Nominet UK Dispute Resolution Service

DRS 05671

Royal Bank of Scotland Group PLC 

and

S. Young

Decision of Independent Expert

1	Parties 

Complainant: Royal Bank of Scotland Group PLC 

Respondent: S. Young 

2	Domain Name 

<rbsec.co.uk> 

3	Procedural Background 

3.1	On 24 April 2008 the complaint was received by Nominet, which checked that it complied with the Nominet UK DRS Policy (“the Policy”) and DRS Procedure (“the Procedure”). Nominet received a response from the respondent on 2 June, and the complainant’s reply on 10 June. The dispute was not resolved in mediation. On 3 July 2008 the complainant requested referral of the matter for expert decision under the Procedure, and paid the applicable fee.

3.2	I, Carl Gardner, was appointed as expert on 10 July 2008. I have made the necessary declaration of impartiality and independence. 

4	Facts 

4.1	The complainant is a well known bank and financial services provider. It is proprietor of a UK trade mark number 2004617 for the mark text RBS, registered in 1996 and of a Community Trade Mark number 000097469 for the trade mark name RBS, registered in 1998. It has provided documents showing details of those trade mark registrations with the UK Intellectual Property Office and Office for Harmonization in the Internal Market. 

4.2	The respondent registered the domain name on 13 February 2008. 

5	Parties’ Contentions

Complainant

5.1	The complainant argues that apart from the addition of the letters “e” and “c,” the domain name is identical to its trade mark. This minor addition does not change the impression that the domain name is linked to the complainant. The complainant’s mark is the dominant element in the domain name.

5.2	The respondent’s use on the website associated with the domain name of several of the complainant’s registered marks shows that the purpose of the registration must have been to take unfair advantage of the complainant’s rights. It also shows that the respondent has used the domain name in a manner that took unfair advantage of those rights. 

5.3	The website previously contained links from which it can be inferred that the respondent profited financially from consumers who have accessed the respondent’s website in error.

5.4	The respondent could have changed the content of the website at any time. The respondent’s claim that the site building tool was responsible for the appearance of the “RBS” mark on the website is inconsistent with the description of the site building tool on the registrar’s website. 

Respondent

5.5	The respondent argues that the website showed the complainant’s trade marks due to the unreliable nature of a free website builder tool provided by the registrar 123-reg.com. The webpage showing the complainant’s marks has now been deleted. The respondent’s only purpose has been to test the website construction tool. The respondent has never made money from use of the domain name. 

6	Discussion and Findings 

General

6.1	Under paragraph 2(a) of the Policy a complainant must show on the balance of probabilities that: 

•	it has rights in respect of 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. 

Rights

6.2	Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. 

6.3	The complainant has produced documentary evidence of its trade mark registrations in respect of the mark RBS. 

6.4	The trade mark letters RBS are the first three letters of the domain name, and arguably the dominant element in it. In any event, the domain name contains and begins with the entire mark. The addition of two further letters does not in my view make the domain name dissimilar to the mark. Some internet users might well be confused into associating the domain name with the complainant and read the additional letters as a geographic indicator or abbreviation of some other phrase.

6.5	It should be remembered that the rights test is not a particularly high threshold test, according to the appeal panel in DRS 00248 Seiko UK Ltd. v Designer Time/Wanderweb (seiko-shop.co.uk). 

6.6	In those circumstances I am satisfied that the respondent has rights in respect of a name or mark which is similar to the domain name. 

Abusive Registration

6.7	Under paragraph 1 of the Policy, abusive registration means a domain name which either:

•	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 

•	has been used in a manner which took unfair advantage of or was unfairly detrimental to the complainant’s rights. 

This definition obviously covers both the time of registration, and later use. 

6.8	The complainant is such a well known business, particularly in the UK, that it is inconceivable the respondent was unaware of it and its trade marks. Within about two months of the respondent’s registering the domain name it connected to a webpage featuring the RBS logo and well-known daisy device, together with the words “The Royal Bank of Scotland” and “The Royal Bank of Scotland Group”. The complainant has produced screenshots showing this, and the respondent does not deny it.

6.9	I cannot accept the respondent’s claim that this was accidental, due to an unreliable website construction tool. That is not reasonably credible. 

6.10	In those circumstances I am satisfied on the balance of probabilities that the domain name was registered in a manner that took unfair advantage of the complainant’s rights. It was abusive at the time of registration.

6.11	In addition, according to paragraph 3(a)(ii) of the Policy, circumstances indicating that the respondent’s use of the domain name has confused people into believing it is connected with the complainant may be evidence of abusive registration. 

6.12	The respondent’s use of the complainant’s marks on the website clearly gave rise to potential confusion with the complainant, so I am satisfied that the respondent has used the domain name in a manner which took unfair advantage of the complainant’s rights. 

6.13	The complainant has shown on the balance of probabilities that the domain name, in the hands of the respondent, is an abusive registration. 

7	Decision 

7.1	I find that the complainant has rights in a name or mark which is similar to the domain name; and that the domain name, in the hands of the respondent, is an abusive registration. 

7.2	The complaint is upheld. I direct that the domain name be transferred to the complainant.   

Carl Gardner

21 July 2008