THE TORONTO-DOMINION BANK v. Changchen / chang chen / cang gao / chen hua / zhang yuan / wan shen / zheng hen
Claim Number: FA1201001426699
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Changchen / chang chen / cang gao / chen hua / zhang yuan / wan shen / zheng hen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <easyweb42x-tdcanadatrust.com>, <easyweb42y-tdcanadatrust.com>, <easyweb43x-tdcanadatrust.com>, <easyweb43y-tdcanadatrust.com>, <easyweb44x-tdcanadatrust.com>, <easyweb44y-tdcanadatrust.com>, <easyweb45x-td.com>, <easyweb45y-td.com>, <easyweb46x-td.com>, <easyweb46y-td.com>, <easyweb47x-td.com>, <easyweb47y-td.com>, <easyweb48x-td.com>, <easyweb48y-td.com>, <easyweb49x-td.com>, <easyweb49y-td.com>, <easyweb50x-td.com>, <easyweb50y-td.com>, <easyweb51x-td.com>, <easyweb51y-td.com>, <easyweb52x-td.com>, <easyweb52y-td.com>, <easyweb53x-td.com>, <easyweb53y-td.com>, and <easyweb54x-td.com>, registered with Xin Net Technology Corporation.
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.
Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 26, 2012; the National Arbitration Forum received payment on January 26, 2012. The Complaint was submitted in both Chinese and English.
On January 30, 2012, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <easyweb42x-tdcanadatrust.com>, <easyweb42y-tdcanadatrust.com>, <easyweb43x-tdcanadatrust.com>, <easyweb43y-tdcanadatrust.com>, <easyweb44x-tdcanadatrust.com>, <easyweb44y-tdcanadatrust.com>, <easyweb45x-td.com>, <easyweb45y-td.com>, <easyweb46x-td.com>, <easyweb46y-td.com>, <easyweb47x-td.com>, <easyweb47y-td.com>, <easyweb48x-td.com>, <easyweb48y-td.com>, <easyweb49x-td.com>, <easyweb49y-td.com>, <easyweb50x-td.com>, <easyweb50y-td.com>, <easyweb51x-td.com>, <easyweb51y-td.com>, <easyweb52x-td.com>, <easyweb52y-td.com>, <easyweb53x-td.com>, <easyweb53y-td.com>, and <easyweb54x-td.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 February 15, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 6, 2012 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@easyweb42x-tdcanadatrust.com, postmaster@easyweb42y-tdcanadatrust.com, postmaster@easyweb43x-tdcanadatrust.com, postmaster@easyweb43y-tdcanadatrust.com, postmaster@easyweb44x-tdcanadatrust.com, postmaster@easyweb44y-tdcanadatrust.com, postmaster@easyweb45x-td.com, postmaster@easyweb45y-td.com, postmaster@easyweb46x-td.com, postmaster@easyweb46y-td.com, postmaster@easyweb47x-td.com, postmaster@easyweb47y-td.com, postmaster@easyweb48x-td.com, postmaster@easyweb48y-td.com, postmaster@easyweb49x-td.com, postmaster@easyweb49y-td.com, postmaster@easyweb50x-td.com, postmaster@easyweb50y-td.com, postmaster@easyweb51x-td.com, postmaster@easyweb51y-td.com, postmaster@easyweb52x-td.com, postmaster@easyweb52y-td.com, postmaster@easyweb53x-td.com, postmaster@easyweb53y-td.com, and postmaster@easyweb54x-td.com. Also on February 15, 2012, the Chinese language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is second largest bank in Canada by market capitalization and deposits and the sixth largest bank in North America. Complainant argues that it is commonly known as TD and operates as TD Bank Group. Complainant asserts that it owns trademark registrations for the EASYWEB mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA493,469 registered Apr. 22, 1998).
Complainant contends that it has registered the TD mark with the United States Patent and Trademark Office (“USPTO”) and CIPO:
USPTO
Reg. No. 1,649,009 registered June 25, 1991;
Reg. No. 3,037,995 registered January 3, 2006;
Reg. No. 3,041,792 registered January 10, 2006; &
CIPO
Reg. No. TMA644,911 registered July 26, 2005.
Complainant alleges that it has registered its CANADA TRUST mark with CIPO:
Reg. No. TMA409,300 registered March 12, 1993 &
Reg. No. TMA447,666 registered September 15, 1995.
Complainant alleges that Respondent’s disputed domain names, all registered in May 2011 or after, are confusingly similar to Complainant’s EASYWEB, TD, and CANADA TRUST marks because the disputed domain names contain one or more of these marks in its entirety.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names and complainant has shown bad faith registration and use because the disputed domain names do not currently resolve to an active website.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
(4) 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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that all six named registrants for the disputed domain names are aliases registered to one single entity. In support of its assertion, Complainant alleges that all the disputed domain names were registered in clumps from May 24, 2011 to August 18, 2011, and all of them are registered at Xin Net Technology Corporation. Complainant argues that all the disputed domain names use only two sets of hosting DNS and all the disputed domain names cease to resolve to an active website. Complainant also contends that after grouping the disputed domain names by registration date, there are several sets of apparent commonalities. Complainant asserts that the domain names registered prior to July 5, 2011 target two of Complainant’s brands, “easyweb” and “tdcanadatrust,” and contain numbers that are sequenced (i.e., 42x, 42y, 43x, 43y, etc.), as well as sharing the same DNS entries and being registered with the same registrar, despite having two different registrants. Complainant further contends that the disputed domain names registered after July 5, 2011, also share data that indicates one registrant despite different registrant names. All of them contain two of Complainant’s brands, “easyweb” and “td,” again including sequenced numbers and having the same registrar and DNS entries.
Complainant also notes that all of the e-mail addresses listed in the WHOIS information for the disputed domain names end in either @126.com or @263.com, another commonality. Complainant asserts that a number of the identified registrants in this matter have previously been implicated in phishing schemes. Complainant thus argues that although the WHOIS information appears to indicate six different registrants and Respondent attempts to use randomization to avoid detection, all of the disputed domain names are actually controlled by the same entity, Respondent, as evidenced by the coordinated activity, the obvious similarity of the domain name compositions, the common registrar and registration dates, the common DNS entries, the potential involvement of phishing schemes, and the similarities in e-mail addresses.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and the Panel will proceed with the instant proceedings.
Complainant alleges that it has rights in the EASYWEB, TD, and CANADA TRUST marks. Complainant asserts that it has registered the EASYWEB mark with CIPO (Reg. No. TMA493,469 registered Apr. 22, 1998). Complainant contends that it has registered the TD mark with the USPTO and CIPO:
USPTO
Reg. No. 1,649,009 registered June 25, 1991;
Reg. No. 3,037,995 registered January 3, 2006;
Reg. No. 3,041,792 registered January 10, 2006; &
CIPO
Reg. No. TMA644,911 registered July 26, 2005.
Complainant alleges that it has registered its CANADA TRUST mark with CIPO:
Reg. No. TMA409,300 registered March 12, 1993 &
Reg. No. TMA447,666 registered September 15, 1995.
The Panel finds that trademark registrations with the USPTO and CIPO have long been held to conclusively prove a complainant’s rights in a mark pursuant to Policy ¶ 4(a)(i). See Dollar Fin. Grp., Inc. v. Bankshire Corp., FA 1013689 (Nat. Arb. Forum July 30, 2007) (“Complainant has established rights in the MONEY MART mark under Policy ¶ 4(a)(i) through registration of the mark with both the USPTO and CIPO.”); see also Lockheed Martin Corp. v. Above.com Domain Privacy, FA 1414145 (Nat. Arb. Forum Dec. 8, 2011) (determining that trademark registrations with the USPTO and CIPO “are sufficient for Complainant to establish rights in its mark under Policy ¶ 4(a)(i)”). The Panel therefore concludes that Complainant has proven that it owns rights in the EASYWEB, TD, and CANADA TRUST marks for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s EASYWEB mark because the disputed domain names contain the entirety of Complainant’s EASYWEB mark, along with one of more of Complainant’s other marks, TD and/or CANADA TRUST, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that, in addition to Complainant’s marks, the disputed domain names contain a hyphen, two numerals, and either the added letter “x” or “y.” The Panel determines that combining two or more of Complainant’s marks in the disputed domain names fails to alleviate confusing similarity. See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). Adding numerals or letters to a complainant’s mark in a disputed domain name does not distinguish the disputed domain name from the mark. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks”). Previous panels have also determined that added hyphens and gTLDs are irrelevant to a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s EASYWEB mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has not been commonly known by the disputed domain names. Complainant alleges that the WHOIS information for the disputed domain names supports this argument and refers the Panel to the WHOIS record, which the Panel finds identifies the registrant as “Changchen / chang chen / cang gao / chen hua / zhang yuan / wan shen / zheng hen.” The Panel concludes that the WHOIS information suggests no nominal relationship between Respondent and the disputed domain names. Complainant also contends that Respondent is not sponsored by or affiliated with Complainant and has not received permission from Complainant to use the marks in any way. Based on these arguments, the Panel holds that Respondent is not commonly known by the disputed domain names according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent has failed to make an active use of any of the disputed domain names. The Panel finds that without actively using the disputed domain names, Respondent has failed to show a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges that Respondent has not used the disputed domain names for any active purpose as the disputed domain names do not resolve to an active website. Complainant asserts and the Panel finds that this failure to actively use the disputed domain names reveals bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant also contends that Respondent, at the time it registered the disputed domain names, either knew or should have known about the existence of Complainant’s trademarks because Complainant and its TD brand are known internationally. Complainant alleges that due to the length of time in which Complainant has used its marks to market its services, it is inconceivable that Respondent would have been unaware of Complainant’s rights in the mark. Although past panels have found that constructive knowledge is generally insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual knowledge of Complainant’s mark and determine that Respondent therefore registered the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <easyweb42x-tdcanadatrust.com>, <easyweb42y-tdcanadatrust.com>, <easyweb43x-tdcanadatrust.com>, <easyweb43y-tdcanadatrust.com>, <easyweb44x-tdcanadatrust.com>, <easyweb44y-tdcanadatrust.com>, <easyweb45x-td.com>, <easyweb45y-td.com>, <easyweb46x-td.com>, <easyweb46y-td.com>, <easyweb47x-td.com>, <easyweb47y-td.com>, <easyweb48x-td.com>, <easyweb48y-td.com>, <easyweb49x-td.com>, <easyweb49y-td.com>, <easyweb50x-td.com>, <easyweb50y-td.com>, <easyweb51x-td.com>, <easyweb51y-td.com>, <easyweb52x-td.com>, <easyweb52y-td.com>, <easyweb53x-td.com>, <easyweb53y-td.com>, and <easyweb54x-td.com> domain names be TRANSFERRED from Respondent to Complainant.
Karl V. Fink, Panelist
Dated: March 19, 2012
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