Complainant is Royal Bank of Canada, Montreal, Canada, represented by Ogilvy Renault, Canada.
Respondent is Lynda Lee, Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <rbcfutures.com> is registered with HiChina Web Solutions Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2007. On November 9, 2007, the Center transmitted by email to HiChina Web Solutions Limited a request for registrar verification in connection with the domain name at issue. On November 12, 2007, HiChina Web Solutions Limited transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center on November 13, 2007 that the Registrar has indicated that the language of the registration agreement in the present case is Chinese, Complainant has submitted a request that English be the language of the proceedings on November 15, 2007. The Center has invited Respondent to provide any comments and/or supporting materials it may have in relation to Complainant’s language request no later than November 21, 2007, but the Center did not receive any response from Respondent. 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2007.
The Center appointed Susanna H.S. Leong as the sole panelist who is conversant in English and Chinese in this matter on December 31, 2007. The Panel shall have the discretion to decide on the language of the present proceedings. 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
Complainant is Royal Bank of Canada, a well-known financial institution which does business in many countries of the world. It was founded in 1869 and since then, Complainant has developed substantial goodwill and reputation in its name, business, products, services and trademarks, including the well-known trademark RBC and family of RBC trademarks (“RBC marks”). Many of its subsidiaries, which operate in several countries of the world, carry on business under corporate names composed of the well-known trademark RBC. One of these subsidiaries is RBC Dain Rauscher Corp., which operates in the United States of America. As a result of a branding exercise, Complainant has adopted “rbc” and “rbc financial group” as its master brands and has added the letters “rbc” to its famous LION & GLOBE DEVICE trademark.
Over the years, Complainant has developed a family of trademarks composed of “rbc” for use in association with its products and services in the areas of banking, financial and insurance. Complainant has registered hundreds of trademarks composed of “rbc” in Canada and in seventy four other countries of the world including Community trademarks in the European Union. Furthermore, Complainant has also registered its RBC and its LION & GLOBE DEVICE marks in China since 2003.
Respondent’s domain name was registered on January 17, 2007.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s RBC marks. The insertion of the word “futures” after the word “rbc” is not in itself sufficient to distinguish Respondent’s domain name and eliminate any likelihood of confusion. Complainant contends that the word “futures” is a generic banking term commonly used to describe contracts of sale or purchase of a security at a predetermined price on a specified future date. Therefore the addition of a generic or descriptive word such as “futures” to Respondent’s domain name does not sufficiently distinguish the domain from the mark for purposes of determining confusing similarity. Complainant cites Bank of America Corporation v.Vox Consult, NAF Case No. FA102492; TD BankNorth, Inc. et al.v.Ace Ticket, WIPO Case No. D2005-0276; and The Bank of Nova Scotiav.Whois Protection,
WIPO Case No. D2007-0884.
Rights or Legitimate Interests
Complainant contends that Respondent has no legitimate right or interest in the domain name <rbcfutures.com> for the following reasons:
(1) Complainant has never authorized Respondent to register and use the disputed domain name.
(2) Respondent has no trademark rights in the name RBC or RBC FUTURES. Complainant’s RBC marks well predate Respondent’s registration of the disputed domain name on January 17, 2007.
(3) Respondent is not, and never has been, a representative of Complainant. He is also not licensed to use Complainant’s RBC marks or is given consent to be associated with Complainant.
(4) Prior to this Complaint and at any other time, Respondent has never been commonly known by the disputed domain name. There is no element on the Respondent’s website that would indicate that Respondent has ever been commonly known by the disputed domain name and Respondent’s name does not appear anywhere on Respondent’s website.
(5) The use of the domain name which incorporates Complainant’s well known RBC marks by Respondent is evidence of Respondent’s attempt to trade on the goodwill of Complainant. Until recently, Respondent has allowed a company which calls itself RBC Dain Rauscher Corp., which is not one of the subsidiaries of Complainant, to operate the website “www.rbcfutures.com”. The said company was also using a LION AND GLOBE mark which is confusingly similar to Complainant’s LION & GLOBE mark. Complainant asserts that these activities are all illegitimate and Respondent engages in such activities to intentionally attract Internet users for commercial gain to Respondent’s website by creating confusion as to the source of the products and services. Therefore, these activities conducted through the website operated under the disputed domain name cannot constitute a bona fide offering of services since Respondent has allowed a company to pass off its services as and for those of Complainant and its subsidiary RBC Dain Rauscher Corp. Complainant cites Robert Bosch GmbHv.Asia Ventures Inc.,
WIPO Case No. D2005-0946; and Bank of America Corporation v.Vox Consult, NAF Case No. FA102492.
Registered and Used in Bad Faith
Complainant contends that Respondent has registered and used the disputed domain name in bad faith on the following grounds:
(1) Considering that Complainant is a well-known financial institution which carries on business in many countries of the world, Respondent has intentionally selected the disputed domain name having Complainant and its subsidiary, as well as its RBC marks, in mind.
(2) Respondent has allowed a company to carry on business under the name of Complainant’s subsidiary and to refer to Complainant’s organization to create confusion as to the source of the services allegedly provided through the website operated under the disputed domain name.
(3) There is no justification for Respondent to have registered the disputed domain name except for inducing people to falsely believe that the activities under the domain name are legitimate causing deception and confusion.
(4) Respondent has intentionally attempted to attract for commercial gain Internet users to the website operated under the disputed domain name by inducing them to believe, falsely that Respondent or the company called RBC Dain Rauscher Corp./Inc. has an affiliation with Complainant’s mark RBC as to the source, sponsorship, affiliation, or endorsement of the said website or of the services offered through the website.
(5) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor by passing off its services as and for those of Complainant and those of its subsidiary RBC Dain Rauscher Corp.
(6) Complainant has repeatedly attempted to send a cease and desist letter to Respondent objecting to the registration and use in bad faith of the domain name and asking for the transfer of same. However, there was no service at the email address and fax number provided for on Respondent’s website. Furthermore, Complainant has never received any response to its letter sent by registered mail.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English. Complainant has submitted a request that English shall be the language of the present proceeding because of the following reasons:
(1) The disputed domain name <rbcfutures.com> is in the English language;
(2) The WhoIs information relating to the registration of the disputed domain name is in the English language;
(3) The website operated under the disputed domain name was in the English language;
(4) To date, Complainant has been unsuccessful in communicating with Respondent, and therefore, it is not possible for Complainant to obtain any consent from Respondent as regards the language of the administrative proceeding;
(5) Complainant has repeatedly attempted to send a cease and desist letter to Respondent objecting to the registration and use in bad faith of the domain name and asking for the transfer of same. However, there was no service at the email address and fax number provided for on Respondent’s website. Furthermore, Complainant has never received any response to its letter sent by registered mail;
(6) Complainant has also been unable to deliver a copy of the Complaint and Annexes to Respondent even though the courier company has been provided with the contact information as shown in the Registrar’s WhoIs database for Respondent;
(7) It is reasonable to conclude that Respondent is familiar with the English language since Respondent, by itself or through a company, has operated the website under the disputed domain name in the English language;
(8) Complainant and its representatives do not speak Chinese and under the circumstances, it would be clearly to the disadvantage of Complainant if it were obliged to conduct the present administrative proceedings through the intermediary of a Chinese spoken person.
After considering the circumstances of the present case and the submission of Complainant’s request, the Panel is of the opinion that the language for the present proceedings should be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. In particular, the Panel notes that (a) the disputed domain name is in English; and (b) the contents of Respondent’s website are offered in English. The Panel also notes that the Center has notified Respondent of the proceedings in both Chinese and English. Respondent has a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, Respondent has chosen not to respond to Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision will be rendered in English.
6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the RBC marks since it started business in 1869 in relation to banking and financial products and services. The Panel rules that Complainant has rights and continues to have such rights in the relevant RBC marks.
The disputed domain name consists of Complainant’s RBC marks in its entirety, the English word “futures” attached to it at the back and the suffix “.com”. In assessing the degree of similarity between Complainant’s trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant’s RBC marks and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about Complainant’s products and services.
The Panel finds that the term “rbc” in Complainant’s RBC marks is the acronym of Complainant’s company name Royal Bank of Canada and over the years, it become distinctive of Complainant and its services. This distinctive element in Complainant’s RBC marks has been reproduced in its entirety in the disputed domain name. The Panel finds the “rbc” portion to be the most prominent part of the disputed domain name which will attract consumers’ attention. The Panel accepts Complainant’s contention that the English word “futures” is a commonly used term in the banking and finance industry to refer to contracts of sale or purchase of a security at a predetermined price on a specified future date. The Panel finds it is a descriptive term in the banking and finance industry and the addition of this English word to the word “rbc” does not provide additional specification or sufficient distinction from Complainant or its RBC marks. In fact, the Panel finds that given the fact that Complainant is in the finance and banking industry, the addition of the word “futures” serves to describes certain aspects of Complainant’s business, which increases the level of confusion of Internet users as Internet users may confuse Respondent’s website for Complainant’s official website devoted to futures contracts or other related financial instruments. It is also an accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s trademarks in which Complainant has rights.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(1) Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of “rbcfutures” in its business operations;
(2) There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;
(3) There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services. Given the fact that Respondent has allowed a company to carry on business under the name of Complainant’s subsidiary and to refer to Complainant’s organization without Complainant’s consent, all these activities conducted via the website operated under the disputed domain name are illegitimate and it is clear that Respondent engages in such activities to intentionally attract Internet users for commercial gain to Respondent’s website by creating confusion as to the source of the products and services. Therefore, these activities conducted by Respondent through the website operated under the disputed domain name cannot possibly constitute a bona fide offering of services by Respondent. Consequently, Respondent cannot claim to have any legitimate interests or rights in the disputed domain name by virtue of these activities;
(4) Complainant and its RBC marks enjoy a worldwide reputation including China, with regard to its banking and financial products and services. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the “rbc” element in the RBC marks is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by Respondent in the appropriate cases.
One important consideration in the Panel’s assessment of whether Respondent has registered and used the domain name in bad faith is prior knowledge on the part of Respondent of Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the substantial goodwill and reputation of Complainant and its RBC marks in many countries of the world including China, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the domain name. The Panel’s findings are further buttressed by the following evidence that (a) the term “rbc” in Complainant’s RBC marks is an arbitrary mark with no descriptive significance to the underlying goods or services and is unlikely to be used by Respondent to describe its goods or services; and (b) that Respondent has allowed a company to carry on business under the name of Complainant’s subsidiary and to refer to Complainant’s organization when all these activities conducted via the website operated under the disputed domain name are illegitimate, it is clear that Respondent engages in such activities to intentionally attract Internet users for commercial gain to Respondent’s website by creating confusion as to the source of the products and services.
Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the Panel finds that the term “rbc” in Complainant’s RBC marks which have acquired a worldwide reputation in the banking and financial industry is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services, and profit there from.
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website which has a similar look and feel as Complainant’s official website thereby giving Internet users the false impression that Respondent’s domain name is in some way related to or associated with Complainant. Given the worldwide reputation of Complainant’s RBC marks in the banking and finance industry, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is identical or confusingly similar to Complainant’s widely known and distinctive trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users are led to believe that the website “www.rbcfutures.com” is either another of Complainant’s websites dedicated to futures contracts and other related financial services or it is the site of official authorized partners of Complainant, while in fact it is neither of these. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant’s RBC marks and this constitutes a misrepresentation to the public that Respondent’s website is in one way or the other associated or connected with Complainant’s. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
7. Decision
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, <rbcfutures.com> be transferred to Complainant.
Susanna H.S. Leong Sole Panelist
Dated: January 14, 2008
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