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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Bank of Scotland Group Plc v P [2006] DRS 4061 (8 November 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4061.html Cite as: [2006] DRS 4061 |
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NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 04061
DECISION OF INDEPENDENT EXPERT
The Royal Bank of Scotland Group Plc v Sergei P
Complainant : The Royal Bank of Scotland Plc
Country : GB
Respondent : Sergei P
Country : Malaysia
rbssharedealing.co.uk
3.1 On 27 September 2006 the Complaint was lodged with Nominet in accordance with the Nominet UK Dispute Resolution Service Policy ("the Policy"). Hard copies of the Complaint and its attachments were received in full by Nominet on 28 September 2006.
3.2 On 29 September 2006 Nominet validated the Complaint. On the same day it sent a copy of the Complaint to the Respondent, and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service ("the Procedure") had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.
3.3 By 24 October 2006 no Response had been received from the Respondent by Nominet and the Complainant was advised accordingly.
3.4 On 25 October 2006 the relevant fee was received by Nominet from the Complainant in order for the matter to be referred to an independent expert for a decision.
3.5 On 30 October 2006 Bob Elliott was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the Procedure.
4.1 None.
5.1 The Complainant is one of the world's leading financial services providers and one of the oldest banks in the United Kingdom. In addition to its strong UK presence, the Complainant has offices elsewhere in Europe, and in the United States and Asia.
5.2 The Complainant operates a number of brands worldwide, and offers a wide range of financial products and services – including retail banking, wealth management and insurance services – to both individual and institutional investors across the globe.
5.3 The Complainant has been registered with Companies House since 1968.
5.4 A significant part of the Complainant's business is its share dealing services, which the Complainant says it provides under the mark "RBS Sharedealing". It offers a broad range of brokerage products and services, providing individual and institutional investors with a wide array of investment opportunities.
5.5 The Complainant operates a website at www.rbs-sharedealing.co.uk, and owns the domain names rbs-sharedealing.co.uk (registered on 22 November 2002), and rbs-sharedealing.com.
5.6 The Complainant has numerous registrations for the trade marks RBS, The Royal Bank of Scotland, and its DAISY Device, including UK registered trade marks, Community Trade Marks, and registrations in other jurisdictions. The registrations date back to 1996, and details (including relevant print outs) are attached to the Complaint. The Complainant and its affiliates own domain name registrations including rbs.co.uk and rbs.com, the former registered prior to August 1996.
5.7 The Respondent registered the Domain Name on 7 August 2005. No information is provided in the Complaint about the Respondent.
5.8 The Domain Name, at the time of the Complaint, apparently resolved to a front page which contained links to pages entitled (inter alia) "share", "stock", "bank", "sharedealing", "online sharedealing", "stock market", "dealing", "online", "banking", "share tips", and "share trading". Those related pages in turn contained sponsored links to websites of companies which appear to be competitors of the Complainant, including Scottrade (www.scottrade.com), Saxo Bank Markets (www.saxobank.com), Citibank Direct (www.direct.citibank.com), Chase (www.firstusa.com) and Bank of America (www.bankofamerica.com).
Complainant's Submissions
Rights
6.1 The Complaint is based upon the marks RBS and RBS SHAREDEALING. In relation to the former, the Complainant has supplied extensive evidence of trade mark registrations. In relation to the latter, the Complainant says that it has invested considerable time, effort and money in developing its RBS SHAREDEALING mark, and that it has built up significant goodwill and created a significant demand for the services provided under that mark. As evidence of this, the Complainant points to its ownership of the domain names rbs-sharedealing.co.uk and rbs-sharedealing.com, and the contents of its website at www.rbs-sharedealing.co.uk through which its customers can access its retail stock brokerage services.
6.2 The Complainant says that the Domain Name is similar to both of its marks. In the case of RBS, there is the simple addition of the term "sharedealing" which corresponds to and describes a well-known segment of the Complainant's business. In the case of RBS SHAREDEALING, the mark has been copied in its entirety, and is the same as the Complainant's own domain names, save for the removal of the hyphen.
Abusive Registration
6.3 The Complaint relies upon two of the illustrative heads set out in paragraph 3 of the Policy which may be evidence that the Domain Name is an Abusive Registration.
6.4 Firstly, the Complainant says that the Respondent has registered the Domain Name for the purpose of unfairly disrupting the Complainant's business (paragraph 3.a.i.B). Its customers seeking access to its brokerage products and services are taken instead to the Respondent's website, which promotes brokerage products and services offered by the Complainant's competitors, among other things. This threatens to disrupt its business by, for instance, improperly directing current and prospective customers to competitors, thus causing the Complainant to suffer loss of business and revenue.
6.5 Secondly, the Complainant says that the Respondent is using the Domain Name in a way that has confused people into believing, and has the potential to confuse people into believing, that the Domain Name is registered to the Complainant, operated or authorised by the Complainant, or otherwise is connected with the Complainant (paragraph 3.a.ii). Given the similarity of the names, an internet user intending to access the Complainant's website will find himself at the Respondent's website without realising that he has failed to reach the Complainant's site. Because of the nature of the information and advertising concerned, a user would not necessarily realise his or her error. Additionally, even if a user realised that he was not at the Complainant's official website, he could still be confused into believing that the Complainant was in some way associated with the Domain Name, given the substantial similarities in the name.
6.6 The Complainant also says that the Domain Name is in any event an Abusive Registration because the Respondent is using it to benefit commercially from his unauthorised and illegitimate use of the 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 the Complainant's rights. The way in which the Domain Name is used, by redirecting users to the websites of the Complainant's competitors, is presumably in order to generate "click-through" revenues based upon the amount of traffic diverted.
6.7 Finally, none of the situations referred to in the Policy paragraph 4.a can be established, in order to demonstrate that the Domain Name is not an Abusive Registration.
6.8 The Complainant requests that the Domain Name is transferred to itself.
Respondent's Submissions
6.9 The Respondent has not filed a Response.
General
7.1 In order to succeed in these proceedings, paragraph 2.b of the Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2.a are present namely 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.
Complainant's Rights
7.2 The Complainant has clearly established that it has a significant reputation and goodwill in the United Kingdom in the use of the mark RBS. However, the Expert is more sceptical as to the extent of any Rights in the mark RBS SHAREDEALING. Although the Complainant refers to its ownership of the domain names rbs-sharedealing.co.uk and rbs-sharedealing.com, and the use of the associated website the Expert does not consider that those factors, on their own, demonstrate that the Complainant has Rights within the meaning of the Policy. "Sharedealing" seems to the Expert to be descriptive of the service being offered by the Complainant, and effectively adds little if anything to the RBS name itself. The Expert notes that no evidence is advanced by the Complainant to support its assertion as to generation of goodwill in that name, other than printouts of the website itself.
7.3 However, in view of the descriptive nature of the expression "sharedealing", the Expert is prepared to accept the Complainant's alternative contention to the effect that it has Rights in respect of a name or mark (RBS) which is similar to the Domain Name, given that RBS is the distinctive feature of the Domain Name. The Expert therefore finds that the Domain Name is similar to the Complainant's mark RBS, and that the Complainant has succeeded in establishing the first element of the test as set out in paragraph 2.a.i of the Policy.
Abusive Registration
7.4 There is no attempt by the Respondent to explain its registration of the Domain Name. Although the onus is on the Complainant to prove that both elements of paragraph 2.a of the Policy are present on the balance of probabilities, in the absence of a Response from the Respondent, the Expert may draw such inferences from the absence of a Response as he or she considers appropriate (paragraph 15.c of the Procedure).
7.5 In this case, it is notable that the Domain Name effectively describes a service offered by the well-known Bank RBS. The combination of the mark RBS and the descriptive term "sharedealing" is used without adornment, or alteration. Furthermore, the Domain Name has been used to point to a site which provides links to, and promotes, products of the Complainant's competitors. Although it is possible that some users may appreciate that the site itself is not directly connected to the Complainant, there is no obvious purpose for the site to exist, other than to seek to divert business away from the Complainant, or to confuse users into believing that the Domain Name is at the very least authorised by or otherwise connected to the Complainant.
7.6 In the circumstances, the Expert finds little difficulty in deciding that the Complainant has made out both of the factors it relies upon under paragraph 3 of the Policy, namely those at 3.a.i.C (unfairly disrupting the business of the Complainant), and 3.a.ii (confusing people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant). The Complaint therefore succeeds.
8.1 The Expert finds that the Complainant has Rights in the name or mark RBS, which is similar to the Domain Name. The Expert further finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
8.2 The Expert therefore decides that the Domain Name should be transferred to the Complainant.
Bob Elliott
8 November 2006