ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Complainant Royal Bank of Canada seeks the transfer of the domain name rbcinsurance.com from Respondent Xross to Complainant. The Panel finds that Complainant has not proved all of the elements of Paragraph 4(a) of ICANN's Uniform Domain Name Dispute Resolution Policy (the Policy). Accordingly, Complainant's request to transfer the domain name is hereby denied.
I. PROCEDURAL HISTORY
The electronic version of the Complaint form was filed on-line through eResolution's Website on February 24th, 2000. The hardcopy of the Complaint Form was received on February 25th, 2000. Confirmation of wire payment was received on February 25th, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk of eResolution to the following conclusion: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information except for the billing contact, which was obtained by contacting directly the Registrar. The contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on February 29th, 2000. That date is the commencement date of the administrative proceeding.
On February 29th, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On March 21st, 2000 the Clerk's office received the response form from the Respondent. [Note : However, the Respondent failed to serve the response on the Complainant, as required.] In the same correspondence, the Respondent requested to have a panelist appointed from neither Canada, USA nor Tanzania, in order to ensure a fair and impartial hearing.
On March 25, 2000, the Clerk's office tried to contact a candidate panelist from Israel, but received no response.
To avoid any additional delay, on March 31st, 2000, the Clerk's Office contacted Mrs. Sandra Sellers, and requested for her to act as panelist in this case.
On April 3rd, 2000, Mrs. Sandra Sellers, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On April 3rd, 2000, the Clerk's Office forwarded a user name and a password to Mrs. Sellers, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On April 3rd, 2000, the parties, the Registrar and ICANN were notified that Mrs. Sellers had been appointed and that a decision was to be, save exceptional circumstances, handed down on April 17th, 2000.
On April 10, 2000, the Panel sent to the Clerk's Office a Preliminary Decision regarding the objections of the Respondent. The objections of the Respondent were overruled.
On April 12, 2000 the Clerk's Office received the final decision of the Panel.
On April 14, 2000 the Clerk's Office sent a copy of the decision to the parties, the Registrar and ICANN in accordance with the regulation.
On April 14, 2000 the Clerk's Office was informed by the Complainant that it had never received a copy of the response form by the Respondent as required by the rules.
On April 17, 2000 the Respondent admitted that he has never sent or transmitted a copy of the response form to the Complainant. This admission is in contradiction with the statement made by the Respondent in the response form and which indicates:
"Respondent has sent or transmitted a copy of the response to the Complainant."
In order to ensure that both parties are treated fairly, that each party is given a fair opportunity to present its case and that the proceeding is conducted in such a manner considered appropriate according to the regulation, eResolution required that the decision rendered in the rbcinsurance.com on April 13, 2000 be cancelled for procedural deficiencies and not implemented by the Registrar.
This matter was discussed with the Panelist, Ms Sandra Sellers. The Panel notes that ICANN's Rules for Uniform Domain Name Dispute Resolution Policy do not grant the parties the right to submit rebuttal pleadings. Rule 12 states that the Panel may request further statements or documents. Indeed, several decisions have rejected replies because they had not been requested by the Panel (see, e.g., Easyjet Airline Co. Ltd. v. Steggles, WIPO No. D2000-0024; J.P. Morgan v. Resource Marketing, WIPO No. D2000-0035). However, the Panel believes that Respondent's failure to serve its Response on the Complainant, despite an explicit statement to the contrary, constitutes circumstances that support a decision to accept further pleadings following Complainant's receipt and review of the Response. Additionally, the Panel believes that acceptance of another round of pleadings will preserve the integrity of ICANN's procedure and protect the rights of each party to be heard. Accordingly, the Panel granted the Complainant additional time to file a rebuttal, and if filed, also granted the Respondent leave to file a sur-rebuttal.
Complainant filed a rebuttal on May 3, 2000, and Respondent filed a sur-rebuttal on May 11, 2000. The new decision of the Panel shall then be rendered by May 19, 2000.
II. PRELIMINARY DECISION OVERRULING RESPONDENT'S OBJECTIONS CONCERNING ALLEGED CONFLICTS
A. Introduction and Summary
In its response to the complaint, the Respondent, Xross, objected to the jurisdiction of eResolution, alleging that there was a "conflict of interest since the complainant provides banking services to the arbitrator." Additionally, the Respondent requested to have a panelist appointed from neither Canada, USA nor Tanzania, in order to ensure a fair and impartial hearing. For the reasons set forth below, the Panel overrules Respondent's objections.
B. Factual Background Relevant to This Preliminary Decision
The complainant is based in Canada. The respondent, Xross, gives a postal address in Canada, and states that its business is registered in the country of Tanzania. The domain name Registrar is Network Solutions, Inc., which is based in the USA.
C. Parties' Contentions
Respondent objects to the jurisdiction of eResolution due to the fact that eResolution has an account with Royal Bank to which bank transfers can be sent for purposes of paying arbitration fees. Additionally, in correspondence accompanying the response, Respondent requested to have a panelist appointed from neither Canada, USA nor Tanzania, in order to ensure a fair and impartial hearing.
Respondent's objection to the jurisdiction of eResolution is overruled. EResolution is the dispute-resolution service provider approved by ICANN to which the complaint was submitted. However, eResolution is simply an administrative entity and has no role in deciding the domain name dispute, so it is immaterial whether or not eResolution has an account with Royal Bank. Section 7 the Policy requires that the Panelist shall be impartial and independent, and shall disclose any circumstances giving rise to justifiable doubt as the the Panelist's impartiality or independence. As set forth in the Declaration of Independence and Impartiality, signed April 3, 2000, this Panel has no connection with either party nor the Registrar, and knows of no circumstances that would impede its rendering an impartial and independent judgment in this dispute.
As to Respondent's request for a panelist from neither Canada, USA nor Tanzania, eResolution attempted to appoint a panelist from Israel, who did not respond. To avoid additional delay, eResolution then contacted a panelist in the USA. Seeing no specific reason why an American panelist cannot hear this matter, and reaffirming the Panel's independence and impartiality, Respondent's request is denied.
III. DECISION DENYING TRANSFER OF THE DOMAIN NAME
A. Factual Background
1. The Complainant's Business and Use of "RBC Insurance"
Complainant Royal Bank of Canada owns a family of trademarks composed of "RBC" for use in association with "insurance services" and "services of underwriter," namely the trademarks RBC, RBC INSURANCE, RBC LIFE AND RBC VIE. The trademark RBC has been used in Canada in association with "services of underwriter" since 1990 and is registered under Canadian Registration No. 369,496, a copy of which is attached to the complaint as Schedule 1. The trademark RBC also has been used in Canada in association with "insurance services" since 1993, and is registered under Canadian Registration No. 424,800, which also is attached to the complaint as Schedule 2. The trademark RBC INSURANCE has been used in Canada in association with "insurance services" since 1994, and is the subject of pending Canadian Application No. 1,005,130, which is attached to the complaint as Schedule 3. The trademarks RBC LIFE and RBC VIE have been used in Canada in association with "insurance services" since 1997, and are registered under Canadian Registration No. 500,179, which is attached to the complaint as Schedule 4.
Information concerning RBC Insurance products and services may be found on the web site of Royal Bank of Canada at www.royalbank.com/rbcinsurance (see Schedules 5 to 12 attached to the complaint.) Schedule 6, entitled "About us," gives the following brief description:
As the insurance specialists of Royal Bank Financial Group, RBC Insurance provides a complete range of insurance solutions to more than two million customers across Canada.
We can meet your needs in all these areas: Home and Auto, Life and Health, Travel, Creditor and Reinsurance.
2. The Respondent's Business and Use of rbcinsurance.com
Throughout its initial Response, Respondent frequently referred to "the current domain name user," Rahim Bismillah Crop Insurance, or RB Crop Insurance. The acronym "rbc" in the domain name stands for Rahim Bismillah Crop Insurance. In its sur-rebuttal, Respondent clarified the relationship between Respondent Xross and Rahim Bismillah Crop Insurance. Xross is a partner of Rahim Bismillah Crop Insurance in development and maintenance of the web site, as well as registering the domain name. Xross has a non-related business presence in Markham, Ontario, Canada. The substantive expertise relating to the purpose of the web site rests solely with Rahim Bismillah Crop Insurance in Tanzania and Zambia. Unless otherwise identified, as used hereinafter, the term "Respondent" will refer collectively to Xross and Rahim Bismillah Crop Insurance.
Rahim Bismillah Crop Insurance registered to do business in the United Republic of Tanzania on January 7, 2000. (See Attachment #2 to Sur-Rebuttal of the Respondent.) In its Response, Respondent indicated that Rahim Bismillah Crop Insurance had plans to register to offer services in other countries in Africa and the Asian subcontinent. Since that representation, Rahim Bismillah Crop Insurance has incorporated in the Republic of Zambia, on April 18th, 2000. (See Attachment #1 to Sur-Rebuttal of the Respondent.) The current domain name user has used the name RBC Insurance to exhibit its offering of agriculture and crop protection prior to and following its registration of RBC Insurance, both on the web and off.
Respondent registered the domain name "rcbinsurance.com" in November 1998. Respondent states that it posted its first version in February 1999 and that the site has been in constant use since that time. However, Complainant alleges that from December 1998 until at least June 1999, the web site bore only a "coming soon" message. Complainant notes that as of November 1999, Respondent's home page had changed so that the "Welcome to Really Big Crops?" message solicited ideas for development. In December 1999, Respondent states it changed its site to show it was going through restructuring and would not be able to offer its services any longer due to financial reasons, but secured funding in January 2000 and relaunched its site with the same focus. The site provides information about agriculture and crop protection and offers links to related information.
B. Parties' Contentions
Complainant contends that Respondent Xross, the registered owner of the domain name, is not the actual user of the domain name, and that the current domain name user, Rahim Bismillah Crop Insurance, is not a party to this proceeding, and that any use of the domain name by Rahim Bismillah Crop Insurance cannot accrue to the Respondent Xross. Complainant contends that Respondent has never offered any services and/or products related to insurance, that Respondent has never made any bona fide use of RBC INSURANCE, and that Respondent's web site never provided any information about agriculture until after the complaint was filed. Complainant further contends that there is no justification for the Registrant having adopted the domain name rbcinsurance.com, and that Respondent's only intention in registering this domain name can only be to tarnish the trademarks of Royal Bank of Canada. Finally, Complainant submits that Respondent registered the domain name in bad faith either primarily for the prupose of selling or transferring the domain name for valuable consideration in excess of its costs, or to prevent Royal Bank of Canada from using the mark or to tarnish the marks.
Respondent contends that it has and still does offer information about agriculture and crop protection on its website, with reference to specific pages as examples. It states that the parties are not involved in the same business, since Complainant sells insurance services and/or products pertaining to home, life, health, business and travel insurance, but Respondent is involved in agriculture and crop protection. It states that the parties do not do business in the same markets, in that Complainant does business in Canada, and Respondent does business in Africa. Finally, Respondent denies any intent to tarnish the Complainant's trademarks, and states repeatedly that it has never approached Complainant to solicit the sale of the domain name.
C. Discussion and Findings
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) 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; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
The question before this Panel is whether the Complainant has satisfied the requirements of Paragraph 4(a) with respect to these three elements, all of which must be proved by Complainant.
1. Complainant Failed to Prove that Respondent Has No Legitimate Interest in the Domain Name
Complainant alleges that Respondent Xross has no legitimate interest in the domain name, because use by Rahim Bismillah Crop Insurance cannot accrue to Xross, citing SGS Société Générale de Surveillance S.A. v. Inspectorate, Case No. D2000-0025. However, this case clearly is distinguishable from SGS. In SGS, the Panel found that
Everything in this proceeding under the Panel's eyes leads to conclude that Respondent has set up a scheme by creating or using a ghost - the separate department or entity - and by designing and uploading a half naked tombstone, the aim of this scheme being to create a public feeling that SGS is something or somebody different from SGS Société Générale de Surveillance S.A., that is Inspectorate's fierce competitor.
In this case, neither Xross nor Rahim Bismillah Crop Insurance is a competitor with Complainant. Furthermore, as set forth below, there is no evidence that either Xross or Rahim Bismillah Crop Insurance have intended or attempted to disrupt Complainant's business. Moreover, the undisputed evidence is that Rahim Bismillah Crop Insurance partnered with Xross to register, develop and maintain a website, because Rahim Bismillah Crop Insurance's expertise is in agricultural services, not in websites. Consequently, based on the statement that Rahim Bismillah Crop Insurance is in partnership with Xross, the Panel finds that it is appropriate to consider Xross and Rahim Bismillah Crop Insurance collectively as the Respondent in this proceeding.
Respondent cites to several pages of its website to demonstrate that it is using the domain name rbcinsurance.com with respect to agriculture and crop protection, including crop insurance. Those pages, as well as the home page, are attached hereto. In particular, they reflect the following:
http://www.rbcinsurance.com/itmidx1.htm lists "Agri Links" to Crop Insurance Bureau Inc., Wheat Crop Insurance, Rural Finance in FAO, and Agview. These links click through to other cited pages, which provide a short description and the URL for these organizations.
http://www.rcbinsurance.com/itm0006.htm, one of a few "Important Links," gives a brief description and the URL for American Agrisurance.
http://www.rcbinsurance.com/itmidx3.htm lists "Crop Information," and links to pages that give short descriptions and the URL for NewCROP and Agropolis.
Other pages on the website give brief descriptions and URLs for Country Companies Insurance Group and a few groups interested in sustainable development.
Though the website may not have much depth, it does provide information about agricultural development, crop insurance, and crop protection. Furthermore, in accordance with ICANN UDRP Policy 4(c)(iii), Respondent appears to be "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."
Accordingly, the Panel finds that Respondent has demonstrated rights to and a legitimate interest in use of the domain name.
2. Complainant Failed to Prove that the Domain Name has Been Registered and Used in Bad Faith
ICANN UDRP Policy 4(b) sets forth examples of circumstances that shall constitute evidence of bad faith:
B. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 web site 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 web site or location or of a product or service on your web site or location.
In the Complaint, Complainant made only vague allegations that Respondent registered and uses the domain name in bad faith. In its Rebuttal, Complainant alleged that Respondent's "'story' concerning registration and use of the domain name is not serious and credible" because Respondent posted no substantive text on the website until after the Complaint was filed. Complainant also alleges that Respondent acted in bad faith by failing to reply to Complainant's numerous offers to purchase the domain name for $500, citing Ingersoll-Rand Co. v. Frank Gully, d/b/a Advocomrem, Case No. D2000-0021.
It is Complainant's burden to prove that Respondent has acted in bad faith. This Panel finds no evidence to support Complainant's allegations.
Complainant posits that Respondent acted in bad faith because it did not post substantive text on its website until after the complaint was filed. However, Respondent has offered a plausible explanation for its delay, which has not been countered with evidence by the Complainant. Respondent states that in December 1999, it "changed its site to show it was going through restructuring and would not be able to offer its services any longer due to financial reasons." Respondent sought financial backing, and secured funding in January 2000. Rahim Bismillah Crop Insurance produced a Tanzanian business registration dated January 7, 2000, which appears to be consistent with the timing of its funding, and is prior to the filing of this Complaint on February 24, 2000. After receiving funding, Respondent re-launched its website.
This Panel is not compelled to find bad faith solely on the basis that Respondent failed to reply to Complainant's offer to purchase the domain name in issue for $500.
Again, this case is distinguishable from the precedent cited by Complainant. In Ingersoll-Rand, the Panel drew inferences against the Respondent because the Respondent failed to participate in the proceeding. The evidence showed that Respondent had no legitimate reason to choose the domain names, that Respondent's only use of the domain names was to link Internet users to pornographic websites, and that Respondent ceased using the domain names entirely when contacted by the Complainant, yet failed to respond to Complainant's offer to purchase the domain names at Respondent's out -of-pocket costs. The Panel found that Respondent's resultant "inaction" constituted bad faith use. The Panel ultimately determined "that respondent's attempts to sell the domain name for consideration in excess of his investment of time and money relative to the domain name constitutes "use" of the domain name in bad faith."
In the present dispute, there is evidence that Respondent had a plausible justification for choosing "rbcinsurance," and is using the domain name for a legitimate purpose. Without evidence to the contrary, the Panel must accept as true Respondent's sworn intentions of -- and, indeed, actions toward -- developing a website that serves as a resource for information on agricultural crop protection. It therefore is understandable that Respondent did not reply to Complainant's offers to buy the domain name for $500. Respondent also strongly and repeatedly denies ever approaching Complainant to solicit the sale of the domain name, and Complainant has not countered that fact. This case therefore is distinguishable from Ingersoll-Rand in that this Respondent is using the domain name for a legitimate purpose and has not attempted to sell the domain name.
Complainant has not attempted to prove any other elements of ICANN UDRP Policy 4(b).
The Panel therefore finds that there is no evidence that the domain name has been registered or used in bad faith.
Complainant has not satisfied all the requirements of Paragraph 4(a) of the Policy. Accordingly, Complainant's request to transfer rbcinsurance.com is hereby denied.
May 19, 2000
McLean, Virginia, USA
(s) Sandra A. Sellers
1. This matter must be decided on the documents and statements made in this proceeding, which does not permit discovery to challenge the parties' assertions. As noted in other UDRP decisions, see, e.g., Eauto v. Triple S. Auto Parts d/v/a/King Fu Yea Enterprises, Inc., WIPO Case No. D2000-00047, the lack of discovery and live testimony in UDRP proceedings makes it difficult to make credibility determinations. A court proceeding may be a more appropriate choice of forum for the complainant where bad faith cannot be clearly shown on the demonstrable facts in the record.