WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Bank of Canada v. Hattingh United Trade Group Paul Hattingh
Case No. D2001-0938
1. The Parties
Complainant is Royal Bank of Canada, a Canadian chartered bank, constituted under the laws of Canada, having its principal place of business at 1 Place Ville-Marie, Montreal, Quebec, Canada, H3C 3A9. Complainant is represented in this administrative proceeding by Ms. Danièle Boutet of Ogilvy Renault, 1981 McGill College Avenue, Suite 1100, Montreal, Quebec, Canada, H3A 3C1.
Respondent is Hattingh United Trade Group Paul Hattingh, 122 e42 streer [sic], New York, NY 10017, USA.
2. The Domain Name and Registrar
The Domain Name the subject of this Complaint is <royalbankcanada.org>.
The Registrar of the Domain Name is Register.com, Inc.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Name was received by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") by email on July 20, 2001, and in hard copy on July 23, 2001. Complainant states that a copy of the Complaint was sent on July 20, 2001, to Respondent by courier. A copy was sent by courier to the Registrar, Register.com Inc., on the same date.
3.2. On July 30, 2001, verification was received from the Legal Assistant, Register.com, Inc., that the disputed Domain Name <royalbankcanada.org> is registered in the Organization and Administrative Contact names of Hattingh United Trade Group Paul Hattingh, 122 e42 streer, New York, NY 10017, USA. The address was presumed to contain typographical errors and surface communications were addressed to 122 e42 Street. The Technical Contact and Zone Contact is Concentric Network Corporation, Hostmaster Hostmaster, 1400 Parkmoor Avenue, San Jose, CA 95126-3429, USA. The Uniform Domain Name Dispute Resolution Policy is applicable to the disputed Domain Name.
3.3. WIPO Center determined (and the Administrative Panel has accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") all as approved by the Internet Corporation for Assigned Names and Numbers ("ICANN").
3.4. On August 7, 2001, Formal Notification of Complaint and Commencement of Administrative Proceeding (with enclosures) was sent by WIPO Center by post/courier to Respondent (Domain Name Registrant, Administrative Contact; Technical Contact and Billing Contact). Email copies without enclosures were sent to Respondent and above Contacts, copied to Complainant, ICANN and Register.com, Inc.
3.5. No Response was received from Respondent by the due date of August 27, 2001, and a Notification of Respondent Default was sent to the Parties on August 28, 2001.
3.6. On September 5, 2001, Dr. Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and Notification of Panelist Appointment was sent by email to Complainant, Respondent and the Administrative Panel. An electronic copy of the Case File was sent by email to the Administrative Panel on September 5, 2001, and the hardcopy of the Case File was sent by courier.
4. Factual Background
4.1. Royal Bank of Canada is a world-famous bank founded in 1869.
4.2. The trademark name ROYAL BANK OF CANADA is registered for use in association with banking or financial services in twenty-four countries: Argentina, Australia, Barbados, Canada, Cayman Islands, Colombia, Germany, Guernsey, Hong Kong, Ireland, Japan, Jersey, Korea, Malaysia, Mexico, New Zealand, Puerto Rico, Sabah, Sarawak, Singapore, Spain, Switzerland, United States and United Kingdom.
4.3. Complainant operates the Domain Name and website <royalbank.com>.
4.4. Respondent is the Registrant of the disputed Domain Name <royalbankcanada.org>, which has a record created date of October 30, 2000.
4.5. The disputed Domain Name does not lead to any active website.
5. Parties Contentions
A. Contentions of Complainant
5.1. The contentions of Complainant include (paragraphs 5.2-5.6 below) that:
5.2. The dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Policy by reference.
5.3. The disputed Domain Name is confusingly similar to the trademark in which Complainant has rights.
5.4. Respondent has no rights or legitimate interest in the disputed Domain Name. Respondent is attempting to indicate that the disputed Domain Name is affiliated with Complainant. Respondent has never used the domain name <royalbankcanada.org> in connection with any bona fide offering of goods or services. Respondent has never been commonly known by the disputed Domain Name nor has it made any legitimate non-commercial or fair use of the Domain Name.
5.5. Respondent has registered and used the disputed Domain Name in bad faith. Respondent intentionally selected the disputed Domain Name in the expectation that deception and confusion with Complainant's trademark ROYAL BANK OF CANADA would occur and deception and confusion have occurred. Respondent registered the Domain Name primarily for the purpose of disrupting the Complainant's business and such disruption has happened.
5.6. The remedy requested by Complainant is that the disputed Domain Name <royalbankcanada.org> be transferred to Complainant.
B. Contentions of Respondent
5.7. No Response has been received from Respondent.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. Paragraph 4(a) of the Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Domain Name Dispute Policy and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.3. The Domain Name subject to this Complaint is <royalbankcanada.org>. The Administrative Panel finds that the disputed Domain Name is confusingly similar to the trademark ROYAL BANK OF CANADA in which Complainant has rights in terms of Paragraph 4(a)(i) of the Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.4. Complainant has proved that it is the proprietor of the trademark ROYAL BANK OF CANADA in twenty-four countries world-wide and certifies that Respondent has never acquired any rights or legitimate interests in the trademark.
6.5. Respondent has not responded with any claim to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services in terms of Paragraph 4(c)(i) of the Policy.
6.6. There is no evidence that Respondent as an individual, business, or other organization has been commonly known by the Domain Name in terms of Paragraph 4(c)(ii) of the Policy.
6.7. Respondent is not making a legitimate noncommercial or fair use of the Domain Name in terms of Paragraph 4(c)(iii) of the Policy.
6.8. The Administrative Panel finds that Respondent has no rights or legitimate interests in the disputed Domain Name in terms of Paragraph 4(a)(ii) of the Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.9. Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b), whilst without limitation, provides in clause (iii) for a finding of bad faith where "you have registered the domain name primarily for the purpose of disrupting the business of a competitor", or in clause (iv) where "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location".
6.10. On the evidence the use made of the disputed Domain Name by Respondent has been to set up the corresponding electronic mail location <@royalbankcanada.org>, enabling the creation of additional purported signatures, for instance <firstname.lastname@example.org>. Evidence was produced to the effect that a person in Holland received an email from <email@example.com>. The email concerned a purported transfer of a substantial sum of money, namely $19.5 million (US dollars) from a Nigerian bank to the credit of the recipient of the email. The recipient had no expectation or knowledge of the transaction and sought verification from Complainant, the Royal Bank of Canada. Complainant discovered that its trademark had been used in the email address without authorization thereby causing confusion and states that the purported transaction was fraudulent and part of a scam. Such activity by a competitor in the field of finance was disruptive to the business of Complainant. The Administrative Panel finds bad faith proved in the terms of Paragraph 4(b)(iii) and Paragraph 4(b)(iv) of the Policy.
6.11. In summary, as concluded in 6.3 above the disputed Domain Name is confusingly similar to Complainant's trademark and Complainant succeeds under Paragraph 4(a)(i) of the Policy. As concluded in 6.8 above, Respondent has no rights or legitimate interests in the Domain Name and Complainant succeeds under Paragraph 4(a)(ii) of the Policy. As concluded in 6.10 above, Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under Paragraph 4(a)(iii) of the Policy. The Complainant has proven all three points required by Paragraph 4(a) of the Policy and the Administrative Panel gives its Decision in favor of the Complainant and against the Respondent.
The Decision of the Administrative Panel is that the disputed Domain Name <royalbankcanada.org> is confusingly similar to the trademark ROYAL BANK OF CANADA in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed Domain Name; and that Respondent has registered and is using the disputed Domain Name in bad faith. The Domain Name <royalbankcanada.org> shall be transferred to Complainant.
Dr. Clive N. A. Trotman
Dated: September 18, 2001