The Royal Bank of Scotland Group Plc – v – John Wilfred

Nominet UK Dispute Resolution Service

DRS 03952

online–rbs.co.uk

Decision of Independent Expert

1.	PARTIES:

	Complainant:			The Royal Bank of Scotland Group Plc
		Respondent:			John Wilfred
					US
2.	DOMAIN NAME:

	online-rbs.co.uk  (“the Domain Name”).

3.	PROCEDURAL BACKGROUND:

3.1	The Complainant has complained to Nominet.uk ("Nominet").  The dispute was entered into the Nominet Dispute Resolution Service (DRS) system on 29th August 2006.  Hardcopies of the Complaint were received in full by Nominet on 29th August 2006 and Nominet validated the Complaint and sent a copy to the Respondent on the same day.  No response has been received from the Respondent and the Complainant paid the fee for an expert decision on 27th September 2006.

3.2	On 29th September 2006 Nominet invited Nick Phillips the undersigned expert (the "Expert") to provide an expert decision on the case.  The Expert confirms that he knows of no reason why he should not accept the appointment and that he knows of no reason why his independence or impartiality might be called into question.

4.	OUTSTANDING FORMAL/PROCEDURAL ISSUES: 

4.1	The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5(a) of the DRS Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”).

4.2	Paragraph 15(b) of the Procedure provides that: “If, in the absence of exceptional circumstances, a party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the Complaint.”

4.3	Nominet has used all available contact details to try and bring the Complaint to the Respondent’s attention.  There do not appear to be any exceptional circumstances involved, and in accordance with Paragraph 15(b) of the Procedure, a decision will be made on the Complaint notwithstanding the absence of a response.

5.	THE FACTS:

5.1	The Domain Name was registered by the Respondent on 28th March 2006.

5.2	The Complainant is one of the world’s leading financial services providers and one of the oldest banks in the UK.  In addition to its UK presence it has offices in Europe, in the United States and Asia.

5.3	The Complainant is a UK Limited company and has been registered as a limited company in the UK since 1968.

5.4	The Complainant is the owner of a number of domain names including, “rbs-online.co.uk”, “rbs.co.uk” and “rbs.com”.  These domain names are linked to a number of websites owned by the Complainant and through which it offers a variety of financial services.

5.5	The Complainant has numerous trade mark registrations for the mark, “RBS” including registrations for this word mark in the UK and in the European Community.

5.6	The Respondent uses the Domain Name to link to a page entitled, “Domains Priced Right” which is a parking page offering links to a variety of third party sites including a number of the Complainant’s competitors.

6.	THE PARTIES' CONTENTIONS:

	The parties' contentions can be summarised as follows:

	Complainant

1. The Royal Bank of Scotland Group Plc has rights in respect of a name and mark that is similar to the Domain Name. 

A. Complainant has rights in respect of the “RBS” name and mark. 

1. 	Complainant The Royal Bank of Scotland Group plc (“RBS”) is one of the world's leading financial services providers and one of the oldest banks in the UK. In addition to its strong UK presence, RBS has offices elsewhere in Europe, and in the United States and Asia. (Materials presenting information about RBS’s business are attached as Annex A.) 

2. 	RBS is registered at Companies House and has been so registered since 1968. (A printout from the Companies House website is attached as Annex B.) 

3. 	By virtue of its role, for decades, as a major presence in financial markets, its longstanding commitment to the provision of quality financial products and services, and its significant commitment to the marketing and advertising of the “RBS” name, RBS has built up substantial goodwill in its trademark and name. 

4. 	A significant part of RBS’s business today comes from the financial services it provides and markets through various websites, including “rbs-online.co.uk”, “rbs.co.uk” and “rbs.com”. (Printouts from the websites to which these domain names resolve are attached as Annex C.) RBS was the first bank in the UK to launch an Internet banking service in 1997. Since then RBS has continued to be at the vanguard of online financial services by launching online savings and loans, online stakeholder pensions, online credit card applications, and offering mortgage services online. 

5. 	RBS has numerous registrations for its RBS mark, including with the UK Patent Office (“UKPO”) and with the EU Office for Harmonization in the Internal Market (“OHIM”). (Printouts from the UKPO and OHIM websites evidencing these registrations, which date back as far as 1996 and cover a wide range of financial services, including Internet banking, are attached as Annex D.) In addition, RBS has multiple registrations and applications for its RBS and related marks worldwide. (A chart reflecting these registrations and applications is attached as Annex E.)
 
6. 	RBS owns and uses numerous domain names featuring its well-known RBS mark, including “rbs-online.co.uk” (registered on 11 November 2005), “rbs.co.uk” (registered prior to August 1996) and “rbs.com” (created 6 September 1994). (Whois records for these domain name registrations are attached as Annex F.) These domain names direct current and prospective RBS customers to RBS’s website where RBS offers its various financial products and services including online banking and other online services. 

B. 	Respondent’s Domain Name is similar to Complainant’s name and mark and to Complainant’s domain names. 

7. 	Respondent’s Domain Name is similar to Complainant’s “RBS” name and mark. Respondent’s Domain Name simply consists of Complainant’s RBS mark preceded by the prefix “online-”. This does not alter the Domain Name’s confusing similarity to Complainant’s mark. See The Gap, Inc. v. Cybernet Ventures T/A/George Forsyth, DRS 00820 (7 May 2003) (finding domain name at issue, “gap-online.co.uk”, sufficiently similar to the complainant’s GAP mark to give rise to the possibility of an abusive registration). The addition of the “online-” prefix does not change the overall impression of the Domain Name, which strongly conveys the impression that it is sponsored by, or associated with, Complainant because the “RBS” suffix will be perceived by Internet users as the most distinctive and dominant component of the Domain Name. See Lilly ICOS LLC v. Mike Cialister (DRS 03234 12 May 2006) (finding the domain name “onlinecialis.co.uk” similar to the name CIALIS because the addition of the term ONLINE was non-distinctive in the context of domain names and CIALIS would be readily perceived by the public as the most distinctive and dominant component of the domain name). 

8. 	Further, Respondent’s Domain Name “online-rbs.co.uk” merely transposes the “rbs” and the “online” in Complainant’s “rbs-online.co.uk” domain name. Moreover, Respondent’s Domain Name is similar to Complainant’s “rbs.co.uk” and “rbs.com” domain names in that the suffix (“rbs”) is identical. Indeed, “RBS,” which is a common element of Complainant’s registered trademark rights and is present throughout its business, is the dominant and distinctive element in the Domain Name. The term “online” is indicative of, and closely associated with, a channel by which Complainant markets and provides its services to current and prospective customers, and use of a domain name combining “RBS” with this term– as Respondent’s Domain Name does – implies a clear connection with Complainant’s business. 

9. 	The Domain Name is apparently targeted toward Internet users who are seeking to access Complainant’s online services and, being unsure of the precise address of an RBS website, might by guesswork enter in the address bars on their computers “RBS” in combination with the term “online-” in the hope that that address would take them to the RBS website, and/or users who simply reverse the two terms in Complainant’s “rbs-online.co.uk” domain name. Such users find themselves at Respondent’s web page, which contains links to the websites of certain of Complainant’s competitors. 

10. 	Respondent’s Domain Name was registered on 28 March 2006 –long after Complainant acquired rights to the RBS name and mark. (See Annex G.) 

11. 	Respondent has no apparent rights to the RBS name. 

II. 	The Domain Name, in the hands of the Respondent, is an abusive registration. 

12. 	The Domain Name in the hands of the Respondent is an abusive registration because it was registered in a manner that, at the time the registration took place, took unfair advantage of and was unfairly detrimental to Complainant’s rights, and because the Domain Name has been used in a manner that takes unfair advantage of and is unfairly detrimental to Complainant’s rights. Evidence of this includes the following: 

13. 	First, it appears that Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting Complainant’s business. As noted above, it appears that the Domain Name is targeted toward Internet users seeking access to Complainant’s online services. Such users, however, are taken to Respondent’s website, which contains advertising for, and links to, the websites of competitors of RBS, including for example Lloyds and Barclays. (Printouts from Respondent’s website are attached as Annex H.) Respondent’s registration of the Domain Name, which incorporates Complainant’s well-known mark, and use of the Domain Name in connection with a website containing links to the websites of Complainant’s competitors presumably for the purpose of generating “click-through” revenues, shows that Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting Complainant’s business. As a previous Nominet-appointed Expert has recognized, such use takes unfair advantage of Complainant’s rights and is unfairly detrimental to those rights by making commercial gain accruing from the per-click payments driven by the attractive force of Complainant’s well-known mark. Hayes & Jarvis (Travel) Limited v. M Strong (trading as Fuz Pty Ltd), (DRS 02352 21 March 2005) (finding that the registration of a domain name which was almost identical to a well-known mark, with a view to commercial gain through a domain park service, takes unfair advantage of the Complainant’s Rights and unfairly detrimental to those rights). 

14. 	Such use of the Domain Name also unfairly disrupts Complainant’s business by improperly directing Complainants’ current and prospective customers to Complainants’ competitors, thus causing Complainant to suffer loss of business and revenue. Such use constitutes evidence of an abusive registration under DRS Policy Section 3(a)(i)(C). See National Westminster Bank plc v. 2catchafly (DRS 3390, 3 April 2006) (finding that using confusingly similar domain name to divert Internet users to the respondent’s website, which offered links to other sites offering financial services of complainant’s competitors, unfairly disrupted complainant’s business.) 

15. 	Second, Respondent is using the Domain Name in a way that either has confused people into believing, or is extremely likely to confuse people into believing, that the Domain Name is registered to Complainant, is operated or authorized by Complainant, or otherwise is connected with Complainant. Given that the Domain Name simply combines Complainant’s mark “RBS” with the generic term “online-”, and that it simply reverses the order of the terms in “rbs-online.co.uk”, which resolves to RBS’s legitimate site, and thus strongly suggests that it corresponds to a website with services provided by RBS, an Internet user intending to access Complainant’s website could find herself at Respondent’s website without realizing that Respondent’s website is not Complainant’s official website. Moreover, the content of Respondent’s website, because it consists of information and advertising concerning products and services similar to those offered by RBS, would not necessarily alert the user to her error. Even if a user realized that she was not at Complainant’s official website, she still could be confused into believing that RBS was in some way associated with the Domain Name, given these substantial similarities. See National Westminster Bank plc v. 2catchafly (DRS 3390, 3 April 2006) (concluding, in directing the transfer of ‘natwestloans.co.uk,’ which the Respondent had used to operate a website providing links to Complainant’s competitors, that “there is a strong likelihood of confusion on the part of Internet users and the indications are that the Respondent, in applying to register the domain name, intended to create such confusion.”); National Westminster Bank plc v. James Robinson (DRS 3377, 17 March 2006) (accepting that there would be confusion leading to detriment to complainant’s business in the event of a user typing ‘natwestcreditcards[.co.uk]’ into his browser window in search of NatWest credit cards and arriving instead at the respondent’s website which mainly consisted of links to the websites of complainant’s competitors). Indeed, Respondent is capitalizing on this very confusion to his or her commercial gain. 

16. 	Finally, the Domain Name is also an abusive registration in Respondent’s hands because Respondent is using it to benefit commercially from the unauthorized and illegitimate use of Complainant’s mark and associated goodwill and, thus, is using the Domain Name in a manner that takes unfair advantage of and is unfairly detrimental to Complainant’s rights. See DRS Policy, Section 1 (defining Abusive Registration.) Specifically, Respondent’s purpose in redirecting Internet users searching for Complainant’s products and services – including Complainant’s current and prospective customers – to the websites of Complainant’s competitors is presumably to generate “click-through” revenues based on the amount of traffic Complainant diverts to those sites. Respondent’s attempt to profit financially from the unauthorized use of Complainant’s marks is commercially exploitive of Complainant’s names and marks and evidences an abusive registration under the DRS Policy. See The Royal Bank of Scotland v. Robert Morrison, (DRS 3719 21 July 2006) (finding respondent had unfairly disrupted the complainants’ business by improperly directing those seeking information about the services offered under the complainants’ trademark to the complainants’ competitors, and that the respondent had also taken unfair advantage of the complainants’ rights by seeking to generate click-through revenues from typographical errors by Internet users searching for the complainants). 

17. 	For all of these reasons, Complainant respectfully requests that the Expert find that Complainant has rights in respect of a name or mark that is similar to the Domain Name and that the Domain Name, in the hands of Respondent, is an abusive registration.

Respondent

	The Respondent has not filed a Response.

7.	DISCUSSIONS AND FINDINGS
	
7.1	Paragraph 2 of the policy requires that the Complainant must prove, on the balance of probabilities, that:

(i)	the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii)	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

7.2	Rights are defined in Paragraph 1 of the Policy as follows:  “includes, but is not limited to, rights enforceable under English law.  However, the Complainant would be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”.  

7.3	The Complainant is the registered proprietor of a number of registered trade marks for the word mark RBS, including in the UK and the EC, and has used the mark RBS in connection with the supply of financial services, including over the internet, for a considerable period of time.  I therefore have no difficulty in concluding that the Complainant has Rights in the mark RBS. 

7.4	The Domain Name is not however the mark, “RBS” but is prefixed by the word, “online-“. and it is the Domain Name as a whole (disregarding the first and second level suffix) which I must decide whether it is identical or similar to the name in which the Complainant has Rights.

7.5	The Complainant submits, amongst other things, that the addition of the prefix, “online-“ does not alter the Domain Name’s confusing similarity to the Complainant’s mark because it does not change the overall impression of the Domain Name.  In support of these contentions the Complainant relies on the earlier decisions in DRS Number 00820 where it was decided that the domain name in issue, “Gap-online.co.uk” was sufficiently similar to the complainant’s mark GAP and DRS 03234 where it was decided that the domain name, “online-cialis.co.uk” was sufficiently similar to the complainant’s mark CIALIS.

7.6	In this case, it is clear to me that the trade mark or distinctive part of the Domain Name is the mark, “RBS”.  The addition of the word “online” albeit as a prefix to “RBS” adds little or nothing to the distinctive character of the mark “RBS”.  Further, the word “online” is one that is commonly used as part of domain names and websites generally to indicate the internet presence of a business.  In other words I believe that the interested public will tend to disregard the “online” part of the Domain Name in the same way as they would disregard the suffix “co.uk” or “com” and will recognise that it is the “RBS” part of the Domain Name which denotes the source or origin of the website and the goods and services it promotes. I therefore have no difficulty in concluding that the Complainant has rights in respect of a name or mark which identical or similar to the Domain Name.

7.7	Having concluded that the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name I must now go on to consider whether the Domain Name is in the hands of the Respondent and Abusive Registration.
 
7.8	Abusive Registration is defined in Paragraph 1 of the Policy as a domain name which either:

(i)	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR

(ii)	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.

7.9	Paragraph 3 of the Policy sets out a non-exhaustive list of the factors which may be evidence that the Domain Name is an Abusive Registration. The Complainant relies on a number of these and the most relevant are set out below:

3	a  i 	Circumstances indicating that the Respondent has registered or has otherwise acquired the Domain Name primarily 
A     ….
B 	  ….
C	  for the purpose of unfairly disrupting the business of the Complainant;

ii   	Circumstances indicating that the Respondent is using the Domain Name in a way which is confusing people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant; and

7.10	The evidence produced by the Complainant is that the Domain Name resolves to a website headed “Domains Priced Right” and sub-headed “www.online-rbs.co.uk” providing sponsored links to a number of other business sites including those in the financial services business. These include a number of businesses which are clearly direct competitors of the Complainant including Halifax Building Society and Bank of Scotland. 

7.11	This website looks to be one of the increasingly popular “domain name parking” type websites which work by paying the owner of the domain name a fee every time the website is accessed. As the Complainant says it is likely that customers or prospective customers of the Complainant will visit this website in error because it contains the Complainant’s name “RBS” and because of its similarity to one of the Complainant’s actual domain names, rbs-online.co.uk.  It follows that the Domain Name is likely to attract a relatively high volume of traffic and will consequently earn the Respondent a good income. 

7.12	It is clear to me that by using the Domain Name in this way, i.e. by relying on the Complainant’s Rights in a name or mark which is identical or confusingly similar to the Domain Name to generate traffic to a site linked to the Domain Name, the Respondent is taking unfair advantage of the Complainant’s Rights.  

7.13	Having reached this conclusion I will not go on and consider the other contentions put forward on behalf of the Complainant and I therefore conclude that the Respondent’s use of the Domain Name constitutes an Abusive Registration.  

8.	DECISION

For the reasons set out above, I find that, on the balance of probabilities, the Complainant has Rights in a name or mark which is identical or similar to the Domain Name, and that the Domain Name in the hands of the Respondent is an abusive registration. I therefore direct that the Domain Name be transferred to the Complainant.

……………………………………..
Nick Phillips

12th October 2006