WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Royal Bank of Scotland Group Plc v. Mark Larry, Mark co

Case No. D2014-2103

1. The Parties

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

The Respondent is Mark Larry, Mark co of Winchester, Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <rbsintuk.com> is registered with CV. Jogjacamp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2014. On December 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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 December 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2015.

The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on January 13, 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.

4. Factual Background

The Complainant is a company incorporated in Scotland, United Kingdom, which was founded in Edinburgh by Royal Charter in 1727, and is today one of the United Kingdom’s major banks.

The Complainant is the owner of several international trademark registrations for the term “RBS”, such as, inter alia, UK Registration No. 2004617 since November 23, 1994 (“the Mark”).

The Complainant offers its financial services under the Mark worldwide.

The Complainant is also the registrant of many domain names, including inter alia <rbs.com>, <rbsinternational.co.uk>, <rbsint.co.uk> and <rbsint.com>.

The disputed domain name <rbsintuk.com> was created on May 27, 2014.

5. Parties’ Contentions

A. Complainant

(i) The Complainant submits that the Mark is a famous trademark, in particular within the banking industry, as was recognized by several UDRP decisions (see The Royal Bank of Scotland Group Plc v. Mike Steinbock, WIPO Case No. D2013-0121; The Royal Bank of Scotland Group Plc v. rbseb,WIPO Case No. D2013-0735; The Royal Bank of Scotland Group Plc v. Samuel J Tummino, WIPO Case No. D2013-1232; The Royal Bank of Scotland Group plc v. Immortal Ken,WIPO Case No. D2013-1564, and The Royal Bank of Scotland Group Plc v. Li Qiang,WIPO Case No. D2013-2180).

(ii) The Complainant contends that the disputed domain name reproduces the Mark in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <rbsintuk.com>, is identical to the Mark save for its suffixes “int”, which is an abbreviation of the generic term ”international”, and ”uk”, which is an abbreviation of the geographic term “United Kingdom”. The Complainant also asserts that the addition of these suffixes does not serve to distinguish the disputed domain name <rbsintuk.com> from the Mark, and only adds to the confusion.

(iii) The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never licensed or in any way authorized the Respondent to register or use the Mark as a domain name.

(iv) The Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert Internet users for commercial gain, and that it used the disputed domain name with the fraudulent intent to lure Internet users into the belief that the Respondent is, or is acquainted with, the Complainant, and to steal account information from the Complainant’s customers.

(v) The Complainant thus submits that the Respondent has registered and used the disputed domain name in bad faith.

(vi) The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Procedural Aspects

(i) Language of the Proceeding

Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is English. The Panel determines that pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English.

(ii) Failure to respond

The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and the Rules.

Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.

In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.

B. Requirements of paragraph 4(a) of the Policy

(i) Identical or Confusingly Similar

In comparing the disputed domain name <rbsintuk.com> with the Mark, the Panel finds that the Mark is replicated entirely in the disputed domain name.

The consensus view of UDRP panels is that the addition of generic or descriptive terms does not generally serve to distinguish a domain name from a registered trademark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.

This view has been supported in respect of the Complainant by several UDRP decisions (see The Royal Bank of Scotland Group Plc v. Mike Steinbock, WIPO Case No. D2013-0121; The Royal Bank of Scotland Group Plc v. rbseb,WIPO Case No. D2013-0735; The Royal Bank of Scotland Group Plc v. Samuel J Tummino, WIPO Case No. D2013-1232; The Royal Bank of Scotland Group plc v. Immortal Ken,WIPO Case No. D2013-1564 and The Royal Bank of Scotland Group Plc v. Li Qiang,WIPO Case No. D2013-2180).

In this case, the Panel finds that the “int” and “uk” components of the disputed domain name <rbsintuk.com> are generic for one and geographic for the other, and that the dominant component of the disputed domain name is “rbs”.

Consequently, the Panel finds that the similarity between the disputed domain name and the Mark is such as to create confusion for Internet users.

Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

(ii) Rights or Legitimate Interests

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.

Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.

The website associated with the disputed domain resolved to a website which, when active, was imitating the Complainant’s official website, even displaying the RBS logotype and including a “login” feature.

No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.

On the contrary, the Complainant has argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name and (ii) has not been permitted in any way by the Complainant to register or use the Mark as a domain name.

In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.

(iii) Registered and Used in Bad Faith

As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.

It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.

In this case, the Panel notes that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. PaulBrien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.

Where the Respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.

In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact that its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.

Furthermore, the Complainant has also argued and provided evidence that the disputed domain name was fraudulently used to divert Internet users for commercial gain.

In particular, the Complainant has claimed that the use of the disputed domain name consists of a phishing scam, by using the Mark in order to deceive the Complainant’s customers and misguide them into divulging private financial information.

“Phishing” is a form of Internet fraud, often related to banking activities, that aims to obtain valuable information of clients, such as credit cards, social security numbers, user IDs, passwords, etc. A fake website is created that is similar to that of a legitimate organization, typically a financial institution such as a bank or insurance company, and unsuspecting customers will typically log in to the fake website and divulge sensitive personal information, which will then be used for identity theft.

As decided in The Royal Bank of Scotland Group Plc v. Domain Consults,WIPO Case No. D2014-1765, the Panel believes that the use of the disputed domain name for “phishing” activities is another indication of bad faith, since such practice could seriously harm the Complainant’s customers and also damage the Complainant’s reputation.

Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others, and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.

The Panel finds that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.

The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.

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 <rbsintuk.com> be transferred to the Complainant.

Louis-Bernard Buchman
Sole Panelist
Date: January 27, 2015