WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Royal Bank of Scotland Group Plc v. rbseb

Case No. D2013-0735

1. The Parties

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

The Respondent is rbseb of California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <rbseb.com> (the “Disputed Domain Name”) is registered with Wild West Domains, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2013. On April 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 24, 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”).

The Center sent the Complaint, including any annexes, in electronic form by email to “[email protected]” and the email address shown in the domain name's registration data in the Registrar’s WhoIs database for the technical and administrative contact on April 25, 2013. The Center received the announcement that the email delivery to “[email protected]” had failed on April 25, 2013, but the Center has not received such announcement about the email addresses for those technical and administrative contacts. The Center sent a Written Notice of the Complaint (together with the explanatory cover sheet prescribed by the Provider’s Supplemental Rules) by courier to the postal mail address shown in the Disputed Domain Name’s registration data in the Registrar’s WhoIs database for the registered domain name holder and the technical and administrative contact on April 25, 2013. The Written Notice of the Complaint (together with the explanatory cover sheet prescribed by the Provider’s Supplemental Rules) was received by the Administrative and Technical contact of the Disputed Domain Name (“J. Easter” (hereinafter “Person A”) ) shown in the Disputed Domain Name’s registration data in the Registrar’s WhoIs database on April 29, 2013. Incidentally, “rbseb” is the name of the registered domain name holder shown in the Disputed Domain Name’s registration data in the Registrar’s WhoIs database.

Thus, 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 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2013. The Respondent did not submit any formal response. Incidentally, Person A’s husband sent an email communication to the Center on May 10, 2013 informing the Center on her behalf that Person A was his wife, and that she has no association or connection with the Disputed Domain Name and someone has misappropriated her name and address and is improperly using it without her authorization. The Center sent an email communication on May 14, 2013 informing the Respondent that it is the role of the Panel to make the final determination as to the identity of the Respondent.

The Center appointed Yukukazu Hanamizu as the sole panelist in this matter on June 4, 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 operates financial services. The Complainant is a company incorporated in Scotland. The Complainant was founded in Edinburgh by Royal Charter in 1727 and was incorporated as a public limited company in the UK in 1968. The Complainant opened its first office in the United States in 1960.

The Complainant has registered and owns the trademark RBS and numerous trademarks that incorporate or utilize the RBS brand. Among these trademarks is a US trademark registration No. 3185538, dated October 3, 2006.

The Complainant also operates websites with domain names such as <rbs.com>, registered in 1994.

The Disputed Domain Name was registered on March 15, 2013 but the website linked to the Disputed Domain Name is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant alleges, firstly, that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark under the Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii) and (b)(ix)(1). Secondly, the Respondent has no rights or legitimate interests in the Disputed Domain Name under the Policy, paragraph 4(a)(ii) and Rules, paragraph 3(b)(ix)(2). Thirdly, the Respondent registered and used the Disputed Domain Name in bad faith, contrary to the Policy, paragraphs 4(a)(iii), 4(b) and Rules, paragraph 3(b)(ix)(3).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Identity of the Respondent

In accordance with the Rules, paragraph 1, “Respondent” means the holder of a domain-name registration against which a complaint is initiated.

The Complaint is initiated against “rbseb” of California, United States of America. The Panel notes that “rbseb” of California, United States of America is the Registrant shown in the Disputed Domain Name’s registration data in the Registrar’s WhoIs database. However, it seems that “rbseb” does not refer to any particular individual or organization.

On the other hand, it seems that Person A may be the domain name beneficial owner because her name is accorded with the technical and administrative contact’s name and her address is accorded with the domain name holder and the technical and administrative contact’s address shown in the Disputed Domain Name’s registration data in the Registrar’s WhoIs database. However, as described in “3. Procedural History”, it was informed the Center that Person A was his wife, and that she has no association or connection with the Disputed Domain Name and someone has misappropriated her name and address and are improperly using it without her authorization. Thus, the Panel does not have any conclusive evidence that the Respondent is rbseb and/or Person A. of California, United States of America.

Therefore, the Panel determines that the Respondent is “rbseb” / an unidentified individual or organization of California, United States of America.

6.2. Three Conditions Specified in Paragraph 4(a) of the Policy

6.2.A. Identical or Confusingly Similar

Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes, see Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488.

The Disputed Domain Name “rbseb” does not have any special meaning in itself.

As the Complainant is the owner of the trademark RBS and based on the evidence produced by the Complainant, the Panel finds that the Complainant’s name, its trademark RBS and its domain name <rbs.com> are well-known around the world, including in the United States in the field of banking services. Furthermore, “eb” does not have any inherent meaning by itself, but the first three letters contain the well-known trademark for banking services and accordingly “eb” may lead to interpretation of abbreviation such as electronic banking or other banking services

Furthermore, in determining whether a domain name and a complainant’s mark are confusingly similar, in some circumstances a respondent’s conduct can be relevant in making such a determination, see Fort Lee Chamber of Commerce v. Carmine A DeMarco, WIPO Case No. D2002-0291 and BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi. WIPO Case No. D2004-0717. If it is clear that a respondent registered a domain name with a specific intention of creating Internet user confusion between it and a complainant, it may be relevant to the panel’s determination that a domain name is confusingly similar to that complainant’s mark, see paragraph 1.2 of the WIPO Overview WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”).

The website of the Disputed Domain Name is currently inactive. However, according to the evidence produced by the Complainant, the top left corner of the website of the Disputed Domain Name displayed “RBS Group” and the website appeared identical to that of the Complainant at some point in the past.

Thus, the Panel finds that the Respondent attempted to pass itself off as the Complainant and it is clear that the Respondent registered the Disputed Domain Name with a specific intention of creating Internet user confusion between it and the Complainant.

For all of the above reasons, the Panel finds that the Disputed Domain Name is confusingly similar to the trademark RBS for which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled.

6.2.B. Rights or Legitimate Interests

As contended by the Complainant, the Respondent does not have a license, permission or other relationship that allows it to own or use the Disputed Domain Name.

The website of the Disputed Domain Name is currently inactive. According to the evidence produced by the Complainant, the top left corner of the website of the Disputed Domain Name displayed “RBS Group” and the website appeared identical to that of the Complainant at some point in the past. Thus, the Panel finds that the Respondent attempted to pass itself off as the Complainant.

Also, based on the evidence produced by the Complainant, the Complainant attempted to contact the Respondent by sending a cease-and-desist letter on March 25, 2013, to which the Respondent never replied.

There is no evidence of any use of, or demonstrable preparations to use on the part of the Respondent, the Disputed Domain Name in connection with a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy.

There is also no evidence to indicate that the Respondent is really known by the name “rbseb” (apart from the fact that this is what appears on the WhoIs) that the Respondent used the Disputed Domain Name in line with paragraph 4(c)(iii) of the Policy.

For all of the above reasons, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and the burden of production shifts to the Respondent accordingly. Failure of the Respondent to respond allows the Panel to conclude that there is no evidence with respect to the Respondent’s rights and legitimate interests in the Disputed Domain Name.

For all of the above reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and therefore the condition of paragraph 4(a)(ii) is fulfilled.

6.2.C. Registered and Used in Bad Faith

Based on the evidence produced by the Complainant, the Panel finds that the Complainant’s name, its trademark RBS, its website “www.rbs.com” are well-known around the world, including in the United States, where the Respondent resides.

The website of the Disputed Domain Name is currently inactive. According to the evidence produced by the Complainant, the top left corner of the website of the Disputed Domain Name displayed “RBS Group” and the website appeared identical to that of the Complainant at some point in the past. Thus, the Panel finds that the Respondent attempted to pass itself off as the Complainant.

For all of the above reasons, the Panel finds that the Respondent must have had knowledge of the Complainant, its trademark RBS and its website “www.rbs.com” at the time of registering the Disputed Domain Name. Hence, the Panel concludes that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

Moreover, the Complainant attempted to contact the Respondent by sending a cease-and-desist letter. And as contended by the Complainant, the Respondent did not reply to it.

For all of the above reasons, the Panel finds that the Respondent has registered and used in bad faith, the Disputed Domain Name pursuant to paragraph 4(b)(iv) of the Policy.

Incidentally, the website of the Disputed Domain Name is currently inactive. However, there is no evidence or suggestion that the Respondent has any intention of using the Disputed Domain Name for any purpose or legitimate activity consistent with good faith. Furthermore, the lack of active use of a domain name typically does not prevent a finding of bad faith, noting the Complainant’s ownership of a well-known trademark, the lack of Response to the Complaint, and the Respondent’s concealment of its identity. see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

For all of the above reasons, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith, and therefore the condition of paragraph 4(a)(iii) is fulfilled.

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 <rbseb.com> be transferred to the Complainant.

Yukukazu Hanamizu
Sole Panelist
Date: June 18, 2013