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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Royal Bank of Canada v. Henry Chan

Case No. D2003-0031

 

1. The Parties

The Complainant is Royal Bank of Canada, a Canadian chartered bank, incorporated under the laws of Canada, having its principal place of business at 1 Place Ville-Marie, 4th 4^th Floor, East Wing, Montreal, Quebec H3C 3A9, Canada, represented by Ogilvy Ogilvy Renault, 1981 Mc Gill College Avenue, Suite 1100, Montreal, Quebec H3A 3C1, Canada.

The Respondent is Henry Chan of Hong Kong, SAR of China.

 

2. The Domain Names and Registrar

The disputed domain names <rbcroyal.com>, <rbccenturabank.com> and <rbcrewards.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

 

3. Procedural History

The Complaint was filed by email with the WIPO Arbitration and Mediation Center (the "Center") on January 14, 2003, and in hard copy on January 16, 2003.

On January 15, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. Said request for registrar verification was resent on January 20 and 22, 2003. On January 22, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the the "Supplemental Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2003. The Respondent did not submit any response. Accordingly, the Center notified to the parties the Respondent’s default on January 13, 2003.

The Center appointed Nathalie Dreyfus as the sole Panelist in this matter on February 21, 2003. The Panel finds that it was properly constituted. The Panel has submitted on February 20, 2003, the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. An electronic copy of the case file was sent by email to the Panel on February 21, 2003, and the hard copy of the case file was sent by courier.

 

4. Factual Background

The Complainant Royal Bank of Canada is a world-famous bank founded in 1869, and is the owner of many trademark applications or registrations including the term "RBC". Said trademarks are registered especially in Canada and in Hong Kong, SAR of China.

In particular, the trademark RBC is registered for use in association with banking or financial services in the following countries: Antigua, Argentina, Aruba, Australia, Austria, Bahamas, Barbados, Bermuda, Bolivia, Bosnia & Herzegovina, Brazil, Brunei Brunei Darussalam, Chile, China, Colombia, Croatia, Czech Republic, Dominican Republic, Ecuador, Egypt, European Community, Guatemala, Haiti, Honduras, Hong Hong Kong (SAR of China), Hungary, India, Indonesia, Korea, Lebanon, Liechtenstein, Macedonia, Malaysia, Malta, Mexico, Monaco, Montserrat, Morocco, Netherlands Antilles, New Zealand, Nicaragua, Norway, Panama, Paraguay, Peru, Philippines, Romania, Singapore, Slovak Republic, Slovenia, South Africa, St. Christopher & Nevis, St. Lucia, Switzerland, Taiwan (Province of China), Tangiers, Tunisia, Turks and Caicos Islands, United States of America, United Arab Emirates, United United Kingdom, Uruguay, Venezuela and Yugoslavia.

The trademark RBC Lion & Globe Design is registered in Argentina, Aruba, Australia, Barbados, Bermuda, Bolivia, Bosnia & Herzegovina, Brazil, Chile, China, Colombia, Croatia, Czech Republic, Dominican Republic, Ecuador, Egypt, European Community, Guatemala, Honduras, Hong Kong, Hungary, India, Indonesia, Jamaica, Japan, Korea, Lebanon, Liechtenstein, Macedonia, Malaysia, Malta, Mexico, Monaco, Montserrat, Morocco, Netherlands Antilles, New Zealand, Nicaragua, Norway, Panama, Paraguay, Peru, Philippines, Romania, Singapore, Slovak Republic, Slovenia, South Africa, St. . Lucia, Switzerland, Taiwan (Province of China), Tangiers, Thailand, Trinidad Trinidad and and Tobago, Tunisia, Turks and Caicos Islands, United States of America, United United Arab Arab Emirates, United Kingdom, Uruguay, Venezuela and Yugoslavia.

It seems that the trademarks are mainly used in Canada but also in many other countries.

On July 9, 2002, the Complainant filed a trademark application for RBC REWARDS in Canada which designates in particular "financial services, credit card services and operation of incentive award and loyalty program". The date of first use of the trademark RBC REWARD in Canada for said program is about September 2002, concerning the RBC REWARDS program on the Complainant’s website.

On July 10, 2001, the Complainant filed a trademark application for RBC CENTURA in Canada which designates some financial services. It also filed on July 11, 2002, an application for the trademark RBC CENTURA in the United-States based on prior use of the trademark since June 2001. Proof of use of the trademark RBC CENTURA directly by the Complainant or by its licensees have been provided for the US territory.

The Complainant has also registered and/or filed applications for the trademarks ROYAL, ROYAL BANK and ROYAL BANK OF CANADA in Canada and throughout the world:

- registrations and applications for the trademark ROYAL: Antigua, Aruba, Austria, Benelux, Bermuda, Bolivia, Brazil, Canada, Chile, Colombia, Denmark, Dominica, Dominican Republic, Ecuador, Haiti, Honduras, Lebanon, Montserrat, Netherlands Antilles, Panama, Philippines, Portugal, South Africa, Spain, St. Kitts, St. Lucia and Venezuela.
- registrations and applications for the trademark ROYAL BANK OF CANADA: Argentina, Australia, Barbados, Canada, Cayman Islands, Colombia, Germany, Guernsey, Hong Kong (SAR of China), Japan, Ireland, Jersey, Korea, Malaysia, Mexico, New Zealand, Puerto Rico, Sabah, Sarawak, Singapore, Spain, Switzerland, United States and United Kingdom.
- registrations and applications for the trademark ROYAL BANK: Argentina, Bahamas, Barbados, Canada, Indonesia, Puerto Rico and United States.

 

5. Parties’ Contentions

A. Complainant

The contentions of the Complainant include in particular that:

- The dispute is within the scope of the Policy. The registration agreement, pursuant to which the domain names that are the subject of this Complaint were registered, incorporates the Policy.

- The disputed domain names are identical or similar to the trademarks in which the Complainant has rights.

- The Respondent has no rights or legitimate interests in the disputed domain names <rbcroyal.com>, <rbccenturabank.com> and <rbcrewards.com>. The Complainant has never authorized the Respondent to register and use the disputed domain names nor is the Respondent affiliated or otherwise associated with the Complainant. There is no element on the websites that would in any way justify the use of the Complainant’s trademarks within the disputed domain names. As a result, there is no element on the websites showing that the Respondent has used the disputed domain names in connection with a bona fide offering of goods or services or that it is making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks. The registration and use of three domain names which are identical or confusingly similar to the Complainant’s trademarks is evidence of the Respondent’s attempt to trade on the goodwill and reputation associated with the Complainant and its trademarks. Besides, the Respondent has used the domain names <rbcroyal.com> and <rbccenturabank.com> to promote products and services in competition with the Complainant.

- The Respondent has registered and used the domain names <rbcroyal.com>, <rbccenturabank.com> and <rbcrewards.com> in bad faith. Within a short period, the Respondent has registered three domain names which are identical or confusingly similar to the Complainant’s trademarks and it cannot be by pure coincidence. The Respondent has intentionally chosen the disputed domain names having in mind the Complainant and has engaged in such pattern in order to prevent the Complainant from reflecting its trademarks in corresponding domain names. The Respondent has registered and used the disputed domain names for the purpose of disrupting the Complainant’s business and/or for the purpose to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites. By benefiting of the goodwill and reputation associated to the Complainant’s trademarks, the Respondent has used the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors.

- The remedy requested is that the disputed domain names <rbcroyal.com>, <rbccenturabank.com> and <rbcrewards.com> be transferred the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Introduction

Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements to obtain the transfer of the domain names. The burden is on the Complainant to show cumulatively:

(i) that the domain names are identical or confusingly similar to the trademarks in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in the domain names; and
(iii) that the domain names were registered and used in bad faith.

All these three elements are considered below.

A. Identical or Confusingly Similar

The Panel finds that the domain name <rbcrewards.com> is identical to the Complainant's trademark RBC REWARDS as it incorporates the complete trademark without any deviation whatsoever.

The domain name <rbccenturabank.com> is confusingly similar to the Complainant's trademark RBC CENTURA. The only difference is the addition of the generic word "bank" which is descriptive of the banking business of the Complainant. The Complainant alleged that the domain name <rbcenturabank.com> is identical to the corporate name of RBC Centura Bank which uses under license the trademark RBC CENTURA in the United States. Said allegation is irrelevant as only previous trademarks rights can support an action under the Rules.

The domain name <rbcroyal.com> is confusingly similar to the Complainant's trademark RBC ROYAL BANK, the only difference between the domain name and the trademark being the deletion of the generic term "bank".

Pursuant to the above, the Panel is of the opinion that the Complainant has met the burden of proof as required by paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has proven that it is the owner of the trademarks RBC, RBC Lion & Globe Design, RBC REWARDS, RBC RBC CENTURA, ROYAL BANK and ROYAL BANK OF CANADA in many countries throughout the world. The Complainant certifies that it has never authorized the Respondent to register and use the disputed domain names nor is the Respondent affiliated or otherwise associated with the Complainant. The Respondent states that the Respondent was never commonly known by the disputed domain names and that there is no element on the websites that would justify the use of the Complainant’s trademarks within the disputed domain names.

While the burden of proof is on the Complainant to show that the Respondent has no rights or legitimate interests, it is incumbent upon the Respondent to show otherwise. In the present case, the Respondent has not responded with any claim to use the domain names or names corresponding to a bona fide offering of goods and services in terms of paragraph 4(c)(ii) of the Policy. There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to use the trademarks. Besides, there is no evidence that the Respondent as an individual, business or other organization has been commonly known by the domain names as required by paragraph 4(c)(ii) of the Policy.

Additionally, the Respondent is not making a fair use of the domain names. According to the evidence submitted by the Complainant, all disputed domain names resolve to identical websites that host links to external websites, classified by subjects. The websites operated at <rbcroyal.com> and <rbccenturabank.com> host links to websites of Complainant’s competitors. The <rbcroyal.com> website promotes the services of Bank of America and the online banking services of Wells Fargo Small. The Panel is of the opinion that the Complainant has demonstrated that the Respondent has registered and used the disputed domain names in order to attempt to attract those Internet users familiar with the Complainant’s trademarks to its websites by obtaining the benefit of the goodwill and reputation associated with Complainant’s trademarks. This is supported by prior cases and in particular Decision FA00102492 Bank of America Corporation v Vox Consult.

Having regard to all the foregoing, the Panel is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain names pursuant to sections 4(c) (i), (ii) and (iii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a) (iii) of the Policy requires the Complainant to prove that the domain names have been registered and are being used in bad faith. Paragraph 4(b), without limitation, list as being:

- in clause (ii) "you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct";
- in clause (iii) "you have registered the domain name primarily for the purpose of disrupting the business of a competitor";
- in clause (iv) where "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".

The Panel is of the opinion that the registration not of one, but of three domain names which are identical or confusingly similar to the Complainant’s trademarks, supports the inference that the Respondent knew of the Complainant’s trademarks upon registering the domain names and is evidence of a pattern of such conduct. The Respondent has intentionally selected said domain names to prevent the Complainant from reflecting its trademarks in corresponding domain names (See WIPO Case N° D2001-1398, Allianz Ag And Dresdner Bank Ag V. Comofer S.L. As far as the third domain name <allianz-dresdnerbank.info> is concerned the Panel notes that it was registered immediately after the Complaint had been made in respect of the first two domain names. It is of course possible that this was pure coincidence. Nevertheless, given the previous conduct of the Respondent in registering the first two domain names, the Panel is entitled to draw the inference that in the absence of any evidence of good faith in registering <allianz-dresdnerbank.info> the registration was part of a pattern of conduct falling within paragraph 4(b)(ii) of the Policy).

The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites.

The Panel concludes that the requirements of paragraph 4(b) of the Policy that the Respondent registered and used the disputed domain names in bad faith are met.

 

7. Decision

For all the foregoing reasons, the Panel finds that:

- The domain names registered by the Respondent are confusingly similar to the trademarks to which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain names; and
- The domain names have been registered and are used by the Respondent in bad faith.

In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of the domain names <rbcenturabank.com>, <rbcrewards.com> and <rbcroyal.com> be transferred to the Complainant and directs the Registrar iHoldings.com Inc. d/b/a DotRegistrar.com to do so.

 

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Nathalie Dreyfus
Sole Panelist

Dated: March 5, 2003