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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Citizens Financial Group, Inc. v Cole [2006] DRS 4090 (22 November 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4090.html Cite as: [2006] DRS 4090

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Nominet UK Dispute Resolution Service

DRS Complaint No 04090

Decision of Independent Expert

1. Parties

Complainant: Citizens Financial Group, Inc.

Country: US

Respondent: Kathleen J Cole

Country: UK

2. Domain Name

citizensbk.co.uk

3. Procedural Background

The Complaint was validated by Nominet on 6 October 2006 and sent to the Respondent on that date by both post and email to the respective addresses set out in the Registry details. Nominet informed the Respondent that it had 15 working days, i.e. until 30 October 2006, to respond to the Complaint.

The postal notification was returned by the Royal Mail and marked to the effect that delivery had not been possible. The email notification also proved to be undeliverable.

By 30 October 2006, no formal Response having been received from the Respondent, Nominet wrote to the Complainant's representative confirming that no Response had been filed and invited the Complainant to request an Expert Decision.

The Complainant paid the fee within the relevant time limit and thereafter I was contacted by Nominet and asked to confirm that I was able to provide an Expert Decision. I responded to Nominet confirming that I was able to provide a decision.

On 8 November 2006, the matter was duly referred to me, Simon Chapman, ("the Expert") for an Expert Decision.

4. Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a formal response to the Complaint. From the papers that have been submitted to me by Nominet, it is apparent that they have sent the Complaint to the Respondent using the contact details held on Nominet's Register.

When registering a .uk domain name applicants agree to be bound by Nominet's Terms and Conditions. Clause 4.1 of those terms and conditions states that the registrant of the domain name shall:-

"4.1   give and keep us notified of your correct name, postal address and any phone, fax or e-mail information and those of your contacts (if you appoint any, see condition 5.2). This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register"

In addition paragraph 2(e) of the Dispute Resolution Service Procedure (the "Procedure") states that:-

"e. Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:

i.  if sent by facsimile, on the date transmitted; or

ii.  if sent by first class post, on the second Day after posting; or

iii. if sent via the Internet, on the date that the communication was transmitted;

iv. and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly."

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.

I now move on to consider the consequences of the Respondent not submitting a response.

The Procedure envisages just such a situation and provides in Paragraph 15 that:-

"c. If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate."

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision.

I will draw such inferences from the Respondent's failure to respond as I think appropriate, but must keep in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say.

5. The Facts

The Complainant is the eighth largest commercial holding company in the United States with more than $164 billion in assets. It has offices throughout the United States and offers a wide range of financial products and services, including international and online banking services. The Complainant was acquired by The Royal Bank of Scotland Group Plc in 1988, a well known bank in the UK.

The Complainant has a number of trade mark registrations and applications for the mark CITIZENS BANK in the United States. Both it and its affiliates own domain names for the provision of financial services, including and .

The Respondent registered the Domain Name on 12 March 2005, and pointed it to a site which promotes banking services under the name "Citizens International Bank". The site purports to offer similar retail and commercial banking to that offered by the Complainant, however in reality it would seem that the business being conducted was a sham. There are no records of such a bank trading in the UK (the location of the business on the website), there is no record of such a business with Companies House, and the business could not be located via general internet searches. The domain no longer resolves to any site.

The Parties' Contentions

Complainant

The Complainant asserts that it has Rights in respect of a name and mark which is similar to the Domain Name and the Domain Name in the hands of the Respondent is an "Abusive Registration" as defined in the Dispute Resolution Service Policy (the "Policy").

In support of the claim to Rights, the Complainant says that it is the proprietor of the trade mark referred to above and has extensively used that mark.

In support of the claim that the Domain Names are Abusive Registrations the Complainant says that -

i) the Respondent has used the Domain Name to perpetrate a fraud by deceiving users into believing that they were contacting a legitimate website and soliciting information from them likely to be used for fraudulent activity;

ii) the use being made by the Respondent is intended to unfairly disrupt the Complainant's business, and will cause the Complainant to suffer loss of customers, business and goodwill in their mark;

iii) the use is leading or is likely to lead to confusion amongst users of the Complainant's services;

iv) the Respondent was using the domain to benefit commercially from unauthorised or illegitimate use of the Complainant's mark and associated goodwill.

Respondent

As indicated above, the Respondent has not filed a Response.

6. Discussion and Findings:

General

To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that:

(i) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and

(ii) the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

Despite the absence of a response from the Respondent, the Complainant must make out its case to the Expert on the balance of probabilities. It is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

Complainant's Rights

The DRS Policy defines Rights as follows –

"Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business"

The Complainant is the proprietor of registrations for the trade mark 'CITIZENS BANK', and has used that mark such that it is likely to have created extensive goodwill therein. It is clear that the Complainant therefore qualifies as having the necessary rights in that mark.

The Policy requires such rights to be in a name or mark identical or similar to the Disputed Domain Name. The Domain Name is For the purpose of analysing whether the Domain Name is identical or similar to the name or mark in which rights are claimed, one must ignore the .co.uk suffix. The comparison is therefore between 'CITIZENS BANK' on the one hand, and 'CITIZENSBK' on the other. In my opinion the addition of the removal of the letters 'A' and 'N' in the Domain Name make little difference to the overall impression or impact of it, and I determine that the Complainant has established that it has Rights in a name or mark similar to the disputed Domain Name.

Abusive Registration

I now go on to consider the extent to which the disputed Domain Name is an Abusive Registration.

The Complainant asserts that the registration of the Domain Name is an Abusive Registration for the reasons identified above.

The Policy defines 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"

and goes on to set out a (non-exhaustive) list of factors which may be evidence that a domain name is an Abusive Registration.

It seems to me that the grounds of complaint relied upon by the Complainant that I have listed above (i) deceiving users, (ii) disruption to the Complainant's business, (iii) creating confusion amongst customers, and (iv) commercial benefit from unauthorised/illegitimate use, are grounds that fall within the general definition of an abusive registration and in some of the factors listed.

It is clear from the evidence that has been presented that the Complainant is a very well known financial institution in the Unites States and beyond. It seems highly likely that the Domain Name was registered and used exactly because of this, and the domain name was therefore used for purposes that took unfair advantage of or was unfairly detrimental to the Complainant's rights. In the absence of any rebuttal of the Complaint, I have little difficulty in determining that the use of the Domain Name by the Respondent is Abusive.

7. Decision

For the reasons set out above, I find that the Complainant does have Rights in respect of a name or mark which is similar or identical to the Domain Name , and that the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds.

The disputed Domain Name should be transferred to the Complainant.

Simon Chapman

22 November 2006