The Royal Bank of Scotland v. Stealth Commerce

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a. Telmex Management Services, Inc.

Case No. D2002-0155

1. The Parties

1.1 The Complainant in this administrative proceeding is The Royal Bank of

Scotland Group, incorporated according to the laws of the United Kingdom and

whose principal registered office is 36 St. Andrew Square, Edinburgh, EH2 2YB Scotland.

1.2 The Respondent in this administrative proceeding is, according to directNIC’s

Whois database, Telmex Management Services, Inc., a company which was incorporated

in the Virgin Islands with an address at Pasae Estate, Road town, Tortola, British

Virgin Islands. Further information in its Amended Complaint has been supplied

by the Complainant to the effect that the Respondent should be identified as

Stealth Commerce a.k.a. Telmex Management Services, Inc. at the same address.

2. The Domain Name and Registrar

2.1 The Domain Name, the subject of this dispute, is <royalbankscotland.com>.

2.2 The Domain Name is registered with Intercosmos Media, d/b/a directNIC.com,

650 Poydras Street, Suite 2311, New Orleans, LA 70130, USA.

3. Procedural History

3.1 The Complaint was initially filed electronically on February 15, 2002,

with a further amended Complaint filed on February 26-27, 2002.

3.2 The Complainant elected to have the dispute decided by a single-member

Administrative Panel.

3.3 No legal proceedings have been initiated, as yet. (Rules for Uniform Domain

Name Dispute Resolution Policy ("Rules"), paragraph 3(b)(xi)).

3.4 As required by the Rules and the WIPO Supplemental Rules, payment in the

amount of USD 1,500.00 has been made, payable to World Intellectual Property

Organization.

3.5 The Complainant agreed that its claim and remedies concerning the registration

of the Domain Name, the dispute, or the dispute’s resolution shall be solely

against the Domain Name holder and waives all such claims and remedies against

(a) the WIPO Arbitration and Mediation Center and Panelists, except in the case

of deliberate wrongdoing, (b) the concerned Registrar, (c) the Registry Administrator,

(d) the Internet Corporation for Assigned Names and Numbers, as well as their

directors, officers, employees and agents.

3.6 On February 25, 2002, the WIPO Arbitration and Mediation Center

("the Center") transmitted via e-mail to, a request for registrar

verification in connection with this case and on February 25, 2002,

the Center received a verification response from the Registrar.

3.7 Notification of Complaint and Commencement of Administrative Proceeding

was sent to Respondent by the Center on March 8, 2002.

On March 14, 2002, the Center reported that "Notification of Complaint + Complaint" were returned from Respondent’s postal address.

3.8 Respondent was determined to be in default on April 5, 2002.

3.9 On April 9, 2002, the Center reported that "Notification

of Respondent Default" was returned from Respondent’s postal address.

3.10 The single Panel member, Cecil O.D. Branson, Q.C., submitted a Statement

of Acceptance and Declaration of Impartiality and Independence and was duly

appointed on April 19, 2002, in accordance with paragraph 15 of the

Rules. The Panel was required to forward its decision to the Center by May 3, 2002.

3.11 The Panel finds that it was properly constituted and appointed in accordance

with the Rules and the Supplemental Rules.

4. Factual Background

4.1 The Royal Bank of Scotland Group (RBS), founded in 1727, is one of Europe’s

leading financial services groups. By market capitalisation as at September 30, 2001,

it is the UK’s seventh largest company, the second largest bank in the UK and

in Europe, and it ranks sixth in the world. In addition to the provision of

a full range of banking services under The Royal Bank of Scotland and NatWest

brands, the enlarged group also includes a number of other major financial services

brands:

Direct Line, one of the UK’s largest private motor insurers and a leader in the telephone delivery of financial services; Citizens Financial Group, based in Rhode Island USA – the second largest bank in New England; Ulster Bank, based in Northern Ireland and with a strong position in the Republic of Ireland; Lombard, the UK's number one and one of the world's leading asset finance companies; Coutts Group, the international private banking group. Coutts is a leading force in private banking and manages the wealth of 70,000 high net worth clients from 38 offices around the world.

The Royal Bank of Scotland Group enjoys leading positions in the UK across a range of different areas:

Number one in the UK in corporate and commercial banking; number one for small business customers; it has 10.8 million branch-based Royal Bank and NatWest personal customers and 1 million internet banking customers, and is number two in retail banking. It was rated "top service provider" by personal and business banking customers in 2000; number one in UK offshore banking; number one in private banking; number one in the UK for asset finance; number two provider of telephone motor insurance; number two in UK credit cards.

Since 1994, The Royal Bank of Scotland has sought and obtained trade mark protection in the ROYAL BANK OF SCOTLAND name in many jurisdictions (a complete table of applications and registrations is hereby attached as ANNEX E) including the United Kingdom (UK) and Community Trade Marks (CTM). The CTM and UK trademarks are as follows:

TM No_Mark_Type_Reg. Date_Classes_Country__97402_The Royal Bank of Scotland_Word_01/04/96_9,16, 35, 36, 42_CTM__1566043_The Royal Bank of Scotland_Word_18/03/94_9_UK__1566044_The Royal Bank of Scotland_Word_18/03/94_36_UK__

These marks are used in connection with magnetically encoded cards data carriage, multifunction cards for financial services, bank cards, charge cards, credit cards, cheque cards, paper, paper articles advertising materials printed matter, cheque books, accounting services, company registration, research and business management advice, share registration, company registration, service payroll preparation, business appraisals, banking, financial and insurance services, and legal services.

Since 1727, the Royal Bank of Scotland has used THE ROYAL BANK OF SCOTLAND name in commerce in connection with banking and financial services and as such before it sought trade mark registration, it’s use of the name was such that the name had become sufficiently distinctive for The royal Bank of Scotland to have acquired unregistered Common Law trade mark rights in the name.

In October 25, 2001, the Respondents, Telmex Management Services, registered the domain name <royalbankscotland.com>. At some date thereafter, the domain name was pointed to a website at "http://www.girlhire.com", <girlhire.com> which displayed women for hire/sale. As of January 23, 2002, the front page boasted the line "we provide women". The website explains for what purposes these women are provided: escort, CEO, model wife, dinner date, temp, consultant, etc. The front page also solicits applications from suitable girls. The girls are also advertised by month. Clicking on a month takes one further into the site where each girl has her own web page. Each girl’s details and additional photos are displayed on their web page. Some of the photographs are risqué but clicking on each photo displayed further photos some of which can be described as titillating and soft pornography. The details included the girl’s location, at least two of which are based in London, a brief bio, and their current charge rate, indicating that this is a purely commercial website.

The Complainant was alerted by a customer to the existence of this website sometime in Mid January 2002. Complainant took immediate steps via a Cease and Desist Letter to request that the Respondent discontinue the use of the domain name "royalbankscotland.com" because the name is so similar to the Complainant’s name that a simple typographical error would lead anyone intending to access the Complainant’s site to this site instead of the Complainant’s site. The Cease and Desist Letter which was addressed to Mr. Rousseau (listed as administrative contact on the Whois report) amongst other things put Respondent on notice of the Complainant’s trade marks, as well as informing them that they were likely to cause confusion amongst the public as to the origin of the mark which confusion could also lead to degradation of the mark due to the contents of the website. The Complainant demanded that the Respondent cease pointing the domain name to the website at http://www.girlhire.com, <girlhire.com> and secondly that they cancel or alternatively transfer their registration of the name to the Complainant.

Respondent through a Helen Bradbury (Senior Domain Administrator/Counsel) replied by e-mail of January 31, 2002, claiming their rights to use the name, further stating that the domain name is being developed for a client. They stated that they were based in the BVI and operate in the United States, and solicited the Complainant to purchase the name. Again, by e-mail on February 7, 2002, Respondent approached the Complainant to request whether Complainant wished to purchase the name. To clarify matters, Complainant, by email on February 8, 2002, requested that Telmex clarify their position with regards to the purchase, and explain exactly what they meant by purchase. Again by e-mail of February 8, 2002, Ms. Bradbury responded, without answering to the direct questions asked by Complainant. Complainant further attempted to elicit a direct response (including asking who Telmex’s client is) from Ms. Bradbury by e-mail of February 8, 2002, Ms. Bradbury’s response of February 9, 2002, was not any more forthcoming.

As of February 7, 2002, the domain name was no longer pointing at "http://www.girlhire.com" <girlhire.com>. Rather it was now pointing at another site "http://www.temptationsatwork.com" <temptationsatwork.com> also owned by the Respondents. Again it had similar content to "girlhire.com", except that now the front page advertises itself thus: [Temptations@work is a "brand new form of global staffing agency... a mix of traditional Secretarial & I.T temping agency with Escorts, Hosts, Translators creating our famous "SEXETARIES" _"Staff supplied include: MAIDS/CLEANERS/COOKS/CHAUFFERS/HOSTS/ESCORTS/TRANSLATORS/DINNERDATES/WEB DESIGNERS/SENIOR SECRETARIES/JUNIOR PROJECT MANAGERS."]

This site also displayed the lines "you have arrived here as a result of third party advertising" at the top and "discreetly mixing business with pleasure" at the bottom. Placing the cursor on any picture caused it to change and display a more erotic/risqué picture. These secondary soft pornographic images could not be printed. A printout of this front page gave the address reference as "http://www.temtations@work.com" "www.temtations@work.com" rather than "http://www.royalbankscotland.com" <royalbankscotland.com> as can be seen from the captured image.

4.2 No response having been filed on behalf of the Respondents, this Panel

accepts the aforesaid assertions as facts.

5. Amendment to Complaint

5.1 Subsequent to the filing of this Complaint with the WIPO Center and serving

the required persons with copies thereof, on February 15, 2002, the

named Respondent, Telmex Management Services, also at the same address changed

the Registrant information to reflect another name, obviously in an attempt

to evade the ICANN UDRP process. An amendment to Complaint was filed by the

Complainant on February 26, 2002, to indicate the new Registrant’s name. This

Panel is satisfied that the alleged new party Stealth Commerce is the same entity

as Telmex Management Services and therefore orders that the style of cause on

the Complaint be changed to "Stealth Commerce a.k.a. Telmex Management

Services, Inc."

6. Parties’ Contentions

A. Complainant

6.1 The Complainant says that the Domain Name is confusingly similar to a trademark

or service mark in which the Complainant has rights due to its being nearly

identical to the Complainant’s ROYAL BANK OF SCOTLAND name.

6.2 The Complainant submits that at no time was the Respondent known as Royal

Bank of Scotland or Royal Bank Scotland, that the Respondent, whether as a business

or as an individual, has never used the name nor have they been so referred

to or commonly known, even as a nickname.

6.3 The Complainant further submits that before any notice to the domain name

registrant of the dispute, there was no evidence of the registrant’s use of,

or demonstrable preparations to use, the domain name or a name corresponding

to the domain name in connection with a bona fide offering of goods or services.

6.4 The Complainant says that in registering and using the domain name, the

domain name registrant intentionally attempted to attract for financial gain,

Internet users to the registrant’s web site by creating a likelihood of confusion

with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement

of the registrant’s web site or location or of a product or service on the registrant’s

web site or location.

6.5 The Complainant also points to the Respondent being untruthful in its claim

that it operates in the British Virgin Islands and in the United States as the

Complainant’s investigation showed that the Respondent had ties to the United

Kingdom as evidenced by hyperlinks on the web-site in question.

6.6 Also, the Complainant contends that the Respondent engages in a pattern

of behaviour of cybersquatting by registering Domain Names using either a typo-form

or a hyphenated form of the proper format of other companies’ names with the

intention to use such names in such a manner as to attract financial gain to

the Respondent by increasing traffic to Respondents’ web-site.

6.7 It also submits that it is so well established in the United Kingdom that

anybody based in the United Kingdom cannot claim ignorance of its existence

or its repute and that such knowledge should be imputed to the Respondent.

6.8 Complainant also has said Respondent’s use of the Domain Name to point

to websites which contain adult material and without any accompanying disclaimer

clearly indicates an intention to create an association with the Complainant’s

mark whether by way of an endorsement or some other affiliation or an attempt

to pass off their activities as having some connection to the Complainant which

Complainant asserts is certain to cause irreparable loss to the goodwill and

reputation of the Complainant.

6.9 Furthermore, Complainant asserts that Respondent’s conduct in redirecting

guests to the site in question to a site which is in no way connected to the

Complainant and which can in fact be argued to contain material likely to cause

damage of the reputation and goodwill of the Complainant alone and cumulatively

amount to bad faith.

6.10 In the alternative, Complainant also submits that the domain name was

registered or acquired primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the Complainant as the owner of

the trademark or to a competitor of the Complainant, for valuable consideration

in excess of the domain name registrant’s out-of-pocket costs directly related

to the domain name.

B. Respondent

6.11 The Respondent has failed to respond to Complainant’s contentions as found

in the Complaint.

C. No Other Submissions

6.12 The Panel has not received any other requests from Complainant or Respondent

regarding further submissions, waivers or extensions of deadlines, and the Panel

has not found it necessary to request any further information from the Parties

(taking note of the Respondent’s default in responding to the Complaint).

7. Discussion and Findings

7.1 The Complaint was submitted on the basis of the provisions of the Registration

Agreement in effect between the Respondent and NSI, which incorporates, by reference,

the Uniform Domain Name Dispute Resolution Policy (the "Policy") by

way of NSI’s domain name dispute policy in effect at the time of the dispute.

The policy requires that domain name registrants such as Respondent submit to

a mandatory administrative proceeding regarding third-party allegations of abuse

of domain name registration (Policy, paragraph 4(a)).

7.2 Such administrative proceedings are conducted by ICANN-approved dispute

resolution service providers such as WIPO. The Policy provides an administrative

means for resolving disputes concerning allegations of abuse of domain name

registration, subject to referral of the dispute to a court of competent jurisdiction

for independent resolution (Policy, paragraph 4(a)).

7.3 The Panel is satisfied that WIPO took all steps reasonably necessary to

notify the Respondent of the filing of the Complaint and initiation of these

proceedings, and that the failure of the Respondent to furnish a reply or participate

in any other fashion is not due to any omission by WIPO (see Procedural History,

supra).

7.4 The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy

(the "Rules"), establish procedures intended to assure that respondents

are given adequate notice of proceedings commenced against them, and a reasonable

opportunity to respond (See e.g. paragraph 2(a), Rules).

7.5 Paragraph 15(a) of the Rules addresses the principles to be used in rendering

a decision:

"A Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

7.6 Failure on the part of a Respondent to file a Response to the Complaint

permits an inference that Complainant’s allegations are true and that the Respondent

knows its web site is misleading. Where Respondent has not filed a Response

to the Complaint, in the absence of exceptional circumstances, under paragraph

5(e) of the Rules, the Panel shall decide the dispute based on the Complaint.

It may also permit a Panel to infer that the Respondent does not deny the facts

which the Complainant asserts nor the conclusions which the Complainant asserts

can be drawn from those facts. (See: Harrods Limited v. Harrod’s Closet,

WIPO Case No. D2001-1027.)

In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative Proceeding that each of the three elements of paragraph 4(a) are present:

(i) that the Domain Name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

7.7 The uncontradicted evidence of the Complainant satisfies the Panel that

the Respondent has registered a Domain Name which is identical or confusingly

similar to the Complainant’s registered trademark.

(ii) that the Respondent has no rights or legitimate interests in respect of

the Domain Name; and

7.8 The Respondent has not asserted any rights or legitimate interests in respect

to the Domain Name in question. While the burden of proof in this regard is

on the Complainant, the Panel may draw an inference that Complainant’s allegations

are true where the Respondent has failed to submit a Response. An inference

in favor of the Complainant may be drawn in this regard where there is no evidence

that the Respondent has been commonly known by the Domain Name. In the absence

of any license or permission from a Complainant for the Respondent to use any

of its trademarks or to apply for or use any Domain Name incorporating any of

those marks it has been found to be evidence of the lack of a Respondent’s rights

or legitimate interests in the Domain Name. (See. Harrods Limited v. Harrod’s

Closet, WIPO Case No. D2001-1027).

This Panel finds that on a preponderance of evidence before it the Respondent

has no rights or legitimate interests in respect of the Domain Name <royalbankscotland.com>.

(iii) that the Domain Name has been registered and is being used in bad faith.

7.9 The registration of a name that is identical or confusingly similar to

that of Complainant which attempts to mask the identity of the registrant via

fictitious addresses and names has been held to be bad faith: See Digital

Channel Partners Ltd. v. Bilham Solutions and Marlie’s Bilham. WIPO

Case No. D2000-1246; 3636275 Canada, dba eResolution v. eResolution.com

WIPO Case No. D2000-0110; Telstra Corporation

Limited v. Nuclear Marshmallows WIPO Case

No. D2000-0003). There are also decisions which have held that a Respondent’s

use of a Domain Name to deliberately redirect a user of the site to others which

have no connection at all with the Complainant and contain material likely to

cause damage to the reputation and goodwill of the Complainant is bad faith.

See Doctor.Ing.h.c. F.Porsche AG v. Stoneybrook Investments Limited,

WIPO Case No. D2001-1095. This is sometimes

known as "typosquatting".

For the above reasons, this Panel finds that the Domain Name <royalbankscotland.com> has been registered and is being used in bad faith.

8. Decision

8.1 In accordance with paras. 4(i) of the Policy and 15 of the Rules, this

Administrative Panel appointed in this administrative proceeding issues a decision

that the contested Domain Name <royalbankscotland.com> be transferred

to the Complainant.

Cecil O.D. Branson, Q.C.

Sole Panelist

Dated: April 24, 2002