WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Bank of Canada - Banque Royale du Canada v. Domain Admin, Netlas
Case No. D2020-2712
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 Domain Admin, Netlas, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <royalbankofcanada.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed 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 21, 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 on October 26, 2020.
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 of the Complaint, and the proceedings commenced on October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2020.
The Center appointed Nicholas Smith as the sole panelist in this matter on November 23, 2020. 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 a Canadian bank that operates in over 36 countries worldwide. Incorporated in 1869, the Complainant has over 86,000 employees and serves 17 million clients. The Complainant is the owner of trade mark registrations in Canada, the United Kingdom, Australia and the United States for the words “Royal Bank of Canada” (“RBC Mark”) including Canadian registration No. TMA 440447, registered on March 17, 1995.
The Domain Name was registered on June 4, 2003. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”) that offers sponsored listings (often referred to as pay-per-click advertisements) that include direct references to the Complainant and its services such as “Royal Bank of Canada” and “Online Bank”. The Domain Name is also listed as being available for sale on the website Afternic.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s RBC Mark;
(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the RBC Mark (and similar marks), being the owner of trade marks registered in various jurisdictions for the RBC Mark (and similar marks). The Domain Name wholly incorporates the RBC Mark and, discounting the “.com” generic top-level domain (“gTLD”), is identical to the RBC Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the RBC Mark and the Respondent is not commonly known by the Domain Name . The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name resolves to a page with links to advertisements for third party services which does not provide the Respondent with rights or legitimate interests.
The Respondent has registered and uses the Domain Name in bad faith. Given the reputation of the RBC Mark, the registration of the Domain Name can only be taken as an attempt by the Respondent to gain an unfair benefit from the Complainant’s reputation. The Respondent is using the Domain Name for a pay-per-click site which amounts to bad faith use. The Respondent is also seeking to sell the Domain Name for profit.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the RBC Mark, having registrations for the RBC Mark as a trade mark in Canada, the United States and other jurisdictions.
Disregarding the “.com” gTLD as a necessary technical requirement of the Domain Name (and the absence of spaces between the words, which cannot be reproduced in a domain name), the Domain Name is identical to the RBC Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the RBC Mark or a mark similar to the RBC Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather the use of the Domain Name for what appears to be a parking page with pay-per-click links including links referring to the Complainant and the services it offers (“Online Banking”) does not amount to use for a bona fide offering of goods and services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that the Respondent was aware of the Complainant and its reputation in the RBC Mark at the time the Respondent registered the Domain Name. The Complainant has used the RBC Mark for over 100 years and the Respondent’s Website makes direct reference to the Complainant and its services. In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent’s Website offers what appear to be pay-per-click links including links referring to banking services, which are services offered by the Complainant and links referring to the Complainant itself. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the RBC Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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, <royalbankofcanada.com> be transferred to the Complainant.
Date: November 25, 2020