Complainant is The Royal Bank of Scotland Group Plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
Respondents are Fan Wang/Wang Fan Ke Ji and Zhi Shi Zhi/VKTIME LIMITED of Shenzhen, Guangdong, China.
The disputed domain names <rbsfx-china.com> and <rbs-fx.com> are registered with Chengdu West Dimension Digital Technology Co., Ltd. West263 International Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2015. On July 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants and providing the contact details.
On July 10, 2015, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On July 10, 2015, Complainant confirmed its request that English be the language of the proceeding. Respondents did not comment on the language of the proceeding 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 Respondents of the Complaint, and the proceeding commenced on July 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2015. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on August 10, 2015.
The Center appointed Yijun Tian as the sole panelist in this matter on August 24, 2015. 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.
Complainant, The Royal Bank of Scotland Group Plc, is a company incorporated in Edinburgh, Scotland, UK. Founded in 1727, Complainant has been one of the top UK banks for many years. Complainant has offices in various locations around the world, including in Hong Kong, China. Complainant has been operating in the Chinese market for more than a century, and has been recognized as a strong, agile and fast growing bank in China, and has received numerous awards, such as “Best Foreign Transaction Bank” and “Best Foreign Bank on Cash Management” (Annex 8.3 to the Complaint).
Complainant has exclusive rights in the RBS Marks. Complainant is the exclusive owner of famous and well-known registered trademarks globally, including in the European Union (“EU”) (since March 23, 1998), the UK (since January 5, 1996), the United States of America (“US”) (November 11, 2008), Hong Kong, China (June 28, 2004), and China (since August 7, 2009) (Annexes 6.1- 6.5 to the Complaint).
Complainant also operates its official websites at domain names such as <rbs.com> (registered in 1994) and <rbs.co.uk> (registered in 1996) (Annex 8.1 to the Complaint).
Respondents are Fan Wang/Wang Fan Ke Ji and Zhi Shi Zhi/VKTIME LIMITED, located in Shenzhen, Guangdong, China. The disputed domain names <rbsfx-china.com> and <rbs-fx.com> were registered on April 3, 2015 and March 25, 2015 respectively. At the time of this decision, the disputed domain names do not resolve to any active webpages. But based on the evidence provided by Complainant, the disputed domain names previously resolved to websites imitating Complainant’s business (Annex 9 to the Complaint).
Complainant contends that the disputed domain names <rbsfx-china.com> and <rbs-fx.com> are confusingly similar to its trademark RBS, the registration and use of which by Complainant precedes the registration of the disputed domain names.
Complainant contends that Respondents have no rights or legitimate interests in respect of the disputed domain names.
Complainant contends that the disputed domain names were registered and are being used in bad faith.
Complainant requests that the disputed domain names <rbsfx-china.com> and <rbs-fx.com> be transferred to it.
Respondents did not reply to Complainant’s contentions.
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondents to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The previous websites resolved from the disputed domain names included both Chinese and English versions.
(b) The previous websites resolved from the disputed domain names have been used to imitate Complainant’s official website and Respondents have not responded to Complainant’s attempts to make contact with the owner of the disputed domain names.
(c) The previous websites were available in English suggesting that Respondents are able to understand English.
(d) It would be cumbersome and to Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese.
Respondents did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding 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 the proceeding. 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; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the Parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in 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 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.” (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from the UK, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the disputed domain names include Latin characters and the English abbreviations “rbs” (for “Royal Bank of Scotland”), “fx” (for “Foreign Exchange”), as well as the English word “china” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondents appear to be Chinese individuals and are thus presumably not native English speakers, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondents have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names <rbsfx-china.com> and <rbs-fx.com> are registered in Latin characters and particularly in the English language, rather than Chinese script; (b) The previous website resolved from the disputed domain name <rbsfx-china.com> was in Chinese and English, and Respondents were apparently doing business in Chinese and English through the website; and the previous website resolved from the disputed domain name <rbs-fx.com> was in English, and Respondents were apparently doing business in English through the website (Annex 9 to the Complaint); (c) the websites appear to have been directed to users worldwide (including English speakers); (d) the Center has notified Respondents of the proceeding in both Chinese and English, and Respondents have indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondents that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
As a preliminary matter the Panel finds it appropriate, given the evidence of common control of the disputed domain names provided by the Complainant, to consolidate complaints against multiple Respondents in a single Decision.
The Panel finds that Complainant has rights in the RBS Marks acquired through registration. The RBS Mark has been registered worldwide including in the UK, the US, Hong Kong, China and China, and Complainant has had a widespread reputation as one of the top UK banks for many years. Complainant has been operating in the Chinese market for more than a century, and has been recognized as a strong, agile and fast growing bank in China and have received numerous awards (Annex 8.3 to the Complaint).
The disputed domain names comprise the RBS Mark in its entirety. The disputed domain names <rbsfx-china.com> and <rbs-fx.com> only differ from Complainant’s trademark by the additions of the words “fx”, “china”, or by a hyphen “-”. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademark and the disputed domain names.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name.” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).
The mere addition of the descriptive terms “fx” (for “foreign exchange”), and “china” and/or a hyphen “-” as suffixes to Complainant’s mark fails to distinguish to this Panel the disputed domain names from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. The “fx” is one of Complainant’s services. “China” is where Complainant’s company has branches. Internet users who visit <rbsfx-china.com> and <rbs-fx.com> are likely to be confused and may falsely believe that <rbsfx-china.com> and <rbs-fx.com> are operated by Complainant for providing RBS-branded financial services, such as foreign exchange.
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the RBS Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondents have rights or legitimate interests in the disputed domain names:
(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) having been commonly known by the disputed domain names; or
(iii) legitimate noncommercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with Complainant. However, it is well established that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the RBS Mark globally, including registration in the EU (since March 23, 1998), registration in the UK (since January 5, 1996), registration in the US (November 11, 2008), registration in Hong Kong, China (June 28, 2004), and registration in China (since August 7, 2009) (Annexes 6.1- 6.5 to the Complaint), which long precedes Respondents’ registrations of the disputed domain names (April 3, 2015 and March 25, 2015 respectively).
Moreover, Respondents are not an authorized dealer of RBS-branded products/services. Complainant has therefore established a prima facie case that Respondents have no rights or legitimate interests in the disputed domain names and thereby has shifted the burden to Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondents are using the disputed domain names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “RBS” in the disputed domain names or the use of the RBS Marks and design on their websites (“www.rbsfx-china.com” and “www.rbs-fx.com” ) (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the RBS Mark or to apply for or use any domain name incorporating the RBS Mark.
(b) There has been no evidence adduced to show that Respondents have been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the disputed domain names. Respondents registered the disputed domain names <rbsfx-china.com> and <rbs-fx.com> on April 3, 2015 and March 25, 2015 respectively, long after Complainant’s registrations of the RBS Marks (e.g., in the UK since 1996; in China since 2009). The disputed domain names are identical or confusingly similar to Complainant’s RBS Mark.
(c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondents were in actuality advertising, offering and selling purported RBS products/services at <rbsfx-china.com> and <rbs-fx.com> (Annex 9 to the Complaint), mimicking one of Complainant’s websites.
The Panel finds that Respondents have failed to produce any evidence to establish their rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondents’ documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondents have engaged in a pattern of such conduct; or
(iii) Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites or location or of a product or service on Respondents’ website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and used the disputed domain names in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the RBS Marks with regard to its products and services. Complainant has registered its RBS Marks internationally, including registration in China (since 2009). Moreover, Respondents used the RBS Marks and design on their websites “www.rbsfx-china.com” and “www.rbs-fx.com” (without disclaimer or other clarifying details), and the websites advertised for sale various purported RBS products and services. Respondents would likely not have advertised products and/or services purporting to be RBS products and/or services on the websites if they were unaware of RBS’s reputation. In the other words, it is not conceivable that Respondents would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain names. The Panel also finds that the RBS Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondents have chosen not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith.” (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s RBS-branded products and/or services.
b) Used in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain names, Respondents has “intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites” purportedly offering Complainant’s RBS-branded products and/or services without authorization. Complainant claimed that, by using the disputed domain names to imitate Complainant, Respondents were “not making a legitimate noncommercial or fair use without intent for commercial gain, but were misleadingly diverting consumers for their own commercial gain”.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the RBS Marks (as well as the content on Respondents’ previous websites “www.rbsfx-china.com” and “www.rbs-fx.com” as mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain names <rbsfx-china.com> and <rbs-fx.com> have a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain names are resolved. In other words, Respondents have through the use of confusingly similar domain names and webpage contents created a likelihood of confusion with the RBS Marks.
Noting also that apparently no clarification as to Respondents’ relationship to Complainant is made on the homepages of the disputed domain names <rbsfx-china.com> and <rbs-fx.com>, potential Internet users are led to believe that the websites at “www.rbsfx-china.com” and “www.rbs-fx.com” are either Complainant’s sites or the sites of official authorized agents of Complainant, which they are not. Moreover, Respondents have not responded to the Complaint. The Panel therefore concludes that the disputed domain names were used by Respondents in bad faith.
At the time this decision is rendered, the disputed domain names <rbsfx-china.com> and <rbs-fx.com> are currently inactive. In terms of inactive domain names, the WIPO Overview 2.0 provides: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith” (paragraph 3.2., WIPO Overview 2.0). The WIPO Overview 2.0 further states: “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
Based on information provided by Complainant, founded in 1727, Complainant has been one of the top UK banks for many years. Complainant has offices in various locations around the world, and has been recognized as a strong, agile and fast growing bank in China, and has received numerous awards. Complainant has rights in the RBS Marks globally, including registration in the UK (since January 5, 1996) and registration in China (since August 7, 2009). As such, Complainant’s RBS Marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that the passively held disputed domain names are used by Respondents in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <rbsfx-china.com> and <rbs-fx.com>, be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: September 11, 2015