The Toronto-Dominion Bank v. Isaac Faber
Claim Number: FA1205001442971
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Isaac Faber (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdank.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2012; the National Arbitration Forum received payment on May 8, 2012.
On May 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tdank.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 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@tdank.com. Also on May 9, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tdank.com> domain name is confusingly similar to Complainant’s TD BANK mark.
2. Respondent does not have any rights or legitimate interests in the <tdank.com> domain name.
3. Respondent registered or used the <tdank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in the TD BANK mark, which it uses in connection with banking, financial, credit card, and other goods and services;
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(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.”).
Complainant asserts that it has rights in the TD BANK mark. Complainant contends that the TD BANK mark is used in connection with banking, financial, credit card goods and services, and more. Complainant provides the Panel with evidence of its trademark registrations for the TD BANK mark (e.g., Reg. No. TMA549396 registered August 7, 2001) with CIPO. Panels have found that, regardless of the location of the parties, the registration of a mark with a trademark authority is sufficient evidence of rights in a mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the TD BANK mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <tdank.com> domain name is confusingly similar to the TD BANK mark. Complainant asserts that Respondent simply took Complainant’s mark, deleted one letter and the space between the terms, and added a generic top-level domain (“gTLD”). The Panel finds that Respondent’s deletion of the letter “b” in the TD BANK mark fails to make the <tdank.com> domain name distinct from the TD BANK mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel also finds that Respondent’s deletion of the space in the TD MARK and the addition of the gTLD “.com” are irrelevant to the determination of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <tdank.com> domain name is confusingly similar to the TD BANK mark under Policy ¶ 4(a)(i).
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 is not commonly known by the disputed domain name. Complainant contends that Respondent is not sponsored by, or affiliated with, Complainant in any way and that Respondent has not been given permission to use the TD BANK mark in a domain name. Additionally, Complainant demonstrates that the WHOIS record for the <tdank.com> domain name lists “Isaac Faber” as the domain name registrant. The Panel therefore finds that Respondent is not commonly known by the <tdank.com> domain name under 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 of that it is commonly known by the disputed domain name).
Complainant further argues that Respondent is not using the <tdank.com> domain name in a way that provides Respondent with rights or legitimate interests in the disputed domain name. Complainant claims, and provides evidence to support, that the <tdank.com> domain name resolves to a website that displays links to competing third-party websites under headings such as “Credit Card Payment Online” and “Online Banking Account.” Panels have found that Policy ¶¶ 4(c)(i) and 4(c)(iii) do not protect the use of a domain name which is operated to promote, via links, competing third-party websites. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the <tdank.com> domain name because it is using the <tdank.com> domain name for neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant alleges that Respondent is attempting to commercially gain from increasing traffic to the <tdank.com> domain name by creating confusion as to the source of the disputed domain name. Complainant contends that the <tdank.com> domain name resolves to a website displaying links such as “Citibank® Checking” and “Online Banking Account,” which send Internet users to third-party websites which directly compete with Complainant’s business. Complainant alleges that Respondent is compensated by the display of these links. Therefore, the Panel finds that Respondent registered and is using the <tdank.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) as the Panel finds that Respondent is attempting to confuse Internet users regarding the source of the <tdank.com> domain name so as to attract them to the disputed domain name with the intent of commercially gaining from their mistakes made as a result of this confusion. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant argues that Respondent has engaged in typosquatting and that this demonstrates Respondent’s bad faith. Complainant argues that the changes from Complainant’s mark that Respondent makes in the <tdank.com> domain name are limited to the deletion of a space and one letter and the addition of a gTLD, the first and last of which are required of all domain names. Panels have found that typosquatting demonstrates bad faith on the part of a respondent. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Respondent’s bad faith registration and use of the <tdank.com> domain name is evidenced by Respondent engaging in typosquatting of the <tdank.com> domain name pursuant to 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 <tdank.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 13, 2012
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