark, including those referenced above.
Accordingly, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
The second thing which the Complainant must establish to succeed is that the Respondent has no rights or legitimate interests in the disputed domain name. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), for this element of the Policy, 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 disputed domain name.
The Complainant made a detailed and substantial case against the Respondent, to establish a prima facie case. The Respondent did not reply to rebut this case. The circumstances of bad faith (set out below) also reinforce the conclusion that the Respondent lacks any rights or legitimate interests in the disputed domain name.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances in which bad faith may be found. Each of those circumstances requires, or implies, that a respondent must at least have known, or ought to have known, of a complainant's rights, and sought to take unfair advantage of them.
As noted above, the Complainant has registered trademarks for RBS and a substantial reputation world-wide. The Complainant provided evidence that a previous website associated with the disputed domain name had the fraudulent appearance of one of the Complainant's websites. The Complainant provides evidence that this site was used in connection with a phishing scam (Phishing is a practice intended to defraud consumers into revealing personal and proprietary information.). In the absence of any Response or evidence to the contrary, the Panel has inferred that this previous website was also under the control of the Respondent.
In these circumstances, the Panel considers that the Respondent was almost certainly aware of the Complainant and registered and used the disputed domain name to unfairly and misleadingly exploit the value of the Complainant's mark. Such a registration and use clearly establishes bad faith for the purpose of 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 <rbsgprs.com> be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: November 21, 2014