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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Bank of Canada v. RBC Bank
Case No: D2002-0672
1. The Parties
The Complainant is Royal Bank of Canada, a bank constituted under the laws of Canada having its principal place of business in Montreal. The Complainant is represented in this proceeding by Ms Daniele Boutet, of Ogilvie Renault, Montreal, Canada.
The Respondent is RBC Bank. The address for the Respondent provided in the WHOIS database search provided by the Complainant, was an address in Astoria, New York, United States of America. However, the Respondent has been represented in this proceeding by its President, Mr. Omar Carsou, who has filed a Response in which it is said that the correct name of the Respondent organization is "RBC Alliance Bank".
2. The Domain Name and Registrar
The domain name at issue is <rbcalliancebank.com> ("the domain name"). The domain name is registered with Melbourne IT Limited("the Registrar").
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999 ("the Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center on July 18, 2002, (email) and July 22, 2002, (hard copy).
Following receipt of an email inquiry from the Center, the Registrar confirmed on July 26, 2002, that it had received a copy of the Complainant’s complaint, and that the domain name is registered with the Registrar. The Registrar also confirmed that the Respondent "RBC Bank" is the current registrant, and that the current status of the domain name is "active". The Registrar confirmed that the Policy applies in respect of the domain name, and that the language of the registration agreement is English.
Having satisfied itself that the Complaint met the formal requirements of the Rules and the Supplemental Rules, on July 26, 2002, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding. This document advised that the formal date of the commencement of the Administrative Proceeding was July 26, 2002, and that the last day for the Respondent to submit a Response was August 15, 2002.
The Notification of Complaint and Commencement of Administrative Proceeding clearly came to the attention of the person shown in the WHOIS database as the administrative contact for the domain name, namely Mr. Rousian Tambiev, but Mr. Tambiev notified the Center that he is not the owner of the domain name. He said that he did not believe that he had any legal authority over the domain name, and that the true owner was "RBC Alliance Bank". He said that his name had been placed in the WHOIS database "by mistake". Mr. Tambiev advised the Center that it should contact RBC Alliance Bank about the matter, or contact Mr. Omar Carsou at an email address provided by Mr. Tambiev.
No Response was submitted by August 15, 2002, and on August 16, 2002, the Center advised the parties, and Mr. Carsou, of the Respondent’s default and the Center’s intention to proceed with the appointment of an Administrative Panel.
On August 20, 2002, the Center invited Warwick Alexander Smith of Auckland, New Zealand, to serve as sole Panelist in the Administrative Proceeding. Warwick Alexander Smith having duly completed a form of acceptance and a Declaration of Impartiality and Independence, the Center on August 21, 2002, appointed him as the Administrative Panel in the proceeding.
On August 22, 2002, Mr. Carsou emailed the Center expressing concern over what Mr. Carsou described as a misunderstanding. Mr. Carsou advised that "[Mr. Tambiev was] simply a person who found that that particular domain name is available and purchased it on behalf of RBC Alliance Bank. As to a WHOIS information, he stated that his personal info was placed there by mistake, and he wasn’t able to change it to RBC Alliance Bank’s simply because Registrant refuses to do so as long as this case is pending". Mr. Carsou asked the Center to suspend the case so that the WHOIS database information could be changed to show RBC Alliance Bank as the owner of the domain name.
The Center responded to Mr. Carsou on August 22, advising that it had no power to suspend the proceeding once the Panel has been appointed and that that (or any other appropriate procedural order) would be a matter for the Panel in the proceeding.
On receiving the hard copies of the record in the proceeding, the Panel came to the view that an email address appearing in a website (referred to in the Complaint) to which the domain name resolves, had been overlooked by the Center and therefore requested the complaint to be also sent to that e-mail address.
The Center then issued a formal Re-Notification of Complaint and Commencement of Administrative Proceeding, naming August 28, 2002, as the amended date of the commencement of the Administrative Proceeding and September 17, 2002, as the (amended) last day for the Respondent to submit a Response to the re-notified Complaint.
The Center attempted unsuccessfully to fax the amended Notification of Complaint and Commencement of Administrative Proceeding to the Respondent at the fax number provided on the website to which the domain name resolves ("the Respondent’s website"). The Center also attempted to deliver copies of the amended Notification of Complaint and Commencement of Administrative Proceeding (with hard copies of the Complaint) to the address in Zug, Switzerland, referred to at the Respondent’s website. The package was returned to the Center as undeliverable. However, an emailed copy of the amended Notification and Complaint was received by Mr. Carsou. On September 17, 2002, he emailed to the Center a Response to the Complaint.
The Respondent did not require a three-member Panel, and on September 26, 2002, the Center confirmed the appointment of Warwick Alexander Smith as sole Panelist in the case. The Panel considers that he has been properly appointed under the Rules and the Supplemental Rules.
The Complainant sought leave to file submissions in response to certain allegations made in the Response, and to further allege other material facts "in relation to the Respondent, its officers, directors, and/or agents and/or the activities of RBC Alliance Bank."
On September 27, 2002, the Panel issued a Procedural Order, permitting the Complainant to file a Rebuttal document limited strictly to answering allegations in the Response that certain evidence produced by the Complainant in its Complaint was "based on false and fabricated information". The Respondent was given leave to file a reply to the Complainant’s Rebuttal document, by October 11, 2002. The time for the Panel to give a decision in the proceeding, was extended to October 18, 2002.
The Complainant filed its Rebuttal document, and the Panel has had due regard to it.
The Respondent did not file any Reply to the Complainant’s Rebuttal document.
By further procedural order made on October 30, 2002, the Panel requested certain further information from the Respondent (relating generally to its status as a registered corporation and its trading or other activities carried out under the name "RBC Alliance Bank"). The Complainant was afforded a further right of reply, and the Panel has received and considered further statements from both parties. The time for the Panel to give its decision was further extended to November 20, 2002.
The Panel agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
No other proceedings relating to the domain name have been notified to the Panel.
The language of the Administrative Proceeding is English.
In terms of paragraph 15(b) of the Rules, and the extension of time referred to above, the Panel is to give its decision by October 18, 2002.
4. Factual Background
The Complainant is a long-established banking and financial institution, which conducts business in numerous countries around the world. It was founded in 1869. It has numerous subsidiary corporations, many of which trade under names incorporating the letters "RBC". By way of example only, RBC Capital Services Inc. and RBC Trade Finance (USA) Inc. trade in the United States, and RBC Dominion Securities Finance SA trades in Switzerland.
The Complainant’s Trademarks
During the (northern) summer of 2001, the Complainant introduced a new branding strategy, which focused on the development and expansion of a family of trademarks and corporate names centered on the letters "RBC". It adopted RBC and RBC FINANCIAL GROUP as its master brands, and added the letters RBC to its long established Lion and Globe logo Trademark.
The Complainant also regrouped similar services offered within the group of companies headed by the Complainant, under various "platform" brands. The "platform brand" for personal and commercial banking was RBC ROYAL BANK. For corporate and investment banking, including foreign trade exchange, it was RBC CAPITAL MARKETS.
The Complainant has hundreds of trademark applications pending or registered in numerous countries around the world, consisting of or containing the letters "RBC". It is not necessary to refer to them all. In Canada, the Complainant registered the wordmark RBC in June 1990, in international Classes 35, 36, and 42. The specification included "(1) services of underwriter, investment dealer, investment adviser, investment manager, including the buying, selling and holding of securities of any nature whatsoever for its own account or the account of others and related money market transactions …".
On February 20, 2001, the Complainant applied to register the wordmark RBC in the United States. The specification in that application includes "online business center services". It also appears from a German language document produced by the Complainant, that on June 22, 2002, it applied to register the wordmark RBC in Switzerland.
The Complainant also appears to have registered in Switzerland its mark consisting of the letters RBC with the Lion and Globe logo: a German language extract from the records of the Swiss Federal Institute of Intellectual Property appears to show that that mark was registered on April 18, 2002. Applications for the RBC Lion and Globe logo mark are also pending in numerous other countries, including the United States and the European Union. The United States application for that mark was filed on August 10, 2001, and the European Union application was filed on August 17, 2001.
The Complainant applied to register the wordmark RBC FINANCIAL GROUP in the European Community, on May 15, 2001. It included in the specification of services, "foreign exchange, lending and currency management services …". The same words were included in the specification for that wordmark which was contained in the application filed with the United States Patents and Trademarks Office in February 2001.
Other marks which the Complainant has applied to register in numerous countries, including Switzerland, the European Community, and the United States of America, include RBC GLOBAL SERVICES, and RBC CAPITAL MARKETS.
The Complainant’s Websites
The Complainant operates a website at "www.rbc.com", and information concerning the on-line foreign exchange service provided by one of its subsidiaries under the trademark FXDIRECT can be found through that website. (On the "www.rbc.com" website, there is a direct "quick link" to the FXDirect website. The latter website is prominently marked with the "RBC Capital Markets" header, and the RBC Lion and Globe logo mark.)
In response to the Panel’s request for further information made on October 30, 2002, the Respondent advised in a statement dated November 7, 2002, that it is a corporation registered on June 1, 2000, in the Republic of Montenegro. According to this statement, it started trading under that name on June 27, 2002. It says that, so far, all of its trading activities have been conducted online only, so there are no invoices, business plans etc which would evidence how and for how long the Respondent has been using the name "RBC Alliance Bank".
In a rebuttal statement, the Complainant has produced evidence (in the form of an extract from a website) showing recent changes apparently made to the law on Banks in the Republic of Montenegro. These changes appear to show that companies which had been registered in the Republic under certain special conditions, and which had the word "bank" in their names, were obliged to delete the word "bank" from their names by July 31, 2002. The Complainant produced a copy of a decision issued by the Minister of Finance of Montenegro on July 8, 2002, which indicated that companies which did not comply with this directive "shall cease to exist".
The Domain Name and the Respondent’s Website
The domain name was registered on May 14, 2002.
The Complainant has produced a copy of the Respondent’s website downloaded on July 17, 2002. The Respondent’s website then featured a copy of a globe (showing North America and part of the top of South America), superimposed over two standing figures appearing to be dressed in business suits. Across the foot of the globe were the words "RBC ALLIANCE BANK".
Generally, the Respondent’s website then offered an on-line foreign exchange trading service. The language used was English, and the service was quite clearly aimed at English-speaking currency traders throughout the world. In a number of places on the website, the Respondent was referred to as "RBC AB".
The Complainant also produced earlier copies of the Respondent’s website, downloaded on June 27, 2002, and July 4, 2002, respectively. The copy downloaded on July 4, 2002, contained in small print beneath the heading "Message" the words: "RBC Alliance Bank has no affiliation with Royal Bank of Canada". The same page downloaded from the Respondent’s website on June 27, 2002, contained no such disclaimer.
With its last rebuttal statement, the Complainant produced another page from the Respondent’s website, this time downloaded on November 13, 2002. On this occasion, the only text shown consisted of the words "FOR SALE", printed twice in large letters in the middle of the page.
Email from Mr. Ron Hyatt
The Complainant says that on June 24, 2002, it received an email from a Mr. Hyatt, inquiring as to whether the Complainant was in any way affiliated with RBC Alliance Bank. A copy of this email was annexed to the Complaint. The email said that, while the operators of the [Respondent’s] website claimed to be a foreign exchange brokerage based in Switzerland, an Internet check done by Mr. Hyatt showed the website as listed to an individual in New York. The email stated that Mr. Hyatt had sent them over $20,000 to trade foreign exchange, but that "now no-one answers the phone and I do not get a reply to my emails". The email went on to express Mr. Hyatt’s view that, if the operators of the [Respondent’s] website were not associated with the Complainant, they were defrauding the public with the Complainant’s name. As the email put it: "making it seem like they are in an ‘alliance’ with RBC".
In its statement in rebuttal, the Complainant stated that, when it was first contacted by Mr. Hyatt, it required further information from him regarding his investment with RBC Alliance Bank. The Complainant attached a copy of an email sent to Mr. Hyatt on July 4, 2002, asking Mr. Hyatt for information as to where and how he remitted funds to RBC Alliance Bank.
The Complainant also produced a copy of a reply email from Mr. Hyatt, advising that he had contacted an attorney about the matter and would have to clear it with the attorney before sending out any documentation. It appears that the Complainant did not hear any further from Mr. Hyatt before it filed the Complaint on July 18, 2002. The Complainant says that it never solicited information from Mr. Hyatt, and that it never had any reason to question the evidence submitted by him.
The Complainant’s Cease and Desist Letter
The Complainant’s representative wrote to the administrative contact for the domain name, on July 2, 2002. The letter was dispatched by email to Mr. Tambiev’s email address, and it referred to the Complainant’s ownership of many trademarks composed of the letters "RBC". The letter also referred to the Complainant’s website at "www.rbc.com".
The letter went on to allege breach of the Policy, specifically by intentionally attempting to attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the Respondent’s services. The letter also referred to the fact that one of the Complainant’s customers or potential customers had been attracted to the website on the false assumption that it was associated with the Complainant. The letter referred to the recent deposit of over $20,000 for foreign trading exchange, and the failure of the website operators to respond to the customer’s subsequent emails. The letter sought the cessation of all use of the domain name, the names RBC Bank, RBC Alliance Bank, and any other name, domain name or trademark composed of the letters RBC. It also sought the immediate transfer of the domain name to the Complainant. The letter advised that if no satisfactory response was received by July 4, 2002, the Complainant would take whatever legal measures might be necessary to protect its rights.
The Respondent made no reply to the "cease and desist letter". However it seems likely that the letter prompted the Respondent to add the "disclaimer" which was added to the Respondent’s website at some time between June 27 and July 4, 2002.
5. The Parties’ Contentions
1. As a result of its extensive use of its "RBC" marks in Canada and abroad, those marks have become very well known and have become associated with the Complainant.
2. The domain name is confusingly similar to the Complainant’s trademarks containing or comprised of the letters "RBC", and in particular the trademarks RBC and RBC ROYAL BANK.
3. The insertion of the word "alliance" between the letters "rbc" and the word "bank" is not in itself sufficient to distinguish the domain name and eliminate any likelihood of confusion. The word "alliance", both in English and in French, means a bond, a connection, an association, a union, a relationship between parties. Accordingly, the domain name suggests that some affiliation exists between the Complainant and the Respondent.
4. The visual effects on the Respondent’s website, including the use of a stylized globe, creates confusion with the Complainant’s RBC Lion and Globe logo mark.
5. The likelihood of confusion increases given that both Complainant and Respondent are offering on-line foreign exchange trading services.
6. The email from Mr. Hyatt demonstrates that the use of the domain name has already caused confusion.
7. The Complainant refers to a National Arbitration Forum decision under the Policy, namely Bank of America Corporation v Vox Consult (Claim No FA0111000102492). The domain name at issue in that case was <bankofamericaresort.com>. The Panel held that, for the purposes of determining the issue of "confusing similarity" under the Policy, the addition of a generic term like "resort" was not sufficient to distinguish the domain name in issue from the Complainant’s well known BANK OF AMERICA trademark.
8. The Respondent has no legitimate right or interest in the domain name. It is not possible to conceive any plausible use of the domain name by the Respondent that would not be illegitimate. The Respondent has been attempting to trade on the Complainant’s goodwill.
9. The use of the domain name in association with an on-line foreign exchange trading service cannot constitute a bona fide offering of services (citing the Bank of America decision).
10. It can be presumed that the Respondent has never been commonly known by the domain name, as the domain name is confusingly similar to a famous mark of another.
11. The Respondent has registered and used the domain name in bad faith. In particular, the Respondent has intentionally selected the domain name having in mind the Complainant, and the Complainant’s family of trademarks composed of "RBC", and knowing that deception and confusion would inevitably follow.
12. The Respondent’s bad faith is further demonstrated by the fact that it chose to register the domain name under the organization name "RBC Bank", which name infringes on the Complainant’s trademark rights. To the best of the Complainant’s knowledge, the Respondent RBC Bank has no legal existence. The choice of that organization name is part of the Respondent’s scheme to create confusion as to the source of the services allegedly provided by the Respondent.
13. The Respondent passes off its services as and for those of the Complainant, in order to conduct fraudulent activities. The domain name deceitfully suggests that the Respondent is associated with the Complainant (citing the evidence of the email from Mr. Hyatt).
14. The Complainant has never authorized the Respondent to register the domain name, nor is the Complainant affiliated or otherwise associated with the Respondent.
15. The Respondent has registered the domain name primarily for the purpose of disrupting the Complainant’s business (and has succeeded in so doing to the extent demonstrated by the emails received from Mr. Hyatt). The Respondent has appropriated Mr. Hyatt’s funds without providing any services, encroaching on the Complainant’s excellent reputation and consequently disrupting its business.
16. The Respondent failed to respond satisfactorily to the Complainant’s cease and desist letter. All it did was add, in a small font at the bottom left of the home page on the Respondent’s website, a disclaimer of any affiliation between the Respondent and the Complainant. Once Internet users are diverted or attracted to the Respondent’s website, the presence of such a disclaimer does not cure the initial and illegitimate diversion (see WIPO Decision D2000-0869 – EstJ e Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna)
17. It is appropriate for the Panel to draw an adverse inference from the Respondent’s failure to provide any concrete evidence of a legitimate interest in the domain name. The Respondent has not explained why its activities did not commence until 2 years after it was registered, and any "legitimate" bank would have business documents evidencing the use of its name, even if its activities were all conducted online.
18. The Respondent’s failure to disclose that the Respondent’s website is now for sale is a clear manifestation of the Respondent’s bad faith, and is further evidence that the Respondent never had any legitimate interest in the domain name.
1. The correct name of the Respondent is RBC Alliance Bank, not RBC Bank.
2. The Respondent has no business in the United States at all.
3. "RBC" as used in the name RBC Alliance Bank stands for the names of owners of the Bank. The word "alliance" symbolizes alliances between those persons/entities, and has nothing to do with the Complainant. Nor is it an imitation or claim to the Complainant’s name.
4. The Respondent’s website contains the clearly visible disclaimer referred to above.
5. The Respondent denies the allegations relating to the alleged deposit of $20,000 from Mr. Hyatt. It claims that it does not have any Mr. Ron Hyatt as a client on its books, and never has had any such name in its database.
6. There are numerous "RBC"-named companies, many of which are financial but not affiliated with the Complainant.
6. Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] 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 trademark 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 [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [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 trademark or service mark at issue.
Paragraph 15(a) of the Rules requires the Panel to:
"… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable".
Paragraph 4(a)(i) of the Policy – domain name identical or confusingly similar to trademark or service mark in which Complainant has rights
The Panel has little difficulty in finding this part of the Complaint proved. The Complainant is the registered proprietor of the service mark RBC in Canada and elsewhere, and the Panel is satisfied that it has also built up a substantial worldwide reputation under a number of marks consisting of or containing the letters "RBC". The Respondent does not contend otherwise.
The Complainant has not produced any evidence of registration of the mark RBC ROYAL BANK, but it does claim rights in that mark and the Respondent has not challenged that claim. From its description of its "platform brands", it seems probable that the Complainant has made enough use of the service mark RBC ROYAL BANK for that mark to have become distinctive of the Complainant and its services, and for the Complainant to have acquired common law rights in the mark. However even if that were not so the Panel accepts the Complainant’s submission that the addition of generic words such as "alliance" and "bank" are insufficient to distinguish the domain name from the Complainant’s RBC mark for the purpose of the confusing similarity test. In this case, both Complainant and Respondent operate in the field of on-line foreign exchange trading, and the Panel has little doubt that numerous Internet browsers would immediately associate the domain name with the Complainant and its long-standing banking and other operations. The Panel finds that the domain name is confusingly similar to the Complainant’s RBC, and RBC ROYAL BANK service marks.
Paragraph 4(a)(ii) of the Policy – Respondent has no rights or legitimate interests in respect of the domain name
The Complainant has not licensed the Respondent to use the domain name, nor conferred any other relevant rights on it.
Under paragraph 4(c)(ii) of the Policy, it is sufficient for the Respondent to demonstrate that it has a legitimate interest in the domain name if it can show that it has been "commonly known by the domain name". In this case, the Respondent does appear to be a registered corporation having the same name as the domain name. The evidence shows that the corporation has used its name from some time in June of 2002 when it commenced trading through the Respondent’s website.
However I agree with the Panelist in WIPO case D2001–1112 (January 15, 2002) (relating to the domain rothchild.com and other "rothchild" domain names) that, for paragraph 4(c)(ii) of the Policy to apply, the respondent must have been "commonly known by the domain name" as at the date of registration of the domain name.
The difficulty for the Respondent in this case is that it does not appear to have traded or carried on any other activities at all before the domain name was registered on May 14, 2002. It claims in its response to the Panel’s request for further information that it only commenced trading on June 27, 2002, and that as its activities have all been conducted online, it has no invoices, business plans, or other business documents. All that has been proved in respect of the period prior to the date of registration of the domain name, is that a company called RBC Alliance Bank was registered in the Republic of Montenegro in June of 2000.
In the Panel’s view, proof of mere registration of the company, without more, is not enough to demonstrate that the Respondent was commonly known by the domain name.
If the intention of the Policy were otherwise, every cybersquatter would be able to avoid the operation of the Policy by the simple expedient of: (i) quietly registering someone else’s trademark as a corporation name (possibly in some jurisdiction having no connection with either the trademark owner or the cybersquatter); (ii) waiting some decent interval of time before registering the corporation name as a domain name; and (iii) resisting the trademark owner’s challenge under the Policy by claiming that the fact of the registration of the corporation proves that the corporation has been "commonly known by" the corporation name/trademark/domain name, and therefore has a legitimate interest in the domain name.
Any construction of the Policy which could open the door to a result like that cannot be right, and it seems to the Panel that the words "commonly known by" in paragraph 4(c)(ii) of the Policy call for at least some use of the name by the corporation prior to the registration of the corporation name as a domain name. In other words "commonly known by" must mean commonly known by at least some other people (ie other than those responsible for the registration of the corporation).
The WIPO case IKB Deutche Industriebank AG v Bob Larkin (Case No. D2002-0420) (July 23, 2002) is a case where a WIPO Panel placed some weight on the fact that the respondent had, some years prior to the commencement of the Administrative Proceeding, incorporated a company having substantially the same name as the domain which was in issue in the case. The respondent’s argument under paragraph 4(c)(ii) of the Policy was upheld, but there was evidence in the case that the respondent’s corporation had been carrying on at least some research and ‘preparatory’ business activity, including dealings with solicitors and with an investor. In this Panel’s view, the decision in that case is not inconsistent with an interpretation of Paragraph 4(c)(ii) of the Policy which would require some actual use of the name by a respondent who claims to be commonly known by a domain name, that use being something more than the mere registration of a corporation having the same name as the domain name. In this case there is no evidence of anything other than the June 2000 registration of the Montenegro "bank" – that registered name was not even used when application was made in May 2002 to register the domain name (the application to register the domain name was made by "RBC Bank").
For the foregoing reasons the Panel finds that there is no evidence that the Respondent was "commonly known by the domain name", at the time it registered the domain name on May 14, 2002.
The other issues under section 4(a)(ii) of the Policy, are whether the Respondent’s use of the domain name (or a name corresponding to the domain name) has been use in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), and whether the Respondent has been making a 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 (paragraph 4(c)(iii) of the Policy).
The onus of proof under section 4(a)(ii) of the Policy remains on the Complainant. However, in this case, the Panel finds that the Complainant has produced sufficient evidence suggesting an absence of bona fides on the part of the Respondent, to call for substantial answers from the Respondent. In the Panel’s view the Respondent has failed or refused to provide adequate answers on these points. In those circumstances, the Panel accepts the Complainant’s submission that the Panel should draw an adverse inference from the failure of the Respondent to provide those answers. The Panel finds this part of the Complaint proved and holds that the Respondent has no right or legitimate interest in respect of the domain name.
The particular matters which have led the Panel to that conclusion are the following:
1. The evidence shows that the domain name was only registered on May 14, 2002, and the Respondent has not produced any evidence to show that it has been operating its on-line foreign exchange trading business from any other website. In fact it says that it only commenced online trading on June 27 2002.
2. By May 2002, the Complainant had been the registered proprietor of the mark RBC in Canada for approximately 12 years, and had established a reputation under the mark RBC ROYAL BANK.
3. The Complainant and the Respondent have both been operating on-line foreign exchange trading services, directed in the English language to a worldwide Internet market.
4. The Complainant is the owner of the website at "www.rbc.com". It must be highly improbable that the Respondent would have registered the domain name without first ascertaining who owned the <rbc.com> domain name ("rbc" being the only non-generic part of the domain name). In those circumstances the Panel is prepared to infer that the Respondent was aware of the Complainant and its activities when the Respondent registered the domain name. The Respondent does not suggest otherwise.
5. The Respondent must have known that the use of the letters "RBC" in the field of on-line foreign exchange trading, would carry with it the likelihood that some Internet users would be confused into thinking that there was some association between the Respondent’s business and the business operated by the Complainant. The Respondent appears to have acknowledged as much when it added, in small font, the disclaimer which was placed on the Respondent’s website at some time between June 27 and July 4, 2002.
6. When the domain name was registered in May 2002, the owner/registrant was described as "RBC Bank". The Respondent now says that that was a mistake, but it has made no serious attempt to explain how the alleged "mistake" came about. Of course the result of the "mistake" was that any Internet browser who consulted the relevant WHOIS database to ascertain who owned the domain name, would have been led to believe that the owner was a North American organization called "RBC Bank". That name, in the Panel’s view, is confusingly similar to the Complainant’s name and its various RBC marks.
7. In its Response, the Respondent says that the letters "RBC" in the name "RBC Alliance Bank", stand for the names of the owners of the Respondent organization. However, the Respondent has either refused or neglected to state what those names are, and apart from speculation that the letter "C" might stand for "Carsou", there is no evidence to support that contention. The Respondent also says in its Response that the word "alliance" symbolizes alliances between the persons or entities who own the Respondent organization. However, the Respondent has not troubled to explain the nature of the alleged "alliances". Similarly, the allegation in the Response that there are numerous "RBC" – named companies (including some in the financial field) which are not affiliated with the Complainant, was not supported by any evidence. The Panel is not prepared to give those claims any weight in the absence of supporting evidence.
8. The difficulties experienced by the Complainant and the Center in ascertaining the Respondent’s correct address and contact details, and the Respondent’s statement that it has no documents which would evidence how it has been using the RBC Alliance Bank name and for how long, lend further weight to the impression that the Respondent’s business activities conducted through the domain name, have been neither fair nor bona fide. The address provided for the owner of the domain name in the relevant WHOIS database, has proved to be the address of an administrative contact who says he has no responsibility for the domain name. Attempts to serve the re-notified complaint at the Zug, Switzerland address provided at the Respondent’s website, have failed: the package was returned undelivered. An attempt to fax the re-notified Complaint to a fax number provided on the Respondent’s website was also unsuccessful. The absence of documentation and the contact difficulties just described are not sufficient to establish an absence of bona fides on their own, but put together with the various other factors mentioned in this list, they add to the overall impression that the Respondent has deliberately sought to trade off the name and reputation of the Complainant, and to avoid service of this administrative proceeding.
9. When the Complainant’s representative wrote to the Respondent on July 2, 2002, the Respondent made no response. If it were operating a bona fide business under the name RBC Alliance Bank, that would have been the obvious time to advise the Complainant’s representative of the bona fide nature of the business, including any valid reason for selecting the initials "RBC". Instead, all the Respondent did was place a small print disclaimer on the Respondent’s website, to the effect that the Respondent had no affiliation with the Complainant. The Panel accepts the Complainant’s submission that that was "too little too late". The use of a domain name which was confusingly similar to the Complainant’s service marks had already by then served its purpose of misleadingly diverting to the Respondent’s website consumers who were expecting to find a website associated with the Complainant.
9. While it is of lesser moment, the Respondent’s use of a globe device on the Respondent’s website again savours of an attempt to create an impression of linkage with the Complainant, whose well-known logo service mark includes a globe as part of the logo.
10. The Respondent has failed to explain why, having incorporated RBC Alliance Bank in June of 2000, the company did not trade or apparently undertake any other activity until June 2002.
For all of the reasons listed above, the Panel concludes that the Respondent’s use of the domain name (namely as a link to the Respondent’s website) is not a use of the domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, nor a fair use of the domain name, without intent for commercial gain to misleadingly divert consumers, within the meaning of paragraph 4(c)(iii) of the Policy. There is no other evidence which would suggest to the Panel that the Respondent might have a right or legitimate interest in the domain name.
Finally under this heading, the Panel has considered the evidence of the email from Mr. Hyatt. The Respondent challenged this evidence in its Response, in very aggressive terms. It suggested that the evidence had been fabricated, and challenged the Complainant to show a "thread" of evidence supporting the claims made by Mr. Hyatt. The Complainant was unable to do that in its statement in rebuttal, but it did produce emails showing that it had attempted to obtain more details from Mr. Hyatt. The Complainant says that it had no reason to doubt Mr. Hyatt’s claims. The Respondent was given an opportunity to reply to the Complainant’s statement in rebuttal, but it has not provided any further information, nor made any further submissions. In these circumstances, the evidence relating to Mr. Hyatt’s emails is left in a state which is less than ideal. However there is clearly no basis on which the Panel could find that it was fabricated, or that the Complainant has otherwise acted improperly with regard to it. Apart from making that observation, it is neither necessary nor appropriate for the Panel to make any findings on the dispute over the email from Mr. Hyatt.
Paragraph 4(a)(iii) of the Policy – domain name registered and being used in bad faith
The Panel also finds this part of the Complaint proved, for the same reasons as are listed above in support of the Panel’s finding that the Respondent has no right or legitimate interest in the domain name. The Respondent’s use of the domain name since registration has been neither bona fide nor fair, and in the Panel’s view the Respondent’s intention has been to misleadingly divert consumers to the Respondent’s website. It follows that the domain name has been registered and used by the Respondent in bad faith. Specifically, the Panel finds that the Respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s RBC and/or RBC ROYAL BANK marks, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (ie the kind of bad faith registration and use described in paragraph 4(b)(iv) of the Policy).
The Complainant having proved all three grounds required to be proved under paragraph 4(a) of the Policy, the domain name must be transferred to the Complainant.
For the foregoing reasons, the Panel decides that:
(a) The domain name is confusingly similar to the RBC and RBC ROYAL BANK service marks to which the Complainant has rights.
(b) The Respondent has no rights or legitimate interests in respect of the domain name.
(c) The domain name has been registered, and is being used, in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <rbcalliancebank.com> be transferred to the Complainant.
Warwick Alexander Smith
Dated: November 20, 2002