TD Ameritrade IP Company, Inc. v. Zhichao Yang
Claim Number: FA1401001541053
Complainant is TD Ameritrade IP Company, Inc. (“Complainant”), Nebraska, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdamertrade401kplan.com>, <tdameritrade410kplan.com>, and <tdameritradeplan.com>, registered with eName Technology Co., Ltd..
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2014; the National Arbitration Forum received payment on February 7, 2014. The Complaint was submitted in both English and Chinese.
On January 28, 2014, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <tdamertrade401kplan.com>, <tdameritrade410kplan.com>, and <tdameritradeplan.com> domain names are registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the names. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 7, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 27, 2014 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@tdamertrade401kplan.com, postmaster@tdameritrade410kplan.com, and postmaster@tdameritradeplan.com. Also on February 7, 2014, 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 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. 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, concludes 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
1. Complainant owns the TD AMERITRADE mark through its registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,808,580, registered June 22, 2010).
2. Complainant uses the TD AMERITRADE mark to provide investing and trading services.
3. Complainant has made significant investments to advertise and promote its brand, such that it has garnered substantial recognition in the fields of financial and investment services.
4. The disputed domain names <tdamertrade401kplan.com>, <tdameritrade410kplan.com>, and <tdameritradeplan.com> are confusingly similar to Complainant’s TD AMERITRADE mark. The <tdamertrade401kplan.com> domain name incorporates a misspelled version of Complainant’s mark. Similarly, the term “410k” is a misspelling of 401k. Both “410k” and “401k” in the disputed domain names refer to 26 U.S.C. § 401(k), an American tax arrangement. The term “plan” is generic. Complainant’s plan custodian owns the domain name <tdameritrade401kplan.com>, which is intended for Complainant’s employees to access their retirement accounts.
5. Respondent is not commonly known by the disputed domain names as demonstrated by the WHOIS record. Respondent is not affiliated with Complainant in any way, nor has Complainant given Respondent permission to use the TD AMERITRADE mark.
6. Respondent is not using the disputed domain names to provide a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
7. The disputed domain names resolve to a website featuring generic links to third-party websites, some of which are in direct competition with Complainant’s business.
8. Respondent owns registrations on numerous domain names that would be reasonably considered as typosquatting.
9. Respondent’s bad faith is demonstrated by Respondent’s use of the disputed domain names to divert Internet users to a website that offers services that compete with those offered by Complainant.
10. Respondent is misusing the goodwill of Complainant’s TD AMERITRADE mark in an effort to confuse and improperly increase traffic to Respondent’s own site for commercial gain, presumably though click-through fees.
11. Respondent had constructive, if not actual, knowledge of Complainant’s rights in the TD AMERITRADE mark at the time Respondent registered the disputed domain names.
12. Respondent’s typosquatting behavior is evidence of bad faith.
13. Respondent registered the <tdamertrade401kplan.com>, <tdameritrade410kplan.com>, and <tdameritradeplan.com> domain names on November 10, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, TD Ameritrade IP Company, Inc., owns the TD AMERITRADE mark through its registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,808,580, registered June 22, 2010). Complainant uses the TD AMERITRADE mark to provide investing and trading services.
Respondent, Zhichao Yang, registered the <tdamertrade401kplan.com>, <tdameritrade410kplan.com>, and <tdameritradeplan.com> domain names on November 10, 2013. The disputed domain names resolve to a website featuring generic links to third-party websites, some of which are in direct competition with Complainant’s business.
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’s trademark registrations for the TD AMERITRADE mark establish Complainant’s rights in the mark under Policy ¶ 4(a)(i), despite the fact that Respondent resides in China. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The <tdamertrade401kplan.com>, <tdameritrade410kplan.com>, and <tdameritradeplan.com> domain names are confusingly similar to Complainant’s TD AMERITRADE mark under Policy ¶ 4(a)(i). The <tdamertrade401kplan.com> domain name incorporates a misspelled version of Complainant’s mark as the domain name is missing the “i” from the “ameritrade” portion of the mark. In the <tdameritrade410kplan.com> domain name, the term “410k” is a misspelling of the term “401k”. Further, the additions of the terms “401k”, “410k”, and “plan” are generic in nature and strengthen the confusing similarity in relation to Complainant’s employee retirement plan. The disputed domain names also differ from the TD AMERITRADE mark as the domain names eliminate the space between the two word mark and add the generic top-level domain (“gTLD”) “.com”. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005)(the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Metro. Life Ins. Co. v. Ling Shun Shing, FA 0370667 (Nat. Arb. Forum Jan. 4, 2005)(the <metlife401k.com> domain name was confusingly similar to complainant’s METLIFE mark, as the additional term “401k” did not sufficiently distinguish the domain name from the mark); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007)(“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to 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).
Respondent is not commonly known by the <tdamertrade401kplan.com>, <tdameritrade410kplan.com>, and <tdameritradeplan.com> domain names pursuant to Policy ¶ 4(c)(ii). Respondent does not have rights or legitimate interests in the disputed domain names. The WHOIS information identifies “Zhichao Yang” as the registrant of the disputed domain names. Respondent is not affiliated with Complainant in any way, nor has Complainant given Respondent permission to use the TD AMERITRADE mark. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006)(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 domain name).
The disputed domain names resolve to a website featuring generic links to third-party websites, some of which are in direct competition with Complainant’s business. The Panel presumes that Respondent receives pay-per-click fees from the linked websites. A respondent lacks rights and legitimate interests where the respondent is using the disputed domain name in connection with a website promoting links to third-party websites, including sites that compete with the complainant’s business. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respondent’s use of the disputed domain names with a website featuring generic links to third-party websites, some of which are in direct competition with Complainant’s business, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant asserts that Respondent owns registrations on numerous domain names that would be reasonably considered as typosquatting. Complainant points to Respondent’s registrations of <hartfodlife.com>, <libertymutralinsurance.com>, <nordtsromcard.com>, and <paypal-perpaid.com> to support its position. Complainant argues that such registrations are evidence of Respondent’s bad faith. While previous panels have found evidence of a pattern leading to bad faith where the respondent has a history of bad faith as demonstrated by past UDRP decisions adverse to the respondent, panels have generally not found bad faith where a respondent holds domain names that appear to be examples of typosquatting upon the marks of unrelated third-parties that are not directly at issue. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). As such, Respondent has failed to show bad faith pursuant to Policy ¶ 4(b)(ii).
Respondent’s use of the disputed domain names to divert Internet users to a website that offers services that compete with those offered by Complainant in the financial planning and services sector is evidence of bad faith disruption pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent is misusing the goodwill of Complainant’s TD AMERITRADE mark in an effort to confuse and improperly increase traffic to Respondent’s own site for commercial gain. Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006)(the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Respondent had actual knowledge of Complainant’s rights in the TD AMERITRADE mark at the time Respondent registered the disputed domain names. The disputed domain names and the resolving content are closely related to Complainant’s mark and services provided under the mark. Actual knowledge can be inferred where there is an obvious link between the mark and the contents of the disputed domain name. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). Therefore, Respondent registered the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s <tdamertrade401kplan.com>, <tdameritrade410kplan.com>, and <tdameritradeplan.com> domain names amount to typosquatting. Typosquatting is a practice that capitalizes on the typing errors of Internet users, such as simple misspellings of a complainant’s mark. See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). However, here, Respondent has added entirely new words to the mark, and the domain name is not merely a common misspelling of Complainant’s marks. Therefore, Respondent’s alterations to the TD AMERITRADE mark do not constitute typosquatting.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdamertrade401kplan.com>, <tdameritrade410kplan.com>, and <tdameritradeplan.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 20, 2014
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