WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Bank of Canada v. William Vaughan
Case No. D2007-1752
1. The Parties
The Complainant is Royal Bank of Canada, Montreal, Quebec Canada, represented by Ogilvy Renault, Canada.
The Respondent is William Vaughan, Springfield, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <rbcbank.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2007. On November 29, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On November 30, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 24, 2007.
The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on January 3, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the holder of the following trademark registrations:
Canadian Registration Nos. 424,800, filed on January 6, 1993 and 369,496, filed on January 13, 1989, both covering the mark RBC.
Canadian Registration Nos. 356,974, filed on April 27, 1988 and 228,999, filed on October 28, 1977, both covering the mark ROYAL BANK.
Canadian Registration No. 601,555 for RBC LION & GLOBE DESIGN, filed on February 6, 2004.
Complainant also is also the holder of the following domain names:
Respondent registered the disputed domain name <rbcbank.com> on August 8, 2007.
5. Parties’ Contentions
Complainant submitted the following arguments:
B. Similarity of the Domain Name and Trademark
Complainant is a well-known financial institution which does business in many countries of the world.
Since 1869, Complainant has developed substantial goodwill and a reputation in its trademarks.
Since 1993, Complainant has developed a family of trademarks composed of “RBC” for use in association with banking, financial and insurance services.
Since 2001, Complainant has introduced a new branding which focuses on the expansion of the family of the trademarks composed of “RBC”, particularly, by adopting the trademarks RBC and RBC FINANCIAL GROUP as its master brands, and by adding the letters RBC to its LION & GLOBE DESIGN trademark.
Complainant has registered or applied for more than one hundred fifty trademarks composed of “RBC” in Canada and seventy four other countries and regions of the world.
Complainant’s trademarks composed of “RBC” have become well-known and associated with Complainant, as a result of extensive use in Canada and abroad.
The disputed domain name <rbcbank.com> is confusingly similar to Complainant’s trademark RBC and the trademarks RBC and ROYAL BANK as used in combination on Complainant’s Website.
The insertion of the word “bank” after “RBC” is not in itself sufficient to distinguish Respondent’s domain name and eliminate any likelihood of confusion.
The word “bank” is a generic term that describes the activities of Complainant.
Complainant cites Bank of America v. Vox Consult, NAF Case No. FA102492 (<bankofamericaresort.com), TD Banknorth, Inc. et al. v. Ace Ticket, WIPO Case No. D2005-0276 (<banknorthgarden.com>), The Bank of Nova Soctia v. Whois Protection, WIPO Case No. D2007-0884 (<scotiacapitalcareers.com>), and Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642 (<rbconline.com>), arguing that the addition of a generic term to a trademark, within a domain name, does not render the disputed domain name distinguishable from said trademark.
C. Respondent’s Rights and Legitimate Interests
Complainant submits it never authorized Respondent to register and use the disputed domain name.
Respondent has no trademark rights in the name “rbc” or “rbc bank”. Complainant’s trademark registrations predate Respondent’s registration of the disputed domain name. There has never been any connection between Complainant and Respondent. Respondent is not, and never has been, a representative or licensor of Complainant.
Respondent has never been commonly known by the disputed domain name.
Complainant further contends that based on Respondent’s Website, it is reasonable to infer that Respondent had actual knowledge of Complainant’s activities and rights in the marks RBC and ROYAL BANK. Respondent’s website to which the disputed domain name <rbcbank.com> resolves, includes a hyperlink to Complainant’s website.
Respondent’s website includes Popular Links to “Online Banking”, “Internet Banking”, “Money Market Account” and the like, some of which direct Internet users to websites of competitors of the Complainant, such as Icici Bank Canada, HSBC, or the Bank of Scotland.
The use of the disputed domain name was made to intentionally attract Internet users for commercial gain to Respondent’s Website by creating confusion as to the source of the products and services.
Complainant finally argues that there is no apparent legitimate justification for Respondent’s registration and use of the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services nor has it made any legitimate non-commercial or fair use of the said domain name (and cites Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044 to argue that the use of a domain name merely to redirect visitors to commercial third party Websites does not constitute a legitimate, non-commercial use. Complainant also cites Robert Bosch GmbH v. Asia Ventures Inc., WIPO Case No. D2005-0946 also to support Complainant’s diversion argument).
D. Bad Faith Registration and Use
Complainant contends that Respondent’s Website to which the disputed domain name resolves, is merely a portal to other Websites and is not used to promote the goods and services of Respondent or for any other legitimate purpose.
Respondent has registered over two hundred domain names, several of which are based on the trade names or trademarks of legitimate owners (and cites BSA v. Paul Tweed, WIPO Case No. D2000-1401, and Golay Buchel Cie SA v. MegaWeb.com Inc. WIPO Case No. D2001-0829).
Complainant submits that by virtue of Respondent’s unauthorized diversion of Internet traffic, the valuable goodwill subsisting in Complainant’s marks is harmed (and cites Lee Valley Tools Limited, v. Pitfold Ventures Inc., CIRA Case dated September 2, 2005).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:
“(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.”
In the administrative proceeding, the Complainant must prove that each three of these elements are present.
As Respondent has failed to submit a Response to the Complaint, the Panel may choose to accept as true all of the reasonable and supported allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Complainant has proved to be the holder of registrations for the trademark RBC. One such registration was filed in 1989. The disputed domain name was registered on August 8, 2007.
Complainant’s assertions as to the extensive use of the trademark RBC have not been contested. Complainant has submitted evidence showing registration of said trademark in a considerable number of jurisdictions.
The domain name <rbcbank.com> is confusingly similar to the trademark RBC. It fully incorporates said trademark (see Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512). This Panel follows the decisions of previous Panels who have ruled that “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered trademark” (see TD Banknorth, Inc. et al. v. Ace Ticket, supra).
The addition of generic terms like “bank” to a trademark, within a domain name, does not add distinctiveness to said name, and does not alter the fact that such domain name is confusingly similar to the trademark (see id. See also Bank of America v. Vox Consult, NAF Case No. FA102492, The Bank of Nova Soctia v. Whois Protection, supra, Royal Bank of Canada v. Namegiant.com, supra, and Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888).
To carry into effect the similarity analysis, a Panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409).
The first requirement of the Policy has been met.
B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
Respondent has not submitted evidence showing its preparations to use the disputed domain name with a bona fide offering of goods or services, nor has Respondent proven that it has been commonly known as “rbcbank.com”, or that it is making a legitimate, noncommercial or fair use of the disputed name.
On the contrary, the arguments and evidence submitted by Complainant, which have not been rebutted by Respondent, show that the latter did have an intent to misleadingly divert consumers. Respondent’s site, according to Complainant’s arguments and evidence, contains numerous links that are related to the banking business; some of said links seem to lead the user to some of Complainant’s competitors. This cannot be bonafide offering of goods and services, and certainly constitutes a misleading diversion (see Manheim Auctions Inc. v. Whois ID Theft Protection, and Robert Bosch GmbH v. Asia Ventures Inc., supra).
Respondent has no rights or legitimate interests. The second requirement of the Policy has been met.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
According to the evidence filed by Complainant, which has not been contested by Respondent, the latter has engaged in a conduct of registering domain names that totally encompass, or are confusingly similar to registered trademarks, or that constitute typosquatting (e.g. Exhibit 18 of the Complaint comprises, inter alia, the following: <2nokia.com>, <abercrombieshop.com>, <chasehomemorgage.com>, <fordcreditindia.com>, <martinhubbel.com>, <motosuzuki.com>, <playstation3free.com>, <rolls-roycecar.com>, and <toyotapeople.com>). This conduct falls within the scope of paragraph 4(b)(ii) of the Policy.
Complainant’s uncontested evidence also shows that Respondent has intentionally attempted to attract, for commercial gain, users to on-line locations of third parties and even competitors, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of said Websites or locations or of services on said sites or locations (e.g., links directing users to “Online Banking”, “Internet Banking”, “Money Market Account”, as well as Icici Bank Canada, HSBC, or the Bank of Scotland). This conduct falls within paragraph 4(b)(iv) of the Policy.
Therefore, Complainant has fulfilled the third requirement of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <rbcbank.com> be transferred to the Complainant.
Kiyoshi I. Tsuru
Dated: January 19, 2008