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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Bank of Canada v. Party Night Inc.
Case No. D2003-0280
1. The Parties
The Complainant is Royal Bank of Canada, of Canada, represented by Ogilvy Renault of Montreal, Quebec, Canada.
The Respondent is Peter Carrington d/b/a Party Night Inc., of the Netherlands.
2. The Domain Name and Registrar
The disputed domain name, <rbcentura.com>, is registered with Key-Systems GmbH d/b/a domaindiscount24.com.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2003. On April 11, 2003, the Center transmitted by e-mail to Key-Systems GmbH d/b/a domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On April 16, 2003, Key-Systems GmbH d/b/a domaindiscount24.com transmitted by e-mail 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 "Supplemental Rules").
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced April 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 7, 2003. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on May 15, 2003.
3.3 The Center appointed David W. Quinto as the Sole Panelist in this matter on May 22, 2003. 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
4.1 Complainant Royal Bank of Canada is a well known financial institution founded in 1869. Either directly, or through subsidiaries, it conducts business in various countries, including Canada and the United States. It uses the RBC word mark to denote its services. That mark is frequently used as part of its subsidiaries’ corporate names, as in "RBC World Bank," "RBC Mortgage," "RBC Builder Finance," and "RBC Centura Banks, Inc." Significantly, "RBC CENTURA" is used not only as a trade name to identify certain of Complainant’s subsidiaries, but as a service mark to identify those subsidiaries’ services. To that end, Complainant applied to register RBC CENTURA on the Principal Register of the United States Patent and Trademark Office on July 11, 2002, claiming a date of first use in interstate commerce of June 1, 2001. Additionally, Complainant received a notice of allowance of its intent-to-use application to register the RBC CENTURA mark in Canada sent November 29, 2002. Certain of Complainant’s subsidiaries offer various services through Complainant’s "rbccentura.com" website. The website recites that RBC CENTURA is used as a "brand name" to identify those services.
4.2 On November 16, 2002, Respondent registered the domain name <rbcentura.com>. As accurately reflected in the Complaint, the domain name resolves to the website "www.amateurvideos.nl/hanky-panky-party.html," from which users are "mouse trapped into a series of pornographic, mp3 and prescription drugs" websites. Further, Respondent has lost at least seven domain name disputes decided by the National Arbitration Forum, all involving domain names that appeared to be misspellings of well known marks.
5. Parties’ Contentions
Not surprisingly, Complainant contends that Respondent is a "typo-squatter" who has registered a confusingly similar variation of its RBC CENTURA mark, <rbcentura.com>, to attract Internet users who carelessly omit the second "c" from <rbccentura.com>. Complainant contends that it owns a protectable mark; Respondent’s domain name is confusingly similar to it; Respondent has no legitimate right or interest in the domain name at issue because Respondent’s use of domain name is unauthorized and Respondent has never been known by the domain name; and Respondent’s use of the domain name is in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
6.1 Although the requirement that a Complainant show that the Respondent’s domain name is identical or confusingly similar to a mark in which it has rights as expressed as a single element, it is really two. First, the Complainant must show that it has rights in the mark; second, the Complainant must show that the Respondent’s domain name is identical or confusingly similar to it.
6.2 The easiest way a Complainant may satisfy the first element, that it prove ownership of a trademark or service mark in which it has rights as required by Paragraph 4(a)(i) of the Policy, is to prove that its mark is registered. The notice of allowance by Canada of Complainant’s RBC CENTURA mark sent November 29, 2002, does not satisfy the registration requirement. Although registration of the mark has been allowed, the mark has not yet issued and apparently no use of the mark has been made in Canada. Accordingly, Complainant’s priority over later users or applicants is "merely incomplete and inchoate." 3 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 19.26 at 19-67 (2002).
6.3 Complainant provided evidence that on July 11, 2002, it applied to register the mark RBC CENTURA in United States. Logically, the mere fact that the Complainant has filed a trademark registration application should not confer standing on that Complainant in an action under the Policy. That a trademark registration application has been filed simply means that the applicant has used the mark in commerce. In general, common-law marks are not protectable in the United States unless they have acquired "secondary meaning." See 2 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition § 16:1, at 16-4 ("In the absence of customer recognition of the symbol, the ‘owner’ of the business has no goodwill, and thus there is nothing for the ‘trademark’. . . to symbolize or represent.") (2002). Thus, a Complainant’s standing to pursue a claim based on an as yet unregistered mark should turn on whether the mark has acquired secondary meaning rather than on whether it is the subject of a trademark registration application. Nevertheless, cases under the Policy too numerous to mention have accepted the proposition that a mark will be afforded protection under the Policy provided only that there has been some use of the mark in commerce. Here, that standard is met. Accordingly, Complainant has established that it has a common-law mark entitled to protection.
6.4 Panels have applied various tests to determine whether a domain name is "confusingly similar" to a mark. The trend, and the better view, is to apply the objective test announced in Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000). Numerous decisions have noted that "the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar" to a Complainant’s mark. See e.g., Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001). Here, the omission of one letter, particularly a letter that is repeated, is insignificant to avoid confusing similarity. See Playboy Enterprises International Inc. v. SAND WebNames-For Sale, WIPO Case No. D2001-0094 (April 3, 2001), ("This is a typical case of ‘typo-squatting’ where the infringing name is one letter less than or different from the Complainant’s mark. These attempts have been disapproved of by various WIPO Panelists."). Accordingly, Complainant has shown that Respondent’s domain name is confusingly similar to a mark in which it has rights.
B. Rights or Legitimate Interests
6.5 Paragraph 4(c) of the Policy provides that a Respondent may demonstrate rights or legitimate interests in a domain name in, without limitation, the following three ways. Firstly, a Respondent may prove that before notice of the dispute, it used or prepared to use the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Secondly, the Respondent may show that it has been known by the domain name, even if it has acquired no trademark rights in it. Thirdly, the Respondent may show that it is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.
6.6 Here, Respondent registered the domain name at issue after Complainant began using its mark in commerce. Because Respondent has defaulted, there is no evidence that Respondent commenced preparations to use its domain name before Complainant began using its mark. Respondent has also failed to adduce any evidence it has ever been known by the domain name and there is no evidence of that apparent at the website to which the domain name resolves. Finally, it is clearly not the case that Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the mark at issue because the domain name resolves to an "adult" website from which various products can be purchased. Accordingly, Complainant has met its burden to show that Respondent has no rights or legitimate interests in the domain name at issue.
C. Registered and Used in Bad Faith
6.7 Paragraph 4(b) of the Policy provides, in part, that bad faith may be found if a Respondent has used the domain name to attempt intentionally 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 a product or service on the Respondent’s website or location. Paragraph 4(b) also provides, in part, that bad faith may be found if the Respondent has registered the domain name primarily for the purpose of disrupting the business of competitor. Here, Complainant urges that bad faith be found based on both of the above bases.
6.8 The Panel finds that Respondent has attempted intentionally to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or products or services offered on that website. On that basis, the Panel finds that the requirement of bad faith has been satisfied.
6.9 Because each case must be judged by its own facts, the decisions of other Panels finding that Respondent has registered other domain names in bad faith are not probative. However, they do reflect both a consistency in Respondent’s tactics and a consistency in the response of various Panels to them. Those decisions, identified by Complainant, include America Online, Inc v. Carrington, No. FA0208000118314 (NAF October 4, 2002); Gruner + Jahr Printing & Publishing Co. v. Carrington, No. FA0208000122207 (NAF October 10, 2002); Neiman Marcus Group, Inc. v. Party Night Inc., No. FA0205000114350 (NAF July 2, 2002); Bank of America Corp. v. Carrington, No. FA0208000118311 (NAF October 7, 2002); TM Acquisition Corp. v. Carrington, No. FA0207000116764 (NAF September 13, 2002); Anthem Insurance Cos. v. Carrington, No. FA0207000115078 (NAF August 26, 2002); and MBNA America Bank, N.A. v. Carrington, No. FA0207000115040 (NAF August 13, 2002).
6.10 Although irrelevant to the decision here, the Panel rejects the second basis advanced by Complainant for finding bad faith. There is no evidence, either in the record or on the parties’ websites, that the parties are competitors or that Respondent’s primary purpose for registering its domain name was to disrupt Complainant’s business--as opposed to profiting unfairly when Internet users misspell Complainant’s domain name.
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 <rbcentura.com> be transferred to Complainant.
David W. Quinto
Dated: June 3, 2003