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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 Laverio [2006] DRS 3953 (16 October 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3953.html Cite as: [2006] DRS 3953

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Nominet UK Dispute Resolution Service

DRS 03953

The Royal Bank of Scotland Group PLC v Grave Laverio

Decision of Independent Expert

1. Parties

Complainant: The Royal Bank of Scotland Group PLC

Country: United Kingdom

Respondent: Grave Laverio

Country: United States

2. Domain Name

onlinerbs.co.uk ("the domain name")

3. Procedural Background

On 29 August 2006 Nominet received hard copy of the complaint dated 25 August and checked that it complied with the Nominet Dispute Resolution Service Policy ("the Policy") and Procedure ("the Procedure"). The complaint was supported by material in a series of annexes:

A information about the Complainant from its website at rbs.com

B information about the Complainant from the website at Companies House

C printouts from the Complainant's websites at rbs-online.co.uk, rbs.com and rbs.co.uk

D printouts showing the Complainant's registrations for its 'Royal Bank of Scotland' and 'RBS' marks with the UK Patent Office and the EU Office for Harmonization in the Internal Market

E a listing of the Complainant's worldwide registrations and trademark applications for its 'RBS' mark

F WHOIS registry information for rbs-online.co.uk, rbs.com and rbs.co.uk

G WHOIS registry information for onlinerbs.co.uk

H printouts of the website to which the onlinerbs.co.uk domain name resolved on 15 August 2006

Nominet notified the Respondent of the complaint on 29 August and informed him that he had 15 working days within which to lodge a response. No response was received. Informal mediation not being possible, on 21 September Nominet notified the parties that an expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 27 September.

On 5 October I, Mark de Brunner, agreed to serve as an expert under Nominet's Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties and that there are no facts or circumstances that might call into question my independence.

4. Outstanding Formal/Procedural Issues

Email delivery failures

There are email delivery failure reports on file, generated in connection with Nominet's attempts to notify the Respondent of the complaint and, subsequently, of the fact that the case would be referred to an expert if the appropriate fee was paid. I need to decide what to make of those delivery failure reports.

My starting point is that those registering domain names with Nominet agree to keep Nominet up to date with their contact details. The Procedure says that Nominet will send a complaint to the Respondent by, at its discretion, any one of a range of means – including

- email using the contact details shown as the registrant or other contacts in the domain name register database entry for the domain name in dispute

- email to postmaster@

In the event, Nominet sent the complaint and subsequent correspondence to both [email protected] (the contact address in the register entry for the domain name) and [email protected]. The delivery failure reports relate to both of these addresses.

Given that it is the Respondent's obligation to keep his contact details with Nominet up to date I am satisfied that Nominet did what it could to notify the Respondent of the complaint and of how that complaint was being handled. I therefore propose to proceed on the basis that the Respondent has been properly notified of proceedings under the Dispute Resolution Service.

5. The Facts

I have visited the Complainant's websites at rbs-online.co.uk, rbs.com and rbs.co.uk. When using the Respondent's domain name I received a 'page cannot be displayed' message. From those successful and attempted visits and the complaint I accept the following as facts.

The Complainant is a provider of financial services across Europe, the United States and Asia (Annex A). The Royal Bank of Scotland was established by royal charter in 1727 but assumed its current form when it was incorporated in 1968 (Annex B). Its acquisition of the National Westminster Bank PLC in 2000 was the largest takeover in British banking. At the end of 2002, by market capitalisation, it was the second largest bank in Europe and the fifth largest in the world.

In 1997, the Complainant was the first UK bank to offer an internet service. Since then, it has developed a significant amount of business through its websites, which include (Annexes C and F):

? Rbs-online.co.uk (registered on 11 November 2005)

? Rbs.co.uk (registered before August 1996)

? Rbs.com (registered on 6 September 1994)

The Complainant has numerous trademark registrations for 'The Royal Bank of Scotland' and 'RBS' in the UK, wider Europe and beyond (Annexes D and E).

The Respondent registered the domain name on 12 April 2006.

As at 19 June 2006, the domain name resolved to a website containing the names 'The Royal Bank of Scotland' and 'RBS' at the top of every page. The site had links for sending personal details to the Respondent - in response to an invitation to log on to the 'RBS' online service, for example.

As at 15 August 2006, the website at the domain name offered a private banking and wealth management service for high net worth individuals, apparently from The Royal Bank of Scotland (Annex H). The names 'The Royal Bank of Scotland' and 'RBS' appeared prominently on the webpages. Again there was a facility for potential customers to log on and there were addresses for queries by email ([email protected]; [email protected]; [email protected]) and by post (PO Box 101, 1 Balloon Street, Manchester M60 4EP). The financial services apparently available included mortgages. Financial illustrations were in US dollars, though a location map appeared to show branches (13 of them) just in Great Britain.

As at 29 August 2006 the domain name resolved to a page of links to webpages on subjects with 'online' in the title (mostly to do with education and learning).

6. The Parties' Contentions

Complainant

On the question of rights, the Complainant says that

(i) it has been a major financial presence for many years and has built up goodwill in the names 'The Royal Bank of Scotland' and 'RBS'.

(ii) it has rights in names that are similar to the domain name – both in that the formulation 'RBS' is the distinctive element of the domain name ('online' being merely a generic label) and in that the domain name merely transposes two elements of the Complainant's own domain name registration, rbs-online.co.uk

On the character of the registration, the Complainant says that both registration and use of the domain name took unfair advantage of the Complainant's rights because

(iii) the website at the domain name was intended unfairly to disrupt the Complainant's business

(iv) the use of the domain name must have confused people into believing that it was connected with the Complainant. Indeed, the website at the domain name was capable of being used for 'phishing' for personal details, with consequential risk to the Complainant's goodwill

(v) the Respondent has no apparent rights in the names 'The Royal Bank of Scotland' or 'RBS'

Respondent

There has been no reply.

7. Discussion and Findings:

General

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that

(i) it has rights in respect of a name or mark which is identical or similar to the domain name; and that

(ii) the domain name, in the hands of the Respondent, is an abusive registration.

Approach where there has been no reply

There is a long-established approach to be taken by experts in cases where there is no reply to a complaint. The Complainant must make out at least a prima facie case that the domain name is an abusive registration. Such a case demands a reply. If there is no reply, the complaint will ordinarily succeed. The question therefore becomes whether the Complainant has established a prima facie case.

Complainant's Rights

The Complainant has established an international presence as a financial services provider, selling its products and services – generally and over the internet - using the 'RBS' name. It is clear that the Complainant has both registered and unregistered rights in 'RBS'.

The use of 'online' in this context is interesting. The Complainant has registered the domain name rbs-online.co.uk and has arguably established unregistered rights in that name too. The domain name at issue is onlinerbs.co.uk. I can ignore the suffixes as a generic feature of the Nominet registry. To the extent that 'online' is merely a generic label, intended to indicate that a service is available over the internet, 'RBS' is similar to the domain name in dispute. To the extent that 'online' as part of 'onlinerbs' is more than just a label, 'rbs-online' is similar to the domain name.

Either way, the Complainant has rights in respect of a name which is similar to the domain name.

Abusive Registration

The Dispute Resolution Service rules define an abusive registration 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.

The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. These factors include circumstances indicating that the Respondent

(i) registered the domain name primarily for the purpose of unfairly disrupting the business of the Complainant

(ii) is using the domain name in a way which has confused people or businesses into believing that the domain name is registered to, operated or authorised by, or otherwise connected with the Complainant

These are the main claims of the Complainant here and I can start by taking each in turn.

The domain name was registered in April 2006. The website to which the domain name resolved looks as though it is connected with the Complainant. Whether or not it was set up for the purposes of acquiring confidential financial information inappropriately ('phishing'), this appears to be a blatant attempt to impersonate the Complainant. The impersonation starts with the similarity of the domain name to the name in which the Complainant has rights. It continues on the website to which the domain name resolves. No direct evidence is offered of the Respondent's motive at registration, but I infer from the website content that the Respondent must have intended some kind of disruption to the Complainant's business.

No direct evidence is offered, either, of actual confusion having occurred. But the great potential for people to be confused is very clear. This is more than the 'initial interest' confusion that is sometimes a feature of domain name registrations. It extends beyond that because the website at the domain name is evidently designed not to clear up any confusion but to perpetuate it. That obviously constitutes a significant threat to the Complainant's reputation and goodwill.

The list in the Policy of factors that may be evidence of an abusive registration also refers to situations in which

the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of the domain names…which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the domain name is part of that pattern

The Complainant hints at this as a factor pointing towards an abusive registration when it asserts that the Respondent has no apparent rights in the names 'The Royal Bank of Scotland' or 'RBS'. I agree that the Respondent has no apparent rights in those names – though no attempt has been made to establish that there exists a pattern of registrations. The Complainant is really saying that the Respondent does not appear to have any legitimate reason for registering the domain name and that this fact points towards an abusive registration. This is far from conclusive. In my view, though, the context gives it added weight and I do regard it as a material factor.

The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. The only factors that might be relevant here are where

i) before being informed of the Complainant's cause for complaint, the Respondent has

(a) used the domain name in connection with a genuine offering of goods or services, or

(b) made legitimate non-commercial or fair use of the domain name

or where

(ii) the domain name is generic or descriptive and the Respondent is making fair use of it.

Each of these potential factors falls away rapidly. The service offering was evidently not 'genuine'. The use of the domain name was apparently commercial. Whether that use was 'fair' is for me to decide in the context of a claim that this was an abusive registration. The domain name is not, as a whole, generic or descriptive (even though an element in the name is, arguably, descriptive). None of these possible defences applies here.

The underlying question is whether the domain name was registered or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights. The domain name resolved to a website designed to make visitors believe that they were dealing with the Complainant. It seems to me very clear that both registration and use of the domain name took unfair advantage of the Complainant's rights. At the very least, the Complainant has established a prima facie case that this is an abusive registration. In the absence of a reply to that case, the complaint succeeds.

8. Decision

I find that the Complainant has rights in respect of a name which is similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.

In the light of that, I direct that the domain name be transferred to the Complainant.

Mark de Brunner

16 October 2006