The Complainant is Royal Bank of Canada - Banque Royale du Canada, Canada, represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is Domain Administrator, Fundacion Privacy Services Ltd., Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2020. On October 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 21, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center verified that the 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 October 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2020. The Center appointed Ellen B Shankman as the sole panelist in this matter on November 19, 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. 4. Factual Background The date of the Domain Name registration was confirmed by the Registrar to be April 22, 2009. The Complainant is the owner of over 620 trademark registrations worldwide for trademarks comprised of, or containing, RBC (collectively, the “RBC Trademarks”). The Complainant owns, inter alia, trademark registrations in Canada for the following marks: RBC No. TMA 369496, registered on June 15, 1990, as well as trademark ROYAL BANK No. TMA356947, registered on June 9, 1989, covering financial services. In addition, the Complainant operates its primary website at “www.rbc.com”, reflecting its trademark in order to promote its services. The Complainant has provided evidence that the RBC and Royal Bank trademarks have also had extensive coverage and use. The trademarks predate the date of the Domain Name registration for a very broad variety of goods and services in the banking industry. The Complainant claims that the Domain Name came to its attention only recently when it saw that the Respondent is actively selling the Domain Name as per the following posting at DomainTools.com: “rbcroyalbnk.com is for sale! This domain is listed for sale at one of our partner sites for $1,999”. Upon discovering the existence of the Domain Name the Complainant sent a demand letter (“C&D letter”) to the Respondent dated August 3, 2020, with a follow up C&D letter on September 25, 2020. Copies of the advertisement and of the two C&D letters were provided as evidence by the Complainant. The Respondent did not reply to the C&D letters, nor to this UDRP Complaint. The Complainant also submitted evidence that at the time of the filing of the Complaint the Domain Name has been made to resolve to a survey website located at “tco20.proasdf.com”, which collects personal information from end users. The Panel also conducted an independent search to determine that the Domain Name no longer resolves to the above survey and instead resolves to a parking page with links to online banking – including “RBC Online Banking -- which links appear to be ‘pay-per-click’” (“PPC”). Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant The Complaint contends that the Complainant is Canada’s biggest bank and one of the largest in the world based on market capitalization. Operating in over 36 countries worldwide, the Complainant is a global financial institution. The Complainant is one of North America's leading diversified financial services companies and provides personal and commercial banking services, wealth management services, insurance services, investor services and capital markets products and services on a global basis. The Complainant has over 86,000 full and part-time employees and serves 17 million clients in Canada and the U.S., as well as in 34 other countries worldwide, including Australia, France, England, China, Singapore, Spain and Switzerland. It is listed on both the New York Stock Exchange and the Toronto Stock Exchange (RY). The Complainant claims that without the permission of the Complainant, the Respondent registered the Domain Name on April 22, 2009. The Respondent is actively selling the Domain Name as per its posting at DomainTools.com: “rbcroyalbnk.com is for sale! This domain is listed for sale at one of our partner sites for $1,999”. The Doman Name is also listed for sale at Afternic’s website, a domain name brokerage website. The Complaint included evidence that the Domain Name has been made to resolve to a survey website located at “tco20.proasdf.com”, which collects personal information from end users. The Complainant argues that the Domain Name constitutes a clear case of typosquatting as the Respondent has intentionally misspelled the famous RBC ROYAL BANK trademark by omitting the letter “a” between the letters “b” and “n”. Save for the omission of the letter “a” in the word “bank”, the Domain Name is nearly identical to the Complainant’s RBC trademarks. The Domain Name incorporates the whole of the famous RBC and ROYAL BANK trademarks. Furthermore, the whole of the RBC and ROYAL BANK elements of the RBC trademarks are incorporated in the Domain Name. Under the circumstances, the Respondent cannot avoid confusion as it has misappropriated the entirety of the RBC and ROYAL BANK trademarks. Furthermore, the Respondent’s typosquatting constitutes prima facie evidence of confusion and is direct evidence of an intent on the part of the Respondent to deceive the public. The Respondent is attempting to capitalize on end user confusion by omitting the letter “a” in the Domain Name. The Complainant argues that the Respondent is a classic cybersquatter as evidenced by its USD 1,990 offer to sell the Domain Name. This undermines any claim of legitimate interest. Furthermore, the Domain Name has been made to resolve to a consumer survey website, which by itself undermines any claim of rights. As well, the mere act of typosquatting, by itself, also squarely undermines a claim of rights or legitimate interest. The Complainant contends that under the circumstances, the Respondent registered the Domain Name for the purpose of selling, renting, licensing or otherwise transferring it to the Complainant for valuable consideration in excess of its actual costs in registering the Domain Name. Furthermore, the Respondent registered the Domain Name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant as to source or sponsorship, and that the Respondent has engaged in typosquatting, which further serves to support a finding of bad faith. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademarks RBC and ROYAL BANK in respect of a very broad range of financial services. The Domain Name is confusingly similar to the trademarks owned by the Complainant. The deletion of the letter “a” does not bar a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademarks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, and constitutes opportunistic bad faith registration and use. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 used in bad faith The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for RBC and ROYAL BANK. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” See also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7: "[…] 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 the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, the Panel agrees with the Complainant’s argument that it is a well-established principle that typosquatting constitutes prima facie evidence of confusion. See e.g. DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. Peter Carrington and Party Night Inc.,WIPO Case No. D2002-0756; Citigroup, Inc v. Party Night Inc. aka Peter Carrington,WIPO Case No. D2003-0480; ESPN, Inc. v. XC2,WIPO Case No. D2005-0444; Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc.,WIPO Case No. D2000-1259). Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the Respondent to come forward with relevant evidence of rights or legitimate interests in the Domain Name, once the Complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. Furthermore, 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. See WIPO Overview 3.0, section 2.9. Therefore, the Panel finds that the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademarks RBC and ROYAL BANK and uses it for the purpose of misleading and diverting Internet traffic. The Panel finds that this is a classic example of the unfortunate fraudulent and opportunistic typosquatting registration that the UDRP is intended to address, and finds that the Respondent is using the Domain Name opportunistically to benefit financially from the Complainant’s trademark by way of PPC links, and earlier did so by resolving to a survey that collected personal data. And if that were the case when the Domain Name resolved to a page with the survey, it’s certainly supported now by resolution of the Domain Name to the PPC page. The Panel finds that the registration of the Domain Name based on well-established marks at the time of registration and the Respondent’s use of the Domain Name to redirect Internet users to the Respondent’s parking page advertising links to on line banking lead to a finding of bad faith squarely within the meaning of the Policy. The Domain Name was selected in knowledge of the Complainant’s marks and brand, and further the Domain Name was chosen in order to capitalize on Internet traffic intended for the Complainant’s website. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name or to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. In light of this knowledge, the Respondent uses the Domain Name to direct Internet users to a webpage displaying pay-per-clicks links which are likely to generate revenues. Previous UDRP panels have held that the use of domain names to divert Internet users and to direct them to a webpage providing revenues through click to the Respondent evidences bad faith. Indeed, the Respondent is taking undue advantage of the Complainant’s trademark to generate profits. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy (F Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956, L’Oréal SA v. LV Kefeng,WIPO Case No. D2009-1231 and Alstom v. FM Laughna, WIPO Case No. D2007-1736). Several UDRP panels concurred that “[…] the use of a domain name to point to a website that offers sponsored links to other websites providing services or goods which are similar to those offered by a complainant’s own website is evidence of bad faith” (See Société Nationale des Chemins de Fer Français (SNCF) v. Comdot Internet Services Private Limited./PrivacyProtect.org, WIPO Case No. D2008-0025, and Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM),WIPO Case No. D2005-0591). Thus, the Panel finds that the Respondent’s use of the Domain Names creates confusion as to the source of the Domain Names in an attempt to trade on the goodwill associated with the Complainant’s trademark. A respondent’s use of a complainant’s mark—for said respondent’s commercial benefit—to attract Internet users otherwise seeking said complainant evinces a finding of bad faith per Policy paragraph 4(b)(iv) and is consistent in this case. See WIPO Overview 3.0, section 3.1.4, which states: “Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use).” Further, the Panel agrees with the Complainant’s argument that the Respondent has engaged in typosquatting, and agrees that there can be no doubt that the Respondent had actual knowledge of the RBC Trademarks at the time of registration, thereby supporting a finding of bad faith. It is well-settled that the practice of typosquatting is by itself evidence of the bad faith registration (ESPN, Inc. v. XC2, supra; Longs Drug Stores Cal., Inc. v. Shep Dog,WIPO Case No. D2004-1069; Lexar Media, Inc. v. Michael Huang,WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816). In this case, the Respondent has engaged in typosquatting, which is prima facie evidence of bad faith. Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the use of PPC links for financial transfers, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy. 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 Domain Name, Ellen B Shankman
Sole Panelist
Date: November 23, 2020
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