Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 4325

The Royal Bank of Scotland Group plc v Easy Domain Connect Ltd

Decision of Independent Expert

1. Parties

Complainant: The Royal Bank of Scotland Group plc

Country: GB

Respondent: Easy Domain Connect Ltd

Country: GB

2. Domain Name

rbsjobs.co.uk ("the Domain Name")

3. Procedural Background

22 December 2006:	Complaint lodged with Nominet electronically
22 December 2006:	Hardcopy complaint received by Nominet
22 December 2006:	Nominet forwarded complaint to Respondent
19 January 2007:	No response received by Nominet

On 22 January 2007 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.

4. Outstanding Formal/Procedural Issues (if any)

None.

5. The Facts

The Complainant was founded in Edinburgh by royal charter in 1727 and is one of the oldest banks in the UK. It was incorporated as a public limited company in the UK in 1968.

The Complainant acquired National Westminster Bank in 2000 and by the end of 2002 it was the second largest bank in Europe and fifth largest in the world by market capitalisation.

The Complainant offers its financial services worldwide under the mark "RBS" and has spent a significant amount of money promoting and developing this mark. The Complainant also owns an international portfolio of registered trade marks for the term "RBS" including UK trade mark 2004617 dated 23 November 1994 and CTM 97469 dated 1 April 1996, both in classes 9,16,35,36 and 42.

The Complainant operates websites at rbs.com (registered 1994) and rbs.co.uk (registered before 1996) and, amongst other things, the Complainant offers careers information and job application forms on these and other of its websites.

The Respondent registered the Domain Name on 21 June 2006.

As of 19 December 2006, the Domain Name resolved to a website branded "rbsjobs.co.uk" with a list of affiliate links to recruitment websites including those offering jobs in the financial sector.

6. The Parties' Contentions

Complaint

The Complainant owns registered and unregistered rights in the term "RBS".

The Domain Name is similar to the Complainant's name and mark. The Respondent has simply added the word "jobs" – which is a generic term describing employment - to Complainant's "RBS" mark. Moreover, the Complainant's mark is the dominant and distinctive element in this domain name and, therefore, the Domain Name strongly conveys the impression that it is sponsored by, or associated with, the Complainant.

The Domain Name is apparently targeted toward internet users who are seeking information about legitimate employment opportunities with the Complainant.

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.

First, it appears that Respondent has registered the Domain Name for the purpose of unfairly disrupting the Complainant's business. The Domain Name is targeted toward internet users seeking access to the Complainant's online employment-related information and services. Such users, however, are taken to the Respondent's website which displays links to certain businesses offering jobs in competition with Complainant, including financial-related companies.

Secondly, the Domain Name is an abusive registration because the Respondent has used it to benefit commercially from its unauthorized 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 Complainant's rights. The Respondent's redirecting of internet users searching for employment opportunities with Complainant to the websites of companies that compete with the Complainant for employees is presumably in order to generate "click-through" revenues based on the amount of traffic it diverts to those sites. The Respondent's attempt to profit financially from its unauthorized use of the Complainant's marks is commercially exploitive of the Complainant's marks and evidences an abusive registration.

It is likely that internet users could be confused into believing that the Complainant was in some way associated with the Domain Name, given that the domain name fully incorporates Complainant's "RBS" mark. Indeed, creating such confusion was most likely the Respondent's goal.

The Respondent's registration and use of the Domain Name is an abusive registration because the Respondent is not the legitimate owner of the mark, has not been given permission to use Complainant's "RBS" mark, and there is no legitimate purpose to which Respondent could put the Domain Name. Because of this, any realistic use of the Domain Name by Respondent would constitute "passing off and/or trade mark infringement.

The Respondent cannot establish any of the situations demonstrating that the Domain Name is not an abusive registration. For instance, there is no evidence that the Respondent has ever used the Domain Name in connection with a genuine offering of goods or services; has ever been commonly known by the Domain Name; or has ever made a legitimate non-commercial or fair use of the Domain Name.

Response

There was no Response.

7. Discussion and Findings:

General

To succeed, the Complainant has to prove in accordance with paragraph 2 of the DRS Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the DRS Policy) in respect of a name or mark identical or similar to the Domain Name and, second, that the Domain Name, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the DRS Policy).

Complainant's Rights

The Complainant undoubtedly has rights in the mark "RBS" by virtue of its registered trade marks as well as common law rights deriving from extensive trading activities under that name.

The term "RBS" is the dominant term in the Domain Name. The only difference between the Domain Name and the trade mark is addition of the descriptive word "JOBS". This is insufficient to distinguish the Domain Name from the trade mark.

The Complainant has established rights in a name which is similar to the Domain Name.

Abusive Registration

Is the Domain Name an abusive registration in the hands of the Respondent? Paragraph 1 of the DRS Policy defines "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 name "RBS" is extremely well known in the UK. I think it inconceivable that the Respondent registered the Domain Name for a genuine purpose and the Respondent has not come forward to offer any explanation.

Rather, the Respondent's use of the Domain Name for a list of affiliate recruitment websites including in the Complainant's financial sector indicates that the Respondent registered the Domain Name in order to divert and profit from internet users seeking information about employment opportunities with the Complainant.

I conclude from this that the Domain Name is an abusive registration in that was registered and has been used in a manner which took unfair advantage and/or was unfairly detrimental to the Complainant's rights.

8. Decision

The domain name should be transferred to the Complainant.

Adam Taylor Date