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Royal Bank of Canada v. Namegiant.com [2004] GENDND 1206 (21 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Royal Bank of Canada v. Namegiant.com

Case No. D2004-0642

1. The Parties

The Complainant is Royal Bank of Canada, Montreal, Quebec, Canada, represented by Ogilvy Renault, Canada.

The Respondent is Namegiant.com, Mark Segal, London, United Kingdom of Great Britain and Northern Ireland, represented by Mark Segal, President.

2. The Domain Name and Registrar

The disputed domain name <rbconline.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2004. On August 18, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On August 18, 2004, eNom 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 administrative, billing, and technical contact. 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 August 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2004. The Response was filed with the Center on August 27, 2004.¹

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on September 7, 2004. 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 Royal Bank of Canada is a well-known financial institution which does business in many countries around the world. Over the years, Royal Bank of Canada had developed a family of trademarks composed of “RBC” for use in association with various banking, financial, and insurance services. In particular, Royal Bank of Canada has registered and/or filed hundreds of applications for marks composed of “RBC” in Canada and in more than seventy (70) other countries of the world, including Great Britain. See Annexes 4, 5, 6, 7, 8, 9, 10, and 11 to Complaint.

Respondent registered the domain name in dispute on or about November 5, 2002. It appears from a printout of Respondent’s website that “This domain is for sale”. See Annex 19 to Complaint. Respondent describes itself as “one of the largest domain name brokers in the world.” It advertises itself as “[s]pecialists in domain brokering”, as “offer[ing] a full range of domain related services”, and as maintaining a “fully searchable database of domains for sale”. See Annex 20 to Complaint.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the domain name <rbconline.com> is confusingly similar to Complainant’s marks, in particular, to the mark RBC. In fact, Complainant notes, the domain name in dispute consists of Complainant’s mark RBC with the word “online” appended. The additional element “online”, according to Complainant, is merely descriptive of the online environment in which any domain name is used and, thus, in itself is not sufficient to distinguish the domain name and eliminate any likelihood of confusion.

Complainant further argues that Respondent has no legitimate right or interests in the domain name <rbconline.com>. Complainant maintains that it has never authorized Respondent to register and use the domain name nor is Respondent affiliated or otherwise associated with Complainant.

Complainant submits that its RBC-related marks are well-known and that Respondent has not made any good faith use of the domain name, was never commonly known by the domain name, is not making any legitimate noncommercial or fair use of the domain name, and has never developed any legitimate goodwill in association with the domain name.

Finally, Complainant contends that Respondent has registered and used the domain name <rbconline.com> in bad faith by acquiring the name primarily for the purpose of selling, or otherwise transferring, the domain name registration to Complainant for valuable consideration in excess of the out-of-pocket costs directly related to the domain name. In support of such argument, Complainant not only refers to the fact that Respondent advertises at its “www.rbconline.com” site that “This domain is for sale” and its self-description as a domain name broker, but also to a July 6, 2004 email from Respondent to Complainant in which Respondent states, in part, “if you are in a position to make a serious offer I would like to hear it. I don’t like to turn business away if there is a chance we can work together on this”. See Annex 21 to Complaint.

B. Respondent

Respondent, in its Response, notes that there are thousands of companies around the world sharing the initials “RBC.” According to Respondent, “[s]ince there was no trademark on <rbconline.com>, we do not believe that it would have been realistic or possible for us to contact all companies sharing these initials at the time of registration to find out if there were any objections to our registration of this domain”.

It further points out that “[t]he days of picking up a good domain at reg[istration] fee are long gone so selling a domain in excess of registration fee should not be considered a realistic argument anymore because it is unlikely that anyone can get good newly deleted and re-registered domains at this fee”. In any case, Respondent urges that the domain name was not registered for the primary purpose of selling it as Respondent also offers hosting and web-design services. Respondent further contends that the July 6, 2004 email noted above was sent in response to an initial inquiry made by Complainant.

Respondent also indicates that the domain in dispute “has never been used – so has not been `used in bad faith’”.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel concludes that the domain name in issue <rbconline.com> is confusingly similar to Complainant’s RBC mark. The domain name differs from Complainant’s mark merely through the addition of the descriptive term “online” as well as the generic top-level designation “.com”. The addition of such matter does not dispel a determination that the mark and domain name are confusingly similar.((See Dow Jones & Co., Inc. v. Dow Jones Update, WIPO Case No. D2000-0495 (August 14, 2000) (<dowjonesonline.com> held confusingly similar to DOW JONES mark); Edgar Rice Burroughs, Inc. v. Adtel Communications, WIPO Case No. D2000-0115 (April 21, 2000) (<tarzanonline.com>, <tarzanonline.net>, and <tarzanonline.org> held confusingly similar to TARZAN mark)).

It is also clear that, through its use and registrations of the RBC mark, Complainant has rights in such mark. Respondent’s assertion that there is no trademark on <rbconline.com> and that thousands of companies share the initials “RBC” is not inconsistent with a determination that Complainant has rights in the mark RBC.

B. Rights or Legitimate Interests

Respondent has conceded that it has never used the domain name and there is no contention that it is commonly known by the domain name. As a result, the Panel finds that Respondent does not have rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Panel concludes that the domain name in dispute was registered and used in bad faith, within the meaning of the applicable policy. The language at such site – “This domain is for sale” – clearly suggests that Respondent registered the domain name primarily² for the purpose of selling it to Complainant or to one of its competitors for valuable consideration in excess of Respondent’s out-of-pocket expenses.³

The fact that an active website does not exist at that site -- in other words, that the domain name has been passively held -- does not mean that the name has not been “used”, as that term has been defined by previous UDRP Panels. The passive holding of a website has been found to create an inference of “bad faith” use in many other UDRP decisions. ((See, e.g., Mondich & American Vintage Wine Biscuits, Inc. v. Shane Brown, WIPO Case No. D2000-0004 (February 16, 2000)).

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 <rbconline.com> be transferred to the Complainant.

Jeffrey M. Samuels
Sole Panelist

Dated: September 21, 2004

¹ On September 2, 2004, Complainant submitted a “Supplemental Filing” to which Respondent submitted a “Response and Reply” on September 15, 2004.” The Panel has decided not to admit and consider such submissions in reaching its decision in this matter.

² Even if the panel was to accept Respondent’s assertion that it provides hosting and web-design services, such fact does not preclude a determination that the domain name in issue was registered “primarily” for the purpose of resale. The fact that Respondent also advertises itself as a domain name “broker” reinforces the panel’s conclusion on this issue.

³ While the evidence considered by the panel does not indicate at what price Respondent was willing to sell the domain name, its lament regarding the economics of the domain name industry strongly suggests that the sale price would exceed its out-of-pocket expenses in obtaining the registration.