WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Bank of Canada v. Personal
Case No. D2001-0761
1. The Parties
The Complainant is Royal Bank of Canada, of 1, Place Ville-Marie, Montreal (Quebec) H3C 3A9, Canada.
Represented by Ogilvy Renault, of 1981 McGill College Avenue, Suite 1100, Montreal, Quebec, H3A 3C1, Canada.
The Respondent is Personal, of Dimitrovs Str. 22-12, Moscow, RU 102114, Russian Federation.
Respondent is not represented.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: .
The Registrar with which the domain name is currently registered is B,Inc.
3. Procedural History
3.1 The Complaint was filed electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 7, 2001, and June 11, 2001.
3.2 On June 13, 2001, the Registrar verified:
(i) that the domain name is registered with it;
(ii) that the current registrant of the domain name is the Respondent;
(iii) that the Policy applies to the domain name;
(iv) that the domain name is currently in "Registrar Lock" status;
(v) Respondent's Administrative Contact and Technical Contact is Alex Vorot, Free Domains Parking, Mira Prospect 120-14, Moscow, RU180012, Russia. No information was given as to the Billing Contact.
(vi) The record was created on February 2, 2000.
3.3 On June 14, 2001, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center were found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO�s Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.
3.4 On June 14, 2001, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding by courier and by e-mail to Respondent, the Administrative Contact and Technical Contact.
3.5 The Administrative Proceeding commenced on June 14, 2001, and the Response was due on July 3, 2001.
3.6 No response was filed and on July 5, 2001, notice of Respondent Default was sent to Respondent and to the Administrative and Technical Contact and to the Postmaster at the domain name.
3.7 Panelist D.J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, was appointed as sole panelist on July 18, 2001.
4. Factual Background
4.1 Complainant is a Canadian financial institution founded in 1869 which claims to have established substantial goodwill and a highly enviable reputation in its name and trademarks ROYAL BANK and ROYAL BANK OF CANADA.
4.2 Complainant has registered the trademark ROYAL BANK in Canada, the United States, Argentina, Puerto Rico, Barbados, Bahamas and Indonesia, (Complaint Annexures 27-33). It has registered the trademark ROYAL BANK OF CANADA in Canada and in 22 other countries throughout Europe, the Americas and Asia/Pacific (Complaint Annexures 3-26).
4.3 Complainant is the owner of the domain name (Complaint Annex 34).
4.4 Complainant offers online banking and financial services at its web site (Complaint Annex 35).
4.5 On April 9, 2001, Complainant sent a letter of demand to Respondent (Complaint Annex 37).
4.6 Complainant asserts and supports by evidence (Complaint Annexures 36, 38 and 39) that persons seeking Complainant's web site who inadvertently omit the dot (.) between "www" and "royal" are diverted to a web site "/index.html" and were "mousetrapped" into sites which were, at different times, porn sites, gambling sites or gambling and porn sites (Complaint Annexures 36, 38 and 39), the Panel notes that the domain name currently directs to and resolves to the homepage of a site offering, inter alia, links to financial service providers.
4.7 Respondent uses the domain name as an e-mail address (Complaint Annex 40).
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6. Parties Contentions
A. Complainant
6.1 Complainant contends that:
(i) "The domain name is identical or confusingly similar with the Complainant's trademark ROYAL BANK since it is composed of the two distinctive words of the Complainant's trademark, i.e. "royal" and "bank" as the letters "www" are usually perceived as not forming part of the domain name. Any use of the domain name by a person other than Royal Bank of Canada will inevitably cause confusion in that people familiar with Royal Bank of Canada, its trademark ROYAL BANK and its web site domain name will naturally expect that the Respondent's domain name is used by or under the authority of Royal Bank of Canada."
(ii) "The domain name is also confusingly similar with the Complainant's trademark ROYAL BANK OF CANADA. It is composed of the two distinctive words of the Complainant's trademark, i.e. "royal" and "bank", the word "Canada" being merely descriptive of the country of origin of the Complainant."
6.2 Complainant further contends that Respondent has no rights or legitimate interests in the domain name.
6.2.1 Complainant contends that Respondent has never used the domain name in connection with the bona fide offering of goods or services, has never been commonly known by the domain name, nor is it making non-commercial or fair use of the domain name.
6.3 Complainant further contends Respondent has registered and is using the domain name in bad faith.
6.3.1. Complainant contends Respondent registered and is using the domain name intentionally and for commercial gain to attract to its web site users who inadvertently typed the domain name instead of Complainant's domain name .
6.3.2. Complainant also contends that by registering and using the domain name and diverting traffic to pornographic and gambling sites Respondent intended to disrupt, and did disrupt, the business of Complainant and tarnished the distinctiveness and reputation of Complainant, its trademarks and its business.
6.3.3. Complainant also contends that Respondent's use of the domain name as an e-mail address will inevitably result in confusion and passing off, as anyone sending traffic to or receiving traffic from that address would inevitably believe that the address was associated with Complainant.
B. Respondent
6.4 Respondent has not filed a Response or otherwise communicated with the Center.
7. The Panel's Findings
Identical or Confusingly Similar Trademarks
7.1 Complainant has established that it has rights in the trademarks ROYAL BANK and ROYAL BANK OF CANADA, not only in Canada but also in many other parts of the world. The dominant and identifying part of the domain name is Complainant's trademark ROYAL BANK. The addition of neither the suffix ".com" nor the prefix "www" affects this dominant identity. Each is merely a necessary adjunct of the entry of the internet address. As stated by Panelist Mark V. Partridge in InfoS,Inc v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069:
"The addition of www before Complainant's mark and the addition of an "s" after the mark are not sufficient to avoid confusion. Indeed, they appear to be additions designed to take advantage of mistakes consumers are likely to make when intending to enter Complainant's web site address" � See also AltaVista v. Stoneybrook, WIPO Case No. D2000-0886.
The Panel finds that the domain name is identical or confusingly similar to Complainant's trademark ROYAL BANK. Likewise, it is confusingly similar to Complainant's trademark ROYAL BANK OF CANADA. The omission of the geographical identifier "CANADA" does not negate the likelihood of confusion.
Legitimate Right or Interest
7.2. Complainant has submitted a prima facie case of Respondent's absence of legitimate right or interest in the domain.
7.2.1. In light of Complainant's established trademark rights and evidence of Respondent's use of the domain name, there is no readily apparent basis upon which Respondent could claim such right or interest.
7.2.2. To the extent that Respondent has used the domain name, such use appears to have been to direct traffic to the domain site to the sites of others offering pornographic or gambling services. The overwhelming probability is that such direction has been for a fee. Such use of Complainant's trademark and reputation cannot constitute a bone fide offering of such service. There is no suggestion that Respondent has been known by the domain name or that Respondent is making a legitimate non-commercial or fair use of the domain name.
7.2.3. Complainant has made a prima facie showing and Respondent has made no attempt to rebut it.
Bad Faith Registration and Use
7.3. Complainant's submission of bad faith registration and use must be tested against the provision of paragraph 4(b) of the Policy.
7.3.1. Complainant does not suggest that Respondent's conduct falls under paragraph 4(b)(i) or 4(b)(ii) of the Policy.
7.3.2. Complainant contends however, that Respondent has registered the domain name primarily for the purpose of disrupting Complainant's business. That, however, is not sufficient to bring Respondent's conduct within paragraph 4(b)(iii) of the Policy since it has not been shown that Respondent is a competitor of Complainant.
7.3.3. The Panel accepts Complainant's submission that Respondent has, by using the domain name, intentionally attempted to attract users to its web site by creating confusion with Complainant's trademark. Such confusion will exist as to the source, sponsorship, affiliation or endorsement of the web site. The fact that such confusion may be dispelled, and replaced by annoyance or disgust, once the nature of the site is revealed does not negate the fact of the initial confusion. The question remains however, as to whether this was done for commercial gain. There is no direct evidence to prove this but as noted above in paragraph 7.2.2, the overwhelming probability is that Respondent attracted a fee for the redirection of traffic. Such arrangements are common and no other reason for the redirection is readily apparent. The presumption thus raised had not been rebutted by Respondent and the Panel finds that the circumstance specified in paragraph 4(b)(iv) of the Policy has been established.
7.3.4. The circumstances set out in paragraph 4(b) of the Policy are indicative but not exhaustive of the categories of bad faith which the Policy is intended to address. The Panel is of the opinion that the whole conduct of Respondent demonstrates bad faith registration and use of the domain name and would so find if it were necessary to do so. Such finding is, however, unnecessary in view of the Panel's finding of circumstances falling within the provisions of paragraph 4(b)(iv).
8. Decision
8.1 The Panel decides and orders:
(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) The domain name has been registered and is being used in bad faith;
(iv) The domain name should be transferred to Complainant.
D.J. Ryan
Sole Panelist
Dated: July 24, 2001
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