I try to monitor UDRP filings involving domain names that appear to be generic terms. The Royal Bank of Canada (RBC) filed a UDRP against the InvestEase.com domain name, and the UDRP caught my eye because the “invest ease” term seems pretty generic to my eyes. Cherise Valles, the sole panelist on this WIPO UDRP (Case No. D2019-2803) ruled in favor of the complainant, and I think this was the right decision.
The InvestEase.com domain name has a registration date of June 30, 2006. This is much earlier than the registration December 5, 2018 date for RBC’s trademarks for INVESTEASE and RBC INVESTEASE. In looking at that alone, it would seem like the domain registrant should win the dispute. Obviously, the devil is in the details, and that is why I think the decision in favor of RBC is correct.
According to the decision, RBC launched a beta version of its platform on November 15, 2017. The registrant reportedly acquired the domain name on November 15, 2017. The domain name was then used by the registrant as a forwarder to its own financial and investment industry website. According to DomainTools, the domain name had previously been registered to BuyDomains. I do not see a sale price for InvestEase.com in NameBio.com, but my guess is a low four figure price was paid to buy it.
I think it was pretty easy for the panelist to rule that the domain name was identical or confusingly similar to the complainant’s trademark. The panelist then decided to look at the second element (rights and legitimate interest in the domain name) in conjunction with the third element (registration and use in bad faith) to determine whether the respondent would keep the domain name. This excerpt from the decision is what made me agree with the panelist in the UDRP:
“The Panel notes that the Respondent acquired the disputed domain on November 15, 2017. On November 14, 2017, “The Globe & Mail”, Canada’s leading business newspaper, published an article stating that “RBC to launch a robo-advisor business” and “the platform RBC InvestEase, is a new and separate business for Canada’s largest bank” (Annex 10 of the Complaint). Moreover, on November 15, 2017, an article in “Wealth Professionals Canada” referred to the launch of RBC’s dedicated robo-advisor service called “RBC Investease”, and stated that earlier that year the National Bank of Canada invested in robo-advisor “Nest Wealth” (Annex 9 of the Complaint, first article). The Respondent, Randy Cass, is the CEO and founder of “Nest Wealth”. Given the fact that professionals would stay fully abreast of all developments in their industry, especially if an article makes reference to their own company, it is more than likely that Mr. Cass was aware of the launch of the “RBC InvestEase” platform, either the day before or on the same day, he acquired the disputed domain name.”
I can’t imagine that it was a complete coincidence that the domain name was acquired right around the time RBC’s platform was getting press coverage. That would indicate the registrant bought the name because of the complainant. Had the domain name been bought much prior to the publicity, I would have said the respondent should win the UDRP because the domain name seems pretty generic.
With all that being said, I think RBC should have bought the domain name from BuyDomains prior to launching their product when it was available for sale. This would have saved everyone money, time, and trouble. A large financial services company like RBC should have a solid domain name acquisition strategy in conjunction with product development.
Looks like the .ca owner is going to get the same headache.
investease.com sold for $2,188 looks like a buys type number, they probably hit the quick bin on that
This story actually has deeper roots:
Furthermore, the bank signed a licensing agreement with Nest Wealth for its white label platform, Nest Wealth Pro, which will give advisors with the bank’s brokerage arm, National Bank Financial Ltd., access to the technology.
Is that quote from this article:
I did not see that.
It’s towards the bottom, so looks like the CEO of that company bought it as to protect themselves from competition more so, so if they were granted the mark, your assessment is right. It’s a bit of a complicated issue as this is not some guy who caught a new clip, and went and BIN’d a domain, this is the CEO of a competing enterprise, of a decent sized company.
“In addition, Montreal-based National Bank of Canada jumped into the robo-advice market this past April through with its acquisition of a minority stake in Toronto-based Nest Wealth Asset Management Inc. for $6 million.
Furthermore, the bank signed a licensing agreement with Nest Wealth for its white label platform, Nest Wealth Pro, which will give investment advisors with the bank’s brokerage arm, National Bank Financial Ltd., access to the technology. As well, National Bank can use Nest Wealth Pro to add a digital onboarding capability to InvestCube, which is similar to the backend of a robo-advisor in that it automates asset-allocation and rebalancing.”