WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Bank of Canada - Banque Royale du Canada v. 李厚昌 (Lihouchang)
Case No. D2020-2710
1. The Parties
The Complainant is Royal Bank of Canada - Banque Royale du Canada, Canada, represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is 李厚昌 (Lihouchang), China.
2. The Domain Name and Registrar
The disputed domain name <rbcroyalban.com> (the “Domain Name”) is registered with DNSPod, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2020. On October 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on October 23, 2020.
On October 20, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 23, 2020, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on October 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2020.
The Center appointed Karen Fong as the sole panelist in this matter on January 4, 2021. 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
The Complainant is Canada’s biggest bank and one of the largest banks in the world based on market capitalization. It is a global financial institution operating in over 36 countries worldwide including China, with 86,000 full time employees and serves over 17 million clients.
The Complainant provides services under the trade marks ROYAL BANK, ROYAL BANK OF CANADA and RBC. In fact it has used the ROYAL BANK trade mark since 1901. The Complainant has submitted evidence of its extensive portfolio of trade marks. The earliest RBC trade mark registration submitted in evidence dates back to 1990 (Canadian Trademark Registration No. TMA369496, registered on June 15, 1990). The earliest ROYAL BANK trade mark registration submitted in evidence dates back to 1978 (Canadian Trademark Registration No. TMA228999, registered on July 14, 1978). The trade mark registrations for RBC and ROYAL BANK will individually and collectively be referred to as the “Trade Marks”.
The Complainant’s primary website is at <rbc.com>.
The Respondent who is based in China, registered the Domain Name on March 4, 2019. The Domain Name resolved to a third party website impersonating Amazon where users are invited to answer a series of questions in order to claim a free Samsung phone. After responding to the questions, the user is redirected to a website indicating that he/she has qualified to win a free Samsung Galaxy S20 phone which ultimately leads to a third party website which requires the user to enter its personal details and credit/debit card details in order to claim the prize for USD 1. The websites will individually and collectively be referred to as the “Website”.
Upon discovering the Domain Name and Website, the Complainant issued a cease and desist letter on August 3, 2020 to the Respondent through the Registrar. A chaser was sent on September 25, 2020. No response was received from the Respondent.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- the Domain Name is in English;
- the Website is entirely in English which suggests that the Respondent understands English and therefore would not be in any way prejudiced if the proceeding is conducted in English;
- the Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence which would cause undue delay.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Marks.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case, the Domain Name comprises a combination of both of the Complainant’s trade marks, RBC and ROYAL BANK without the letter “k” at the end of the word “bank”. It is well established that domain names which consist of a common, obvious, or intentional misspelling of a trade mark is considered to be confusingly similar to the relevant mark for the purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark (See section 1.9.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This is a typical typosquatting case as the Domain Name is clearly a misspelling of one of the Trade Marks, reproducing the RBC trade mark in its entirety.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) in this case, “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
None of the above apply in these circumstances. The Complainant has not authorised, licensed or permitted the Respondent to either register or use the Domain Name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the Domain Name.
Section 2.13 of WIPO Overview 3.0 makes it clear that the use of a domain name for illegal activity which includes any type of fraud can never confer rights or legitimate interests on a respondent. In this case, the evidence filed establishes that the Domain Name is being used by the Respondent in connection with a website which seeks to affiliate/impersonate the Complainant as well as Amazon which is being used as part of some form of phishing or other dishonest and fraudulent scheme to obtain personal and financial details from visitors to the Website to get a prize.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has failed to respond and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Marks when it registered the Domain Name given the Trade Marks were registered prior to registration of the Domain Name and that the Domain Name comprises a combination of two of the Complainant’s trade marks (one of them misspelled). It is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. As stated above, the Website is being used to perpetrate fraudulent activity. It is well established that a website which is associated with fraudulent activity provides compelling evidence of bad faith registration and use of the associated domain name – see for example Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031; Grupo Financiero Inbursa, S.A. de C.V v. inbuirsa, WIPO Case No. D2006-0614; Halifax Plc. v. Sontaja Sunducl, WIPO Case No. D2004-0237; CareerBuilder LLC v. Stephen Baker, WIPO Case No. D2005-0251; Finter Bank Zurich v. N/A, Charles Osabor, WIPO Case No. D2005-0871; and Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s websites are authorised or somehow connected to the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <rbcroyalban.com> be transferred to the Complainant.
Date: January 18, 2021