ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The complainant is Royal Bank of Canada, Montreal, Canada. In its complaint, filed online with eResolution on March 13, 2000, Royal Bank seeks transfer of three domain names registered to D3M Domain Sales. They are: royalbankonline.com; banqueroyaleducanada.com; and royalbankfinancial.com.
2. Procedural History
Following Royal Bank's filing, both online and in hardcopy, all steps set out in the ICANN Rules (Rules for Uniform Domain Name Dispute Resolution Policy, Oct. 24, 1999) and eResolution Supplementary Rules for commencement of an administrative proceeding were followed. (See attached letter from Emmanuelle Létourneau, eResolution clerk, to Peter W. Martin, lead panelist.) In accordance with those rules the complaint was forwarded to the Respondent; but there has been no response, either within the 20 day period set out in the ICANN Rules (paragraph 5) or since.
3. Factual Background
In the absence of a response, the rules provide for a decision based on the complaint. ICANN Rules, paragraph 5(e). There being no response or other basis for doubt about the facts set out in the complaint, they are taken to be true for purposes of this decision.
Royal Bank of Canada, founded over a century ago, does business not only in Canada, but in many other countries around the globe. It does business both under that name, which is registered as a trademark in Canada and twenty-three other countries, and its French equivalent, Banque Royale du Canada. It holds the following additional registered trademarks: ROYAL BANK (7), BANQUE ROYAL (1 - Canada), ROYAL (27), ROYAL BANK FINANCIAL GROUP (1 - Canada). (The figures in parenthesis represent the number of countries in which the respective marks are registered.) Certificates of these trademark registrations were submitted along with the complaint. The Canadian registration of ROYAL BANK OF CANADA recites use of this mark in connection with printed matter since as early as 1901 and use in connection with software since as early as 1982. The Complainant's web site is royalbank.com/.
On receiving the complaint, eResolution verified that the three domain names in question - royalbankonline.com; banqueroyaleducanada.com; royalbankfinancial.com - had been registered with Network Solutions by the Respondent, D3M Domain Sales. These are not the only domain names in Respondent's portfolio, for it has registered such others as: tdbankfinancialgroup.com; tdbankonline.com; scotiabankonline.com; plus unicefcasino.com; oxfamcasino.com; and unitedwaycasino.com. As Complainant points out, the first three evoke trademarks of two other Canadian financial institutions (TD BANK and TD BANK FINANCIAL GROUP registered to The Toronto-Dominion Bank and SCOTIA BANK registered to The Bank of Nova Scotia) and the second three, the names or trademarks of three charities (UNICEF, OXFAM, and UNITED WAY).
Little else is known about the Respondent. The domain name in the e-mail address listed with Network Solutions for D3M Domain Sales's administrative contact leads to a Korean web server
The only evidence of use of any of the contested domain names is in connection with e-mail messages carrying the subject line "BRAVO 25000 DOLLARS U.S." seemingly offering "INSTAPRIZES" via a web site: instalotto.net. At the bottom the messages state: "This message is sponsored by royalbankonline.com". The Complainant reports that these messages prompted numerous questions about its relationship to instalotto.net. No instalotto.net web site is currently accessible, but the domain is on one list of SPAM originators (unresponsive sources or apparent sources of large volumes of unwanted e-mail). The same source (http://perso.magic.fr/roumazeilles/provider.htm) shows "royalebankonline.com" as a recent addition, evidence that a close approximation of this same one of the contested names has, itself, been employed as an apparent source of SPAM.
4. Parties' Contentions
Complainant contends: (a) that all three domain names at issue are either identical to or confusingly similar to trademarks that it holds; (b) that the Respondent has no legitimate interest in those domain names, and (c) that the domain names should be considered as having been registered and used in bad faith. It requests transfer of the names. As previously noted, there is no submission from the Respondent.
5. Discussion and Findings
In accordance with paragraph 14 of the ICANN Rules, in the absence of a response to the Complainant's claims I consider those claims in the light of the unrefuted evidence submitted by the Complainant. If that evidence does not support its contention that the Respondent has registered the disputed domain names under circumstances violating ICANN Policy (Uniform Domain Name Dispute Resolution Policy, Oct. 24, 1999), Complainant is not entitled to relief simply by default. On the other hand, under the Rules I can and do draw evidentiary inferences from the failure to respond. ICANN Rules, paragraph 14(b).
Under ICANN Policy, Complainant must establish three things to secure transfer of a disputed domain name: (a) that the domain name is identical or confusingly similar to a trademark in which it holds rights; (b) that Respondent has no rights or legitimate interests in the name; and (c) that the domain name was registered and used in bad faith. ICANN Policy, paragraph 4(e).
I shall consider those elements in order as to the three domain names at issue in this proceeding.
(a) Are the three domain names identical or confusingly similar to trademarks held by the Complainant?
This domain name is, indeed, identical to the French version of the Complainant's name and registered trademark. Complainant does business in Canada under both English and French versions of its name. Complainant has specifically registered the trademark BANQUE ROYALE and holds and uses the domain name banqueroyale.com.
This domain name is confusingly similar to Complainant's registered trademark ROYAL BANK FINANCIAL GROUP. Simply dropping "group," the last word of the phrase, does not prevent or even diminish confusion. Alternatively, this domain name can be viewed as consisting of Complainant's ROYAL BANK trademark plus the descriptive word "financial." Either way it is confusing similar to a trademark registered and used by the Complainant.
This domain name consists of Complainant's ROYAL BANK trademark with the word "online" appended. As Complainant points out this additional element is merely descriptive of the online environment in which any domain name is used. It does not prevent or even diminish the confusion otherwise arising from use of Complainant's trademark.
In addition to the apparent similarity between royalbankonline.com and Complainant's trademark there is the evidence of actual confusion arising out of the inclusion of that domain name in messages about instalotto.net.
(b) Does the Respondent have a legitimate interest in any of the three domain names?
Since the Respondent has made no submission there is no evidence that it has rights or a legitimate interest in any of the three, closely related domain names. Such rights or legitimate interest would, under the ICANN Policy, include using the domain names in connection with the bona fide offering of goods or services, being known by the domain names, or using them for legitimate non-commercial or fair use of the domain name. ICANN Policy, paragraph 4(c).
(c) Were any or all of these domain names registered and used by the Respondent in bad faith?
The ICANN Policy sets forth several examples of bad faith registration and use, two of them potentially bearing on this case. Evidence of bad faith is established when the Respondent has registered or acquired the domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant at a profit or when the Respondent has used the domain name in an intentional effort to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's trademark. ICANN Policy, paragraph 4(b)(i),(iv)
Absent evidence of any other purpose for registering the three domain names in question, I conclude they were registered and used primarily for sale to the Complainant or a competitor. Further evidence of this purpose (as distinguished from an intent to use the domain names for a permissible purpose, commercial or other) is found in the Respondent's registration of other domain names closely resembling financial industry and charitable trademarks and names. Having no other explanation from the Respondent of the nature of its business, I conclude that it is in the business of acquiring and selling domain names. Its very name intimates as much.
Further, lacking any response from the holder of royalbankonline.com to the Complainant's evidence that that domain name was used in e-mail in which it appeared as the identity of an endorser or sponsor of instalotto.net I must infer that such use occurred with the Respondent's knowledge and consent. That, in my judgment, constituted an attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's trademark.
Given the world-wide reach of the Internet there is ample opportunity for domain name registrants to be unaware of potential confusion likely to arise between the name they are registering and trademarks registered and in use elsewhere. Registrants do, however, represent and warrant that to their knowledge the registration "will not infringe upon or otherwise violate the rights of any third party." ICANN Policy, paragraph 2. Since this registrant lists Montreal, the Complainant's headquarters city, as its address and since it has registered other domain names closely resembling trademarks of other entities I conclude that the Respondent knew that its registration of the three domain names at issue in this proceeding infringed Complainant's rights, further evidence of bad faith.
Since I find as to the domain names in issue that: (a) all three are identical or confusingly similar to trademarks held by the Complainant; (b) the Respondent has demonstrated no legitimate interest in any of them; and (c) Respondent registered and used these names in bad faith, I conclude that the Complainant's request should be granted. I order that those three names - royalbankonline.com; banqueroyaleducanada.com; royalbankfinancial.com - be transferred to the Complainant.
This decision of the Administrative Panel in Case No. AF00147 was rendered on the 1st of May, 2000.
(s) Peter W. Martin