Royal Bank of Canada obtains 'rbcalliancebank.com'

International

World Intellectual Property Organization panellist Warwick A Smith has ordered the transfer of 'rbcalliancebank.com' to Royal Bank of Canada (RBC), which owns hundreds of trademarks incorporating the letters 'RBC' in numerous countries as well the domain name 'rbc.com'.

New York-based RBC Alliance Bank (Alliance) is engaged in foreign exchange activities, one of RBC's main online activities. In addition to registering and using the disputed domain name, Alliance included on its website a logo depicting a globe - the same as that used by RBC on its website.

RBC provided evidence that at least one customer had been confused into believing that Alliance was affiliated with RBC and so entrusted money over the Internet to Alliance under this false assumption.

Applying the Uniform Domain Name Dispute Resolution Policy, Smith concluded that:

  • 'rbcalliancebank.com' is confusingly similar to RBC's family of trademarks;

  • Alliance has no rights or legitimate interests in respect of the domain name; and

  • Alliance had registered and was using the domain name in bad faith.

Smith noted that the addition of 'alliance' was not sufficient to distinguish the domain name from the RBC family of marks. Both companies are involved in the same field so internet browsers would surely associate 'rbcalliancebank.com' with the well-known Canadian bank.

Finding that Alliance deliberately sought to trade off the name and reputation of RBC, Smith ordered that the disputed domain name be transferred.

Marion M Bailey, Gowling Lafleur Henderson LLP, Ottawa

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