The Toronto-Dominion Bank v. BLADIMIR BOYIKO / -
Claim Number: FA1402001544831
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is BLADIMIR BOYIKO / - (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwtdwaterhouse.com>, registered with eNom, Inc.
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 February 21, 2014; the National Arbitration Forum received payment on February 21, 2014.
On February 21, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwtdwaterhouse.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@wwwtdwaterhouse.com. Also on February 21, 2014, 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 March 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch.
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.
i. Respondent has not been commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent is a serial cybersquatter.
ii. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring advertising links to third-party websites, and presumably receiving pay-per-click fees in the process.
iii. Respondent, at the time of registration of the disputed domain name, knew, or should have known of the existence of Complainant’s trademarks.
Respondent registered the <wwwtdwaterhouse.com> domain name on February 10, 2000.
1. Respondent’s <wwwtdwaterhouse.om> domain name is confusingly similar to Complainant’s TD WATERHOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <wwwtdwaterhouse.om> domain name.
3. Respondent registered or used the <wwwtdwaterhouse.om> domain name in bad faith.
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 is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant argues that it is the owner of trademark registrations with the CIPO for the TD WATERHOUSE mark (e.g., Reg. No. TMA549396, filed September 8, 1999, registered August 7, 2001). See Complainant’s Exhibit A. The Panel holds that although Respondent resides in Russia, it does not matter under Policy ¶ 4(a)(i) whether Complainant has registered its mark in the country in which Respondent resides. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Thus, the Panel determines that Complainant’s filing and registration of the TD WATERHOUSE mark with the CIPO sufficiently proves its rights in the mark for the purpose of Policy ¶ 4(a)(i). See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Seiko Epson Corp. v. Citizens News Network, FA 1389991 (Nat. Arb. Forum June 30, 2011) (finding that complainant had established Policy ¶ 4(a)(i) rights in its mark through its trademark registrations with the USPTO and CIPO).
Complainant contends that Respondent’s <wwwtdwaterhouse.com> domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s properly-spelled mark TD WATERHOUSE prefaced with “www.” The Panel finds that Respondent’s use of the prefix “www” before Complainant’s TD WATERHOUSE mark does not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). The Panel also observes that Respondent eliminates the spaces in Complainant’s TD WATERHOUSE mark and adds the generic top-level domain (“gTLD”) “.com” to its disputed domain name. In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel held that the “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).” Thus, the Panel finds that Respondent’s removal of spaces and inclusion of a gTLD does not differentiate the domain name from the mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <wwwtdwaterhouse.com> domain name is confusingly similar to Complainant’s TD WATERHOUSE 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); 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 claims that Respondent has not been commonly known by the <wwwtdwaterhouse.com> domain name. The Panel notes that the WHOIS record for the disputed domain name lists “BLADIMIR BOYIKO / -“ as its registrant. See Complainant’s Exhibit E. Complainant argues that Respondent is not sponsored by or affiliated with Complainant in any way and that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel finds that where the WHOIS information and other evidence in the record suggests that Respondent is not known as the disputed domain name, Respondent is not commonly known by the <wwwtdwaterhouse.com> domain name according to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent is using the <wwwtdwaterhouse.com> domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s disputed domain name hosts competing links such as “TD Waterhouse Online Trading,” “TD Ameritrade,” “TD Waterhouse Account,” and others. See Complainant’s Exhibit F. Complainant argues that Respondent presumably receives pay-per-click fees from these linked websites. Accordingly, the Panel determines that Respondent is not using the <wwwtdwaterhouse.com> domain name to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (NAF Sep. 26, 2003) (holding that Respondent's use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant asserts that Respondent is a serial cybersquatter and has repeatedly registered domain names containing names of famous persons or trademarks of other entities in order to capitalize on the goodwill developed by others. See Gov’t Emps. Ins. Co. (“GEICO”) v. Bladimir Boyiko, D2010-1180 (WIPO Aug. 20, 2010); see also Mattel, Inc. v. Bladimir Boyiko, FA 1290718 (NAF Dec. 16, 2009); see also LEGO Juris A/S v. Bladimir Boyiko, D2009-0437 (WIPO May 20, 2009). Previous panels have concluded that a panel’s transferring of a domain name from respondent to complainant evidences a pattern of bad faith use and registration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (NAF 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). Accordingly, the Panel holds that Respondent has registered and is using the <wwwtdwaterhouse.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant argues that Respondent is using the <wwwtdwaterhouse.com> domain name to redirect unsuspecting Internet users to a website featuring advertising links to third-party websites, and presumably receiving pay-per-click fees in the process. The Panel observes that Respondent’s disputed domain name resolves to a website containing links to Complainant’s competitors. See Complainant’s Exhibit F. The Panel finds that Respondent has registered the disputed domain name to attract and mislead users away from Complainant and to its own website for commercial gain, and the Panel finds that Respondent has registered and is using the <wwwtdwaterhouse.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant states that Respondent, at the time of registration of the <wwwtdwaterhouse.com> domain name, knew, or should have known of the existence of Complainant’s trademarks. Complainant contends that its TD WATERHOUSE brand is known internationally. Complainant asserts that it has marketed and sold services using its marks since 1969. Complainant argues that by registration of the exact term TD WATERHOUSE, Respondent has demonstrated a thorough knowledge of the TD brand and business. Complainant also contends that performing a simple “Google” search for the term TD WATERHOUSE shows links to Complainant’s websites and numerous articles from publications. See Complainant’s Exhibit H. Although previous panels have found that constructive notice of a mark is not sufficient to support a finding of bad faith, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwtdwaterhouse.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 31, 2014
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