WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Royal Bank of Scotland Group Plc v. Kyley Pratt

Case No. D2013-2231

1. The Parties

The Complainant is The Royal Bank of Scotland Group Plc of Edinburgh, Scotland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Kyley Pratt of Lawrence, Massachusetts, United States of America (“U.S.”).

2. The Domain Name and Registrar

The disputed domain name <rbsinternetaccount.com> is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 January 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2014.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 3, 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. Factual Background

The Complainant, The Royal Bank of Scotland Group Plc, is a company incorporated in Scotland offering financial services worldwide under the trademark RBS. The Complainant was founded in Edinburgh by Royal Charter in 1727 and is one of the oldest banks in the United Kingdom.

The Complainant has proved to be the registered owner of numerous registrations for the RBS trademark in many countries, including U.S. The Complainant opened its first office in the U.S. in 1960 and it is one of the largest providers of liquidity in the U.S.

The Complainant also operates websites such as “www.rbs.com” (registered in 1994) and “www.rbsgroup.com” (registered in 1995). The Complainant has proved to hold an impressive number of domain name registrations containing and/or corresponding to the RBS trademark.

The disputed domain name <rbsinternetaccount.com> was registered on July 4, 2013. At the time of rendering this decision, the disputed domain name resolves to a website on which the following message is displayed “This domain name maybe for sale! Buy it now!”.

The Complainant’s trademark and domain name registrations long predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s renowned RBS registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent has both registered and used the disputed domain name in bad faith, to “phish” for financial information in an attempt to defraud the Complainant’s customers.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, the Policy paragraphs 4(a)(i) - (iii) require that the Complainant must demonstrate to the Panel that:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has rights to the RBS trademark.

The disputed domain name contains entirely the Complainant’s RBS trademark which is combined with the generic terms “internet” and “account”.

The Complainant affirms that “rbs” forms the first, dominant, most significant and distinctive element of the disputed domain name. The Complainant further submits that the additional words “internet” and “account” in the disputed domain name are not dominant, being merely generic and descriptive. The Complainant finally affirms that the addition of the terms “internet” and “account”, being the Complainant extensively engaged in online banking, does not prevent a finding of confusingly similarity between the disputed domain name and the Complainant’s trademark. On the contrary, it is the Complainant’s contention that the addition of the above said terms is rather fitted to strengthen the impression of an association with the Complainant.

This Panel agrees with the Complainant’s contention that “rbs” is the only distinctive part and that the addition of the generic terms does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. Moreover, it is now well established by many previous UDRP decisions that the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark RBS in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case and, thus, that the Respondent has no connection or affiliation with the Complainant that has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name “rbsinternetaccount” or by a similar name. Furthermore, the Panel notes that the disputed domain name currently resolves to a website on which the following message is displayed “This domain name maybe for sale! Buy it now!” Finally, the Respondent has not rebutted the Complainant’s contentions, and therefore failed to prove any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the Respondent registered the disputed domain name with the knowledge of the Complainant’s RBS trademark.

In primis, the fact, proved by the Complainant, that the Respondent has used the disputed domain name to pass itself off as the Complainant in order to defraud the Complainant’s customers through a fraudulent website, constitutes clear evidence that the Respondent was aware of the Complainant’s services and trademarks. This is an unmistakable element from which to infer the bad faith registration of the disputed domain name.

Secondly, the fact that the Respondent previously used the disputed domain name in a phishing activity, namely to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information, is further inference of bad faith use of the disputed domain name.

Another inference of bad faith in registering and using the disputed domain name is given by the fact that the Respondent never replied to the Complainant’s cease and desist letter.

Therefore, based upon the available record, the Panel finds that the Respondent knew of the Complainant’s services and trademarks and intentionally intended to create an association with the Complainant and its business; that the Respondent, as evidenced by the Complainant, used the disputed domain name for purposes of phishing scheme (noting that the website at the disputed domain name included the graphic reproduction of the Complainant’s registered trademark and a platform for Internet users to provide their banking-related information), and therefore must have had actual knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name; and that the above described use of the disputed domain name, i.e., to divert Internet traffic to the Respondent’s website, falls clearly within the example of bad faith set out in 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent has registered and is using the disputed domain name in bad faith.

Therefore, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <rbsinternetaccount.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: February 11, 2014