TD Ameritrade IP Company, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1905001841598
Complainant is TD Ameritrade IP Company, Inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, United States. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ameritrage.com> and <tdameritade.com>, registered with Media Elite Holdings Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2019; the Forum received payment on May 2, 2019.
On May 6, 2019, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <ameritrage.com> and <tdameritade.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ameritrage.com, postmaster@tdameritade.com. Also on May 6, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it provides investing and trading services for more than 11 million client accounts that total more than $1.1 trillion in assets, and custodial services for over 6,000 independent registered investment advisors. Complainant has the rights in the AMERITRADE and TD AMERITRADE marks through their registration in the USA in, respectively, 1997 and 2010; it has common law rights in the TD AMERITRADE mark dating back to 2006.
Complainant alleges that the disputed domain names are confusingly similar to its marks as the disputed domain names are common, minor misspellings of the marks and only differ from the marks by a single character.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names as Complainant has no business relationship with Respondent and Complainant has not licensed or otherwise permitted Respondent to use Complainant’s marks. Respondent is not commonly known by the disputed domain names and no valid WHOIS information is available for the names. Respondent has made no use of the domain names other than to use them to misdirect consumers to Complainant’s competitors for Respondent’s personal gain. Specifically the <tdameritade.com> domain name re-directs to the <ameritrage.com> domain name. The existence of a re-direct between the disputed domain names establishes that they are controlled by a single entity. The <ameritrage.com> domain name resolves to a web page comprised of hyperlinks to goods and services competitive with those of Complainant.
Further, says Complainant, Respondent registered and is using the disputed domain names in bad faith by using the confusingly similar domain names to create confusion among Internet users thereby disrupting Complainant’s business. Additionally, Respondent uses the confusingly similar domain names to attract Internet users and commercially gain by displaying links to third-party websites or services competitive to Complainant. Lastly, Respondent knew of Complainant and its well-known TD AMERITRADE and AMERITRADE marks at the time it registered the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark AMERITRADE dating back to 1997.
The disputed domain names were registered in 2004 and 2005.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that contains links to products and services that compete with those of Complainant. No valid WHOIS information is available for the disputed domain names
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain names were registered before Complainant acquired rights in its TD AMERITRADE mark, because Complainant claims that its common law rights date back to 2006, whereas the disputed domain names were registered in 2004 and 2005. Consequently, the Panel will consider only Complainant’s rights in the AMERTRADE mark, which date back to 1997. See SPB Software House v. SPB Online Servs., Ltd., FA 1067638 (Forum Oct. 17, 2007) (“When a domain name is registered before a trademark right is established, the registration of the domain name is not in bad faith under Policy ¶ 4(a)(iii) because the registrant could not have contemplated the complainant’s non-existent right.”).
The disputed domain names are confusingly similar to Complainant’s AMERITRADE mark as they contain minor misspellings of the mark and, for one domain name, the addition of the two letters “TD”. Panels have consistently found that the addition of letters fails to sufficiently distinguish a domain name from a registered mark. See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”); see also Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc , D2003-0317 (WIPO July 14, 2003) (“a mere addition or a minor misspelling of Complainant's trademark does not create a new or different mark in which Respondent has legitimate rights”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise permitted Respondent to use its mark. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson,FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS of record is incomplete and Respondent is “Domain Administrator / Fundacion Privacy Services LTD”. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The disputed domain names resolve to a website hosting various sponsored links with titles that relate to Complainant’s business. Panels have held that using another’s mark to resolve to a website displaying commercial links, particularly links in competition with a Complainant’s business, is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). Accordingly, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Moreover, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the disputed domain names resolve to a website that displays click-through advertising to competing products and services. This disrupts Complainant’s business and creates confusion likely to attract Internet users for commercial gain. Use of a confusingly similar domain name to display links to a complainant’s competitors can demonstrate bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith per Policy ¶ 4(b)(iii) and/or (iv).
Further, correct contact information for the disputed domain names is not available. Such behavior can be evidence of bad faith per Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Accordingly, the Panel finds that Respondent’s failure to submit accurate WHOIS information is sufficient to find bad faith registration and use per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <ameritrage.com> and <tdameritade.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 30, 2019
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