The Complainant is Royal Bank of Canada - Banque Royale Du Canada, Canada, represented by Gowlings WLG (Canada) LLP, Canada.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Randy Cass, Canada, represented by Adair Goldblatt Bieber LLP, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2019. On November 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 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 on November 19, 2019. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2019. The Center received an email communication from the Respondent on November 21, 2019. In response to the Respondent’s email, the Complainant requested the suspension of the proceeding on December 4, 2019. Pursuant to paragraph 17 of the Rules, the proceeding was suspended on December 5, 2019, until January 4, 2020. On December 31, 2019, the Center received a request for an extension to file a Response from the Respondent until February 3, 2020. The proceedings were automatically reinstituted on January 4, 2020. On January 6, 2020, pursuant to paragraph 5(e) of the Rules, the Complainant contacted the Center disagreeing with the Respondent’s extension request. Pursuant to paragraph 5(b) of the Rules, on January 7, 2020, the Center informed the Parties that the due date for the submission of the Response was extended until January 11, 2020. The Response was filed with the Center on January 10, 2020. The Center appointed Cherise Valles as the sole panelist in this matter on January 20, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On January 23, 2020, the Complainant requested leave to file unsolicited supplemental submissions. On the same day, the Respondent contacted the Center to request that the Complainant’s request be denied. Under the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6, a request to submit an unsolicited supplemental filing should clearly show the relevance of the filing to the case and why it was unable to provide the information contained therein in its complaint or response. The Complainant understands that panels have accepted supplemental filings “where new pertinent facts arise after the submission of the Complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission”. The Complainant asserts that a supplemental submission is required because the Response clarifies the exact date of November 15, 2017, on which the Respondent acquired the disputed domain name. However, this is not a “new pertinent fact that arose after the Complaint was filed”. The date of November 15, 2017, was already within the approximate date range of acquisition in the Complaint. Moreover, the material now sought to be submitted by the Complainant was in existence at the time of the filing of the Complaint, and the Complainant ought to have been aware of its existence at that time. Indeed, Exhibit 1 is a “The Globe & Mail” article entitled “RBX to launch robo-advisor business, will use own ETF”, which was already listed as the second Google search result in Annex 10 of the original Complaint, and therefore clearly in existence at that time, although it was not filed with the original Complaint. The documents in Exhibits 2 to 4 of the supplemental submission, relied on by the Complainant to demonstrate common law rights in the terms “investease” and “rbc investease”, were also in existence and predated the time the Complaint was filed. Exhibits 5 and 6 and related arguments made by the Complainant in the supplemental submissions concerning the strength of the Complainant’s marks are merely expansions of arguments set out in the initial Complaint and are not relevant to the issue before the Panel. The Canadian Intellectual Property Office (CIPO) has registered the Complainant’s trademarks and that constitutes prima facie evidence of their distinctiveness. In the light of the foregoing, the Panel does not take into account these supplemental submissions when reviewing the merits of the Complainant’s and the Respondent’s respective positions and the Panel denies the Complainant’s request to make supplemental submissions. 4. Factual Background The Complainant is one of North America’s leading diversified financial services companies and provides personal and commercial banking, wealth management, insurance, investor services, and capital markets products and services on a global basis. Worldwide the Complainant employs more than 86,000 people and has 16 million clients. The Complainant operates in 36 countries and is one of the top 15 banks globally, based on market capitalization, as of July 31, 2019. The Complainant is one of the most long-standing and successful financial entities in the world, with total assets of 1.4 trillion Canadian dollars. The Complainant owns a number of trademarks in jurisdictions around the world, including the following: - Canadian trademark No. TMA1010415 for INVESTEASE, registered on December 5, 2018, in class 36; and “RBC InvestEase” is an online investment management service that simplifies investing and provides the expertise of real advisors through robo-advisors. The beta version of the platform was launched on November 15, 2017, and the Complainant officially launched “RBC InvestEase” in November 2018. The Respondent’s company, “Nest Wealth”, has been in the financial and investment industry and particularly in the robo-investing and advising industry since at least 2014. Robo-investing is a form of automated investing that uses technology to manage and balance a client’s assets making investing easy for the user. The Complainant registered its primary domain names The disputed domain name was registered on July 1, 2006, and was acquired by the Respondent on November 15, 2017. It redirects Internet users to the Respondent’s website “nestwealth.com”. 5. Parties’ Contentions A. Complainant The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that: The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. - The disputed domain name is identical to the Complainant’s registered trademark INVESTEASE and confusingly similar to the Complainant’s registered trademark RBC INVESTEASE in light of the fact that it wholly incorporates most of the mark. The Respondent lacks rights or legitimate interests in the disputed domain name. - The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks. The disputed domain name has been registered and is being used in bad faith. - The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent asserts that the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have not been satisfied. In particular, the Respondent asserts that: The disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights. - The Respondent asserts that the Complainant did not have rights in the INVESTEASE or RBC INVESTEASE trademarks at the time of registration of the disputed domain name, and that in any event the disputed domain name is not confusingly similar to the Complainant’s trademarks. The Respondent has a legitimate interest in respect of the disputed domain name. - The Respondent is making a legitimate fair use of the disputed domain name, without intent to misleadingly divert consumers or to tarnish the Complainant’s trademarks at issue. The disputed domain name was not registered or being used in bad faith. - The Respondent asserts that the disputed domain name was not registered and is not being used in bad faith. The mere fact of registration of a domain name that is confusingly similar to a famous trademark is not in itself evidence of bad faith registration and use. The Respondent requests the Panel to issue a decision denying the remedies requested by the Complainant. 6. Discussion and Findings The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith. The Complainant has the burden of proof in establishing each of these elements. A. Identical or Confusingly Similar To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark. The Respondent asserts that the disputed domain name is not confusingly similar to a trademark in which the Complainant has rights under paragraph 4(a)(i) of the Policy, as the Complainant did not have registered trademarks of, nor did the Complainant have any common law trademark rights in RBC INVESTEASE or INVESTEASE at the time the Respondent registered the disputed domain name in his name. The disputed domain name was registered more than 10 years prior to the registration by the Complainant of its RBC INVESTEASE and INVESTEASE trademarks. At the time the Respondent purchased the disputed domain name on November 15, 2017, the Complainant had filed applications for registration of the RBC INVESTEASE and INVESTEASE trademarks based on proposed use (on December 22, 2016 and February 23, 2017, respectively), but such trademarks had not yet been registered as of November 15, 2017. Registration of these trademarks was completed following filing by the Complainant of the declarations that actual use had commenced (required under the Canadian Trade-marks Act, R.S.C., 1985 in respect of applications based on proposed use). These declarations of use were filed on November 21, 2018, the same month that the Complainant launched its “RBC InvestEase” platform to the public. As noted above, the registrations were only effected on December 5, 2018. The Panel therefore concludes that the Complainant did not have registered trademarks in INVESTEASE or RBC INVESTEASE at the time the Respondent acquired the disputed domain name. Even if the Complainant did not have registered trademarks in the terms “investease” or “rbc investease” when the Respondent purchased the disputed domain name, it could attempt to demonstrate that it had common law trademark rights in these terms. The Complainant contends that it had rights in the terms “investease” and “rbc investease” as of January 2017, prior to the acquisition by the Respondent of the disputed domain name. However, the Panel does not find that the evidence submitted by the Complainant supports this argument. The Complainant has stated that its “RBC InvestEase” platform was publicly launched on November 29, 2018. Prior to that, the platform was available to the Complainant’s employees as part of an internal beta test. The press releases submitted by the Complainant as Annex 9 to the Complaint reference this beta launch to “some” RBC employees only. The press release dated November 15, 2017, (the same date on which the Respondent acquired the disputed domain name) states that no public launch of the “RBC InvestEase” platform had been set as at that date. The Panel finds that use of the terms “investease” and “rbc investease” in connection with an internal beta launch of a product is not sufficient to confer common law trademark rights on the Complainant at the time the Respondent registered the disputed domain name. The Panel therefore concludes that the Complainant only acquired such common law trademarks when it began offering the “RBC InvestEase” platform to customers on or around November 29, 2018, after the Respondent’s purchase of the disputed domain name on November 15, 2017. In any event, the fact that the Complainant did not have registered trademarks or common law trademarks in the terms “investease” and “rbc investease” is not fatal to its Complaint. The relevant date for determining whether the Complainant had rights in the terms “investease” and “rbc investease” is at the time of the filing of the Complaint, rather than when the disputed domain name was registered (or acquired) by the Respondent. This is supported by previous UDRP panel decisions, which have held that a trademark holder’s rights must merely be in existence at the time the complaint is filed. See, e.g., Greenvelope, LLC v. Virtual Services Corporation,WIPO Case No. D2017-0006, and Business Filings Incorporated v. John Thalacker D/B/A Traffico,WIPO Case No. D2010-1332, in which domain names were registered prior to a complainant’s trademark and the panels nonetheless found the first element of paragraph 4(a) was satisfied. Additionally, WIPO Overview 3.0, section 1.1.3, states that while the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. Clearly the Complainant had both registered and common law trademarks in INVESTEASE and RBC INVESTEASE by the time it filed the Complaint on November 19, 2019. The Panel therefore finds that the Complainant’s absence of rights in INVESTEASE and RBC INVESTEASE as registered or common law trademarks at the time of acquisition of the disputed domain name and at the time the Respondent purchased the disputed domain name does not prevent a finding that the Complainant has trademark rights for the purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.8, states that in cases where a domain name incorporates the entirety of a trademark or where at least a dominant feature of the relevant mark is recognizable in a disputed domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. The disputed domain name incorporates the entirety of the Complainant’s INVESTEASE trademark and is a dominant feature of the Complainant’s RBC INVESTEASE trademark is recognizable in the disputed domain name. The Panel finds that Internet users may be confused as to the relationship between the Complainant and the disputed domain name. Under the Policy, the Top-Level Domain (“TLD”) “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark. In light of the foregoing, the Panel finds that the disputed domain name Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent): “[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making 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.” The Respondent is using the disputed domain name to redirect Internet users to its website that offers services which compete directly with the Complainant’s own offerings. The Complainant contends that this evinces a lack of legitimate interests in the disputed domain name. The Complainant contends that the Respondent’s use of a privacy WhoIs service indicates a lack of legitimate interest. The Respondent claims that he had a one-year privacy protection trial which expired on November 15, 2018, without being subsequently renewed. The Respondent claims his details were therefore publicly available at the time the Complainant filed the Complaint. The supporting documentation submitted by the Complainant and the Respondent showing the WhoIs data for the disputed domain name has not been captured as at the date of the Complaint – the WhoIs data submitted by the Complainant in its Annex 2 captured on September 5, 2019, (or possibly May 9, 2019) shows that the Respondent was using a privacy shield and contradicts the Respondent’s claim that the one-year trial had ended by November 15, 2018. The WhoIs data submitted by the Respondent shows that by January 1, 2020, the Respondent’s details were publicly available. It is not clear on the basis of the evidence submitted at what point the privacy protection trial ceased for the Respondent. The use of a privacy service suggests a prima facie lack of legitimate interests. However, the Panel accepts that there are recognized legitimate uses of privacy and proxy registration services (as confirmed by WIPO Overview 3.0, section 3.6). Moreover, the argument that the Respondent lacks interests in the disputed domain name based on his use of a privacy service may be undermined by the fact the Respondent subsequently terminated the privacy trial and allowed public disclosure of the Respondent’s details: This allowed the Complainant to have access to such information at the time the Complaint was submitted on November 15, 2019. In any event, the Panel finds that the Respondent’s limited use of a privacy service is, in and of itself, not sufficient to establish a lack of rights or legitimate interests in the disputed domain name. While it is for the Complainant to prove all three elements of paragraph 4(a) of the Policy, it is often impossible for a complainant to prove that the respondent has no rights or legitimate interests in the domain name. In these circumstances, it is for the Complainant to make out its prima facie case and for the Respondent to answer that case. The Complainant has met its burden of making out a prima facie case, based on the limited case file before the Panel. In this case, the Respondent acquired the disputed domain name at a time when the Complainant was actively promoting its services. Pursuant to WIPO Overview 3.0, section 2.15, in some cases panels may assess the second and third elements together where panels find that the facts and circumstances of the case would benefit from a joint discussion of the policy elements. Thus, the Panel will analyze this second element together with the third element in paragraph 4(a). See, Project Box LLC v. Domains By Proxy, LLC / Mark Hennings,WIPO Case No. D2019-2354. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (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; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other 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 its website or location. The Panel notes that the Respondent acquired the disputed domain on November 15, 2017. On November 14, 2017, “The Globe & Mail”, Canada’s leading business newspaper, published an article stating that “RBC to launch a robo-advisor business” and “the platform RBC InvestEase, is a new and separate business for Canada’s largest bank” (Annex 10 of the Complaint). Moreover, on November 15, 2017, an article in “Wealth Professionals Canada” referred to the launch of RBC’s dedicated robo-advisor service called “RBC Investease”, and stated that earlier that year the National Bank of Canada invested in robo-advisor “Nest Wealth” (Annex 9 of the Complaint, first article). The Respondent, Randy Cass, is the CEO and founder of “Nest Wealth”. Given the fact that professionals would stay fully abreast of all developments in their industry, especially if an article makes reference to their own company, it is more than likely that Mr. Cass was aware of the launch of the “RBC InvestEase” platform, either the day before or on the same day, he acquired the disputed domain name. It is clear that where the facts of the case establish that the respondent’s intent in registering or acquiring a domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark, panels have been prepared to find the respondent acted in bad faith. Such scenarios include registration (or acquisition) of a domain name further to significant media attention e.g., in connection with a product launch. See WIPO Overview 3.0, section 3.8.2. For the reasons given above, the Panel is satisfied that the Respondent would never have acquired the disputed domain name were it not for the fact that the Respondent knew that it was about to be used as a trademark by the Complainant. See, 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR CorporationWIPO Case No. D2009-0567. The Panel further notes that the Respondent’s registration of the domain name at the time of the announcement of the launch of “RBC’s InvestEase” services strongly indicates an opportunistic registration. See Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen Corner, S.A.v. Patrick Waldron,WIPO Case No. D2001-0351. The Panel thus finds that the elements of paragraph 4(a)(ii) and (iii) are satisfied. 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 name Cherise Valles
- Canadian trademark No. TMA1010398 for RBC INVESTEASE, registered on December 5, 2018, in class 36.
Sole Panelist
Date: February 23, 2020
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