The Complainant is Royal Bank of Canada - Banque Royale du Canada, Canada, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Pham Dinh Nhut, Viet Nam. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2019. On September 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 18, 2019, 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 September 20, 2019. On September 18, 2019, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on September 20, 2019. 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 Vietnamese of the Complaint, and the proceedings commenced on September 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2019. The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on October 25, 2019. 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, Royal Bank of Canada - Banque Royale du Canada, is a Canada-based bank, which was founded in 1869, and has become one of the largest banks in the world. The trademark RBC has been used by the Complainant since 1901, and it has been registered for services in classes 35, 36 and 42 across various jurisdictions, including Canada trademark Nos. TMA369496 and TMA424800, registered on June 15, 1990 and March 4, 1994, respectively; Singapore trademark No. T0021032H registered on March 26, 2003; and United States of America trademark No. 2885583 registered on September 21, 2004. The Complainant also registered trademark AVION under the Canada trademark No. TMA633933 on February 28, 2005. In addition, the Complainant owns 1,587 domain names featuring the trademark RBC, among which the notable ones are The Disputed Domain Names The Complainant sent a cease and desist letter to the Respondent on June 3, 2019 and two further notices, requesting for a transfer of the Disputed Domain Names. However, the Respondent did not respond to the cease and desist letter. 5. Parties’ Contentions A. Complainant The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark, in which the Complainant has rights. Firstly, the Complainant contends that the Complainant is the registered owner of the RBC and AVION trademarks. Secondly, the Complainant contends that the Disputed Domain Names are confusingly similar to the marks owned by the Complainant by arguing that: - The addition of the generic Top-Level Domain (“gTLD”) suffix “.com” in the Disputed Domain Names is to be disregarded under the confusing similarity test. - The Disputed Domain Name - The Disputed Domain Names (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled. First, the Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s RBC and AVION trademarks. Second, the Complainant argues that there is no indication that the Respondent has been commonly known by the Disputed Domain Names. Furthermore, at the time of filing the Complaint, the Respondent was using a privacy WhoIs service, which previous UDRP panels have also found to equate to a lack of legitimate interest. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names due to the Respondent’s intention for commercial gain through the monetized parked pages containing sponsored links to banking-related contents, which interfere with the business of the Complainant and confuses members of the public into believing that the Disputed Domain Names belong to the Complainant, when they do not. Finally, the Complainant contends that the Respondent assumed control of the Disputed Domain Names between August 22, 2011 and March 10, 2012, which is significantly after the Complainant filed for registration of the Complainant’s RBC and AVION trademarks, and also significantly after the Complainant’s first use of its RBC trademark in 1901. (iii) The Disputed Domain Names were registered and are being used in bad faith. The Complainant asserts that the trademarks RBC and AVION are known internationally, with trademark Secondly, the Complainant contends that due to the combination of the Complainant’s trademarks RBC and AVION in the Disputed Domain Name The Complainant further argues that the Disputed Domain Names Fourthly, by the registration and use of the Disputed Domain Names, the Respondent intentionally attempts to attract Internet users, who intend to visit the Complainant’s website, but then are diverted to the parking pages bearing links advertising banking-related services unaffiliated with the Complainant. The purpose of the registration and use of the Disputed Domain Names is to create confusion as to the source, sponsorship, affiliation, and/or endorsement of the Disputed Domain Names with that of the Complainant, with the intent to exploit the Complaint’s goodwill in its RBC and AVION trademarks. The Complainant further notes that the Respondent has been involved in a number of previous proceedings under the Policy and currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses, which provides evidences of the pattern of cybersquatting. Finally, the Respondent’s use of a privacy service to hide its identity and failure to respond to the Complainant’s cease and desist letter also evidence bad faith. On basis of the above assertions, the Complainant requests the transfer of the Disputed Domain Names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues (i) Respondent’s Identity The Panel notes that the present case involves privacy registration services. At the time the Complaint was filed on September 9, 2019, the Respondent was identified as “Vietnam Domain Privacy Services”. On September 17, 2019, the Registrar revealed the underlying registrant “Pham Dinh Nhut”. The Center sent an email communication to the Complainant on September 18, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On September 20, 2019, the Complainant filed an amended Complaint, replacing the respondent named in the initial Complaint by the underlying registrant. Therefore, in accordance with section 4.4.5, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel determines the identity of the proper Respondent in this case be the disclosed underlying registrant as named in the amended Complaint filed on September 20, 2019. (ii) Language of the Proceeding The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese. As the Complaint was filed in English, the Center, in its notification dated September 18, 2019, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding. On September 20, 2019, the Complainant confirmed its request that English be the language of the proceeding as originally submitted in the Complaint. The Respondent submitted neither request nor comment on the language of the proceeding. According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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. Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (See, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). In the case at hand, the Panel takes the following circumstances of the proceeding into account, including, but not limited to: (i) the fact that the Complainant, a Canadian business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) English is a common language in global business and quite popular in Viet Nam, where the Respondent is located, and it is also evidenced to the Panel that the websites under the Disputed Domain Names contain English contents; these suggest that the Respondent has knowledge of the English language and be able to communicate in English; and (iii) the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known his preference, but he did not provide any response in this regard. In the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English. (iii) Delay in Bringing the Complaint The Panel finds that the Disputed Domain Names were registered with the Registrar from 2004 to 2006, but the Complaint was not filed with the Center until September 9, 2019. In considering this delay of 13 to 15 years in challenging the Respondent’s registrations of the Disputed Domain Names, the Panel is of the same views as UDRP decisions mentioned in section 4.17 of the WIPO Overview 3.0 that “[p]anels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits”. However, similar to a previous decision, the Panel shall take into account this delay when considering the second and third element requiring the Complainant to establish that the Respondent lacks rights or legitimate interests and that the Respondent registered and used the Disputed Domain Names in bad faith (see, e.g., CeltonManx Limited v. Pham Dinh Nhut,WIPO Case No. D2014-0109). (iv) The Respondent’s Failure to Respond The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Names are identical or confusingly similar to its trademark. First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to RBC and AVION. In addition, it is evidenced that the Complainant has a wide use of its trademarks for financial and banking services worldwide. Second, the Disputed Domain Names Third, the Panel notes that the Disputed Domain Name Fourth, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Names are confusingly similar either to the Complainant’s RBC and AVION trademarks or to the Complainant’s RBC trademark, and the first element under paragraph 4(a) of the Policy is established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy, including “(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 The Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent did not refute the Complainant’s contentions. The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the Disputed Domain Names (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary. Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademarks has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in RBC and AVION Trademarks. Further, the Complainant has submitted relevant evidence showing that although having been registered for almost 15 years, the Disputed Domain Names have not been put into any active use with developed contents, other than resolving to parking pages with pay-per-click (PPC) links that redirect Internet users to other online locations. In this regard, section 2.9 of the WIPO Overview 3.0 holds that “the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. In this present case, the Panel finds that the PPC links in question are referring to, among others, services of the Complainant’s competitors. So, in light of foregoing viewpoint and similarly to a number of well-established prior UDRP decisions, the Panel upholds that operating PPC parking pages using a distinctive trademark in a domain name, and providing connection to goods and/or services competing with the trademark owner, does not establish bona fide offering of goods or services (see, e.g., Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao,WIPO Case No. D2016-2302, Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Names. As the Respondent had utilized a privacy service until that shield was lifted by the Registrar, it is plain to the Panel that the Respondent does not have a name reflecting the Disputed Domain Names. Further, there is also no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Names. Therefore, it is not evidenced that the Respondent is identified by RBC and AVION or that he has any right in these marks. Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the second element under paragraph 4(a) of the Policy is established. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including “(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Names in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions. The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Names. In this regard, the Panel finds that the Complainant’s RBC and AVION trademarks have been registered and used in commerce for quite a long period of time. Besides functioning as a trademark, RBC is also being used in the Complainant’s domain names The Disputed Domain Names comprise the RBC trademark in its entirety, and also AVION in the case of It is further to be noted that the Respondent used a privacy service provider to hide his identity. In this regard, the Panel is of the opinion that the above-mentioned Respondent’s manner of use, which intentionally delays disclosure of the identity of the actual underlying registrant, constitutes a factor indicating bad faith (see section 3.6 of the WIPO Overview 3.0). On the date of this Decision, the Panel accesses the Disputed Domain Names and finds they resolve to parking pages comprising PPC links to banking-related contents. The Panel is of the view that such use of a domain name constitutes bad faith of the Respondent, as it was found so in previous UDRP decisions (see, e.g., Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344; Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302). With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Names for commercial gain and that the Respondent’s actual use of the Disputed Domain Names appears to mislead Internet users and confuse them by making them believe that the parking pages, and even the PPC links, are associated, fostered, endorsed or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent. In addition, the Panel finds that the Respondent, Pham Dinh Nhut, over the period of five years between 2014 and 2019, has involved in more than 20 UDRP disputes, of which the note-worthy are: Kurt Geiger Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut,WIPO Case No. D2017-0364; Moelis & Company Group LP v. Vietnam Domain Privacy Services / Pham Dinh Nhut,WIPO Case No. D2016-2554; Herald & Weekly Times Pty Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut,WIPO Case No. D2016-1162; Dollar Bank, Federal Savings Bank v. Pham Dinh Nhut,WIPO Case No. D2016-0787; Arnold Clark Automobiles Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut,WIPO Case No. D2016-0562. All of the above cases are similar in terms of the Respondent’s pattern of conduct, where he registered domain names identical or confusingly similar to another entity’s trademarks, as found by previous UDRP panels, and used privacy services to shield his identity. The above UDRP disputes all resulted in transfers to their respective complainants. The Panel finds this pattern of conduct is clearly a further indication of bad faith. Taking into account all of the above, the Panel finds that the Disputed Domain Names were registered and are being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a) of the Policy is established. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names Pham Nghiem Xuan Bac
registrations across numerous countries. At the time of registration of the Disputed Domain Names, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se.
(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 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".
Sole Panelist
Date: November 8, 2019
Full & Egal Universal Law Academy