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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Bank of Scotland Group Plc v ROYALBANKSCOTLAND [2006] DRS 4201 (19 December 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4201.html Cite as: [2006] DRS 4201

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Nominet UK Dispute Resolution Service DRS 04201 The Royal Bank of Scotland Group Plc –v- ROYALBANKSCOTLAND Decision of Independent Expert

1. Parties:

Complainant: The Royal Bank of Scotland Group Plc

Country UK

Respondent: ROYALBANKSCOTLAND

Country: NG

2. Domain Name in dispute:

royalbankscotland.org.uk
("the Domain Name")

3. Procedural Background:

10/11/2006 Dispute entered into system

13/11/2006 Hardcopies received

15/11/2006 Complaint documents sent to Respondent

08/12/2006 No Response received in time

08/12/2006 "No response" notice sent to Complainant

11/12/2006 Expert decision fees received from Complainant

12/12/2006 Mr Iain M Tolmie selected as expert

3.1. On the 11^th December 2006, I (Iain M. Tolmie, the undersigned, "the Expert") was contacted by the Nominet Dispute Resolution Service and I confirmed to them that:

"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties."

3.2. I was appointed as the Independent Expert for this Case as from 18^th December 2006 to respond on or before 4^th January 2007. The process which I follow is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") and the Dispute Resolution Service Policy ("the Policy"). Both of these documents are available on the Nominet UK website (http://www.nominet.org.uk/disputes/drs).

4. Outstanding Formal/Procedural Issues:

4.1. Nominet has provided evidence that it has attempted to contact the Respondent as required by the Procedure §2. The e-mail to the required standard address for all registrants (postmaster@) received no reply and e-mail to the Respondent's e-mail address as provided in its registration details ([email protected]) was returned as undeliverable. I have seen copies of the e-mails and letters sent to the registered contact addresses: I consider that Nominet has discharged its duty and that under normal circumstances the Respondent should have received the correspondence. The Respondent has not submitted a response to Nominet, in time or at all, as provided for under the Procedure §5a. The Complainant has also entered in evidence a letter from the Respondent's postal address in Lagos (as taken from their registration details) in which the writer denies there is any connection between the residents at (what the writer describes as) a private residential address and the Respondent.

4.2. The Respondent accepted the Nominet Dispute Resolution Procedure at the time of the registration of the Domain Name. The Respondent is not obliged to make any formal response and the Procedure does not permit a Decision by default.

4.3. From the records sent to me, I can see that Nominet have taken all necessary steps under the Procedure and there is no evidence to indicate any exceptional circumstances that I should take into account. Accordingly I will now proceed to a decision on the complaint notwithstanding the absence of a Response, as is provided for in the Procedure §15b:

"If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint."

4.4. Furthermore, since I am not aware of any exceptional circumstances in this case, I will act in accordance with the Procedure §15c which provides that:

"If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure […], the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."

5. The Facts:

5.1. I accept the following as facts:

5.2. The Complainant has been a registered UK company since 1968, is one of the world's leading financial services providers and is one of the oldest banks in the UK. In addition to its strong UK presence, it has offices elsewhere in Europe, and in the United States and Asia. The Complainant operates a number of brands worldwide and offers a wide range of financial products and services – including banking and insurance services – to both individual and institutional investors.

5.3. A significant part of Complainant's business revolves around its numerous online financial services that offer its customers, amongst other things, access to services in personal banking, corporate and institutional banking, credit card accounts, mortgage and loan account information, and insurance-related services.

5.4. The Complainant has numerous registrations for THE ROYAL BANK OF SCOTLAND and related marks, including with the UK Patent Office, the EU Office for Harmonization in the Internal Market, and the United States Patent and Trademark Office.

5.5. The Complainant owns and uses numerous domain names featuring its well-known THE ROYAL BANK OF SCOTLAND mark, including royalbankofscotland.co.uk (registered September 30, 1998) and royalbankofscotland.com (registered September 10, 1998). The Complainant uses these domain names to promote and operate its online financial business.

6. The Parties' Contentions:

Complainant

6.1. I have accepted as fact that the Complainant is a well-established major banking house, has many relevant trademark registrations, and operates on-line services under several domain names that have been in use for many years.

6.2. The Complainant's further submissions (made on its behalf by a legal representative) are as follows:

6.2.1. 11. The Domain Name 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 it has been used in a manner that takes unfair advantage of and is unfairly detrimental to Complainant's rights.

6.2.2. 12. First, Respondent registered the Domain Name for the purpose of unfairly disrupting Complainant's business. Specifically, it appears that Respondent used the Domain Name to perpetrate a fraudulent scheme whereby members of the public were contacted by email, purportedly (but falsely) on behalf of Complainant, and were advised that they were "one of the lucky winners of the promotional lottery by International Lottery Great Britain". Individuals receiving this email were then asked to submit various personal information, including identification papers, to "The Royal Bank of Scotland", and were given the following email address linked to the Domain Name: [email protected]. Presumably this personal information was sought in furtherance of some further fraudulent scheme.

6.2.3. 13. Complainant was alerted to this fraud when contacted by a victim of it, Mr. Frank Kress, who was attempting to follow up on the status of the lottery proceeds he believed he had won. Mr. Kress, after receiving Respondent's fraudulent notification that he was a lottery winner, had sent to [email protected] a "verification and funds release form" as requested and then sent by post copies of his passport, driver's license, and military identification card, which eventually were received by Complainant. (A copy of this communication from Mr. Kress, dated September 7, 2006, is attached hereto as Annex H.).

6.2.4. 14. Thus, it appears that Respondent registered and used the Domain Name to facilitate a fraudulent scheme designed to trick unsuspecting individuals into revealing personal information – likely in furtherance of some additional misconduct. Respondent's use of the Domain Name to perpetrate a fraud demonstrates Respondent's intent to unfairly disrupt Complainant's business under DRS Policy Section 3(a)(i)(C) because, among other things, Respondent's conduct threatens to damage Complainant's reputation and to erode the goodwill it has built up in its mark, thus causing Complainant to suffer loss of customers and revenue. See National Westminster Bank plc v. Johnny Megaline (finding that Respondent's use of the disputed domain name for fraudulent purposes "falls afoul" of the unfair disruption provision of DRS policy DRS 3525); see also Novus Credit Services, Inc. v. Discover Fin. Services LL C (DRS 3205, 27 January 2006) (same).

6.2.5. 15. Second, the Domain Name in Respondent's hands is also an abusive registration because, by using the Domain Name in connection with an attempt to fraudulently pass itself off as Complainant, Respondent used the Domain Name in a way that confused people into believing that the Domain Name was registered to Complainant, was operated or authorized by Complainant, or otherwise was connected with Complainant. See DRS Policy, Section 3(a)(ii). Indeed, the communication from the victim of Respondent's fraud, attached as Annex H, demonstrates actual confusion. See National Westminster Bank plc v. Johnny Megaline, supra (holding, in directing the transfer of natwestbonline.co.uk, that the Respondent "is using the Domain Name in a manner that is likely to confuse people into believing that his website is associated with the Complainant, to the serious detriment of Complainant's goodwill.").

6.2.6. 16. Moreover, because the Domain Name currently resolves only to a "parking page" indicating that the site is "under construction," the Domain Name continues to have great potential for confusion and, thus, serious disruption to Complainant's business. For example, customers of Complainant may access the Respondent's Domain Name only to be confused and aggravated by what they perceive as an inactive site. This has an obvious detrimental effect on Complainant's business, including the potential loss of customers. In a similar situation, an Expert held that a respondent's registration of a domain name which resolved to an inactive webpage was abusive due to the potential for disruption of the Complainant's business. See Amazon.com, Inc. v. Microplace Ltd. t/a Netknowledge DRS 01781 ("[T]here is, very clearly, a serious potential for such disruption for, as the Complainant so graphically describes, potential purchasers who type the disputed domain name into their browser by mistake instead of that of the Complainant's UK website, will be taken to an inactive site…So, when presented with what seems to be an inactive site, potential purchasers will assume that the Complainant's UK website is inactive, or is temporarily out of operation. As a result, such users may indeed, as the Complainant suggests, go to other internet sites operated by the Complainant's competitors in order to purchase their goods. Thus, not only does the existence of the disputed domain name have the potential for disrupting the Complainant's business there is no doubt that its continued existence is likely to confuse users into believing that the disputed domain name is connected with the Complainant when it is not."). Accordingly, this constitutes an abusive registration and use under paragraphs 3(a)(i)(C) and (ii) of the Policy.

6.2.7. 17. Respondent's registration and use of the Domain Name constitutes an abusive registration for another reason as well: because the Respondent is not the legitimate owner of Complainant's mark and has not been given permission to use the mark, there is no legitimate purpose to which the Respondent could put the Domain Name. Even though the Domain Name at present resolves only to a parking page, any realistic use of it by the Respondent would constitute "passing off" and/or trademark infringement. "The Domain Name is therefore an 'instrument of fraud' in the hands of the Respondent." Kodak Ltd. v. Brian Robertson DRS 00956 (involving "passive holding" of domain name). Indeed, where a Respondent cannot use a domain name without violating the applicable law, the registration is abusive even if the Respondent has done no more than register the name. See Nokia Corp. v. Just Phones DRS 058 (validating the argument that merely by registering in the Respondent's name a domain name such as the Domain Name at issue, comprising a famous and distinctive trade mark combined with a mere product description, the registration must necessarily have been made in a manner which took unfair advantage of the Complainant's Rights," and citing the analysis applied in British Telecommunications plc and Others v. One in a Million Ltd and Others [1999] ETMR 61).

6.2.8. 18. Finally, the Respondent is identified in WHOIS records for the disputed domain name as ROYALBANKSCOTLAND. (See Annex F.) Respondent, however, is in no way affiliated or legitimately connected with Complainant, nor has Complainant licensed or otherwise authorized Respondent to use its THE ROYAL BANK OF SCOTLAND mark, or any variation thereof. Further, Complainant has been unable to find any evidence of an actual entity known as ROYALBANKSCOTLAND. Thus, it appears that Respondent has provided false contact details to Nominet in violation of DRS Policy 3(a)(iv)

6.2.9. 19. Accordingly, Complainant respectfully requests that the Expert issue an order directing the transfer of the Domain Name to Complainant.

Respondent

6.3. The Respondent has not submitted a response in time or at all.

7. Discussion and Findings:

Burden of Proof

7.1. In order for the Complainant to succeed it must (Policy §2) prove to the Expert, on the balance of probabilities, both:

i that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

7.2. Rights are defined in the Policy as:

Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business;

Complainant's Rights

7.3. The Complainant by making its Complaint has agreed to be bound by the Procedure and its legal representative has signed a statement of truth in respect of the Complaint and associated documentation supplied.

7.4. In order to establish that it has Rights, the Complainant relies upon its long-standing registration as a limited company, its prominence in the national and international banking industry, its large portfolio of trademarks and its provision of internet banking services under the domain names royalbankofscotland.co.uk and royalbankofscotland.com.

7.5. In examining the Domain Name I need to exclude the ".org.uk" suffix (which is generic and is usual to ignore). It is also important to recognise that, in rendering company names into domain names, there are technical restrictions, not least of these being that domain names are usually expressed as lower case letters only and that there are limited additional characters that can be used. It is quite usual to discard words like "the" or linking words such as "and" and "of" – hence The Royal Bank of Scotland uses royalbankofscotland (note the ".co.uk" and ".com" are also generic and should be ignored).

7.6. The Respondent has used the ".org.uk" subdivision of the registry. The published Rules for that part of the registry state:

General

1. The rules for the .org.uk Second Level Domain ("SLD") are incorporated by reference into the Rules for the .uk Domain.

Scope

2. The .org.uk SLD is intended for the registration of Domain Names which denote non profit making or public service organisations. These may include: charities, trades unions, political parties, community groups, educational councils, professional institutions, etc. However, Nominet will take no action with regard to the registration or use of a Domain Name unless such registration or use conflicts with the Rules, or the Dispute Resolution Policy and Procedure, in each case as amended from time to time.

7.7. The section of the registry in which the name is registered does not affect the operation of the Procedure.

7.8. The Domain Name (excluding the ".org.uk") is royalbankscotland which I find is similar to the Complainant's business name (The Royal Bank of Scotland), its registered trademarks and its domain names.

7.9. I therefore find that the Complainant has established to my satisfaction that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

7.10. Having found that the Complainant has established to my satisfaction that it has Rights, I must now examine its allegations of an Abusive Registration by the Respondent.

7.11. An Abusive Registration is defined in the Policy as follows:

Abusive Registration means 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;

7.12. The Complainant has produced evidence that purports to show that the Domain Name was used (in at least one instance) to trick an individual into providing identification information in response to an unsolicited e-mail from the Respondent. I do not know to for what purpose was for this trick or if it involved other individuals. It appears likely that the information gained in this way could be used in the furtherance of fraud. These are very serious allegations to which the Respondent has chosen not to respond. I have no reason not to accept the evidence supplied by the Complainant – they are reputable persons and have signed declaration of truth.

7.13. If substantiated, I would consider that this activity sufficient of itself to demonstrate abusive registration of the Domain Name and to evaluate the evidence I will apply the "four-stage test" originally set out in Chivas Brothers Limited v. David William Plenderleith DRS 00658 which is as follows:

Where a Respondent registers a Domain Name:

1. which is identical to a name in respect of which the Complainant has rights; and

2. where that name is exclusively referable to the Complainant; and

3. where there is no obvious justification for the Respondent having adopted that name for the Domain Name; and

4. where the Respondent has come forward with no explanation for having selected the Domain Name,

it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain Name for a purpose and secondly that that purpose was abusive. In this case the Expert draws those inferences.

7.14. I have found that the Complainant has Rights, and I am satisfied that the Domain Name is sufficiently similar to the Complainant's business name as to be identical for all practical purposes. I regard the omission of the "the" and "of" in The Royal Bank of Scotland (hence royalbankscotland) to be inconsequential and quite usual in domain names.

7.15. It is indisputable that The Royal Bank of Scotland is a well-known national and international organisation and I consider that the Domain Name is therefore exclusively referable to The Royal Bank of Scotland.

7.16. It seems to me that the Respondent selected the Domain Name because it was impressive and implied reliability and honesty. The subsequent use of the Domain Name would reinforce that view. Had the Domain Name been put to a different use by the Respondent, it might have been possible to advance the excuse that the foreign owner had selected the name in ignorance. However, in this case, the Respondent clearly intended the Domain Name to give a misleading impression to the recipient of its e-mail messages. It is not justifiable to take the name of reputable organisation in order to give credence to your own activities – whether nefarious or not.

7.17. In the absence of any explanation at all from the Respondent, I will exercise my discretion to draw such inferences as I find appropriate. I can see no rational explanation other than this was a deliberate act intended to mislead Internet users into believing that the Respondent was in some way connected with or authorised by the Complainant. Since the Complainant denies any authorisation or connection, and there is no contrary evidence from the Respondent, then I can only draw the conclusion that the registration is abusive. I find that the Respondent used the Domain Name in a way that confused people into believing that the Domain Name was registered to, operated or authorised by, or otherwise connected to the Complainant.

7.18. I also find that there is sufficient evidence to hold that the Respondent has given false contact details on its registration.

7.19. I therefore find that the Complainant has established to my satisfaction that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8. Decision:

8.1. For the reasons set out in detail above, I find that the Complainant has established that it has Rights in respect of a name or mark which is identical or similar to the Domain Name and I find that the Domain Name in the hands of the Respondent is an Abusive Registration.

8.2. I therefore determine that the Domain Name be transferred to the Complainant, notwithstanding that in this case the ".org.uk" suffix may be considered to be inappropriate. There is no rule that prohibits commercial enterprises holding ".org.uk" registrations.

Dated: 19^th December 2006

Iain M. Tolmie ("the Expert")