The Toronto-Dominion Bank v. Acuway / Host Master
Claim Number: FA1402001544835
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Acuway / Host Master (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dtbank.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.
Scott R. Austin, 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, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <dtbank.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 February 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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@dtbank.com. Also on February 24, 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.
A timely Response was received and determined to be complete on March 17, 2014.
Complainant’s Additional Submission was received on March 24, 2014 in a timely manner and found to be compliant with Supplemental Rule 7.
Respondent’s Additional Submission was received on March 31, 2014 in a timely manner and found to be compliant with Supplemental Rule 7.
On March 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Scott R. Austin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant Toronto Dominion Bank, which has over 85,000 employees and over 22 million clients worldwide, has been using the well-known marks TD Bank and TD in Canada, the US and elsewhere since at least as early as 1969 to identify Complainant as the source of a variety of financial services around the world;
2. Complainant has registered the TD BANK mark with the United States Patent and Trademark Office ("USPTO"). See, e.g., Reg. No. 3,788,055 registered May 11, 2010;
3. Complainant has registered the TD BANK mark with the Canadian Intellectual Property Office (“CIPO”) See, e.g. Reg. No. TMA549396, registered August 7, 2001;
4. The Complainant operates numerous websites, chief among them <tdbank.com> and <td.com> and according to Compete.com, <tdbank.com> attracts over 3.1 million unique visitors per month, making it the 383rd most popular website in the United States.
5. Respondent took ownership of the Disputed Domain Name on or about August 23, 2008, significantly after the Complainant’s registration of TD.COM on April 15, 1998, TDBANK.COM on April 14, 1995.
6. Respondent’s <dtbank.com> domain name is a purposeful misspelling of the TD BANK mark. Respondent merely transposes the letters “T” and “D” in the Complainant’s mark and as such Respondent’s disputed domain name is confusingly similar to Complainant’s marks;
7. Respondent has not been known by the <dtbank.com> domain name, and there is nothing in the WHOIS information or other available records to show that Respondent has in fact ever been commonly known by the domain name at issue. Respondent is not otherwise licensed or authorized to use the TD BANK mark in trade;
8. Respondent is using the <dtbank.com> domain name to send Internet users through the websites featuring generic links to third-party websites, some of which compete directly with Complainant’s business.;
9. Respondent has placed the disputed domain name up for sale.;
10. Respondent’s decision to host offers to competing financial and banking businesses on the <dtbank.com> domain name’s website is evidence of bad faith commercial disruption;
11. Respondent profits from a likelihood that Internet users will confuse Complainant as the source or origin of the content viewable through the domain name’s website. Respondent profits by way of click-through advertising revenue.;
12. Respondent had to have known of Complainant’s rights in the TD BANK mark when registering the <dtbank.com> domain name given the prior trademark registration of Complainant’s marks and global recognition of the marks;
B. Respondent makes the following contentions:
1. Respondent registered the domain name on September 17, 1999;
2. Respondent combined the acronym “DT” with the term “bank.” “DT” means “DirectTransfer” and does not stand for the Complainant’s trademark. Complainant does not have any trademark rights in DTBANK. Complainant relies too heavily on the “TD” portion of its mark, and a two-character portion of a trademark cannot be sufficient grounds for transfer here;
3. Respondent is engaging in the reverse domain name hijacking of the <dtbank.com> domain name;
C. Complainant’s Additional Submission – A Reply to Respondent’s Contentions
1. The WHOIS information does not list Respondent as the domain name’s registrant prior to August 23, 2008.
2. Respondent has simply transposed the TD BANK mark and its story regarding “Direct Transfer Bank” deserves little heed given that the domain name has never been used for a bank, only for click-through advertisements
3. “[T]he Disputed Domain Name is identical or confusing similar to Complainant’s mark as it is a classic example of typosquatting. Respondent has no legitimate rights or interest in the domain name. Respondent is not known by “dt bank” or “Direct Transfer Bank,” and Respondent is not even in the banking industry. In all the years that Respondent has owned the Disputed Domain Name, he has demonstrated no intent to use it in a manner consistent with Respondent’s claims in his response; in other words, Respondent has at no point endeavored to make a legitimate use of the Disputed Domain Name to offer services around “Direct Transfer Bank.”
4. The Disputed Domain Name was registered and used in bad faith as Respondent intentionally designed and registered the Disputed Domain Name to be confusingly similar with Complainant’s TD BANK trademark, thereby intending to unscrupulously generate revenue by taking full advantage of a simple typing error and the fame of Complainant’s mark.”
D. Respondent’s Additional Submission – A Reply to Complainant’s Additional Submission
1. If the complainant logic is fair then the Respondent would have to give up all the two letter domains if the transposed names are trademark registered.
2. PB.com is registered for a company called PitneyBowes company. If BP.com (British Petroleum) thinks that PB.com is transposed then it would file a dispute on PitneyBowes company; similarly, domain names AE.com (American Eagle Outfitters) and EA.com (Electronic Arts);
3. The dispute brought by Complainant is Reverse Domain Hijacking.
1. Complainant has been using the marks TD Bank and TD in Canada, the US and elsewhere since at least as early as 1969 to identify Complainant as the source of a variety of banking and financial services;
2. Complainant owns numerous registrations for the TD Bank mark in the US and Canada for banking and financial services, which include registrations resulting from applications filed at least as early as August 4, 1989 in the U.S. and at least as early as September 8, 1999 in Canada, for use of the marks at least as early as 1969, well before the disputed domain name was registered on September 17, 1999 by Respondent or any predecessor in interest of Respondent.
3. Respondent’s disputed domain name <dtbank.com> is a purposeful misspelling of Complainant’s <tdbank.com> domain name;
4. Respondent has submitted no evidence to support its claim that DT Bank “means Direct Transfer Bank” or has been used by Respondent in business to provide banking services.
5. Respondent has transposed the letters “T” and “D” in the disputed domain name, which letters comprise Complainant’s TD mark and the most prominent initial term of Complainant’s TD Bank mark to engage in typosquatting of Complainant’s mark.
6. The disputed domain name is substantially similar to the TD BANK mark as the domain name only alters Complainant’s mark by eliminating the space in the mark and attaches the generic top-level domain (“gTLD”) “.com which alterations, in addition to typosquatting, are insufficient to differentiate the disputed domain name from Complainant’s mark.
7. The products and services offered by Respondent on its web site accessed through the disputed domain name are confusingly similar to or the same as the identified financial services offered by Complainant under the TD Bank mark.
8. Respondent’s WHOIS information identifies Respondent as “Acuway / Host Master”
9. Respondent is not commonly known by Complainant’s TD Bank trademark.
10. Respondent is not licensed by Complainant to use Complainant’s TD Bank trademark.
11. Respondent is not otherwise authorized to use the TD BANK mark in trade.
12. Respondent uses the <dtbank.com> domain name to offer hyperlinks to other businesses’ websites, advertising services that are in competition with Complainant’s banking and financial 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.
Identical and/or Confusingly Similar: Policy ¶ 4(a)(i)
The at-issue domain name is confusingly similar to a mark in which the
Complainant has trademark rights.
Complainant uses and has registered the TD BANK mark in connection with banking and financial services. Complainant has registered the TD BANK mark with the USPTO (e.g. Reg. No. 3,788,055 registered May 11, 2010, filed July 23, 2008) and with the CIPO (Reg. No. TMA549396 registered August 7, 2001, filed September 8, 1999), as well as the TD mark for the same services with the USPTO (e.g. Reg. No. 1,649,009 registered June 25, 1991, filed August 4, 1989). Complainant’s Annex Exhibit A.
Based on the foregoing, the Panel finds that Complainant has Policy ¶ 4(a)(i) rights in the TD BANK mark dating back to at least as early as the initial application for the CIPO registration on September 8, 1999. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
Complainant further argues that Respondent’s <dtbank.com> domain name is a purposeful misspelling of the TD BANK mark and thus confusingly similar to the TD BANK mark. Complainant claims that Respondent merely transposes the letters “T” and “D” in the mark, which letters comprise the initial term and primary distinctive feature of Complainant’s mark, and which letters TD alone are also registered as Complainant’s mark for financial services. The Panel finds that there can be confusing similarity when a domain name is merely a transposition of letters in a mark. See Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark). The Panel also finds that in addition to the transposition, the domain name differs from the TD BANK mark only to the extent that the domain name eliminates the space in the mark and attaches the generic top-level domain (“gTLD”) “.com”. The Panel finds that such alterations are insufficient to differentiate the domain name from the mark because spaces are impermissible in domain names and gTLDs are a required element of all domain names. 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)). The Panel concludes by finding that the <dtbank.com> domain name is confusingly similar to the TD BANK mark under Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Respondent lacks rights and legitimate interests in respect of the at-issue domain
name.
Under Policy ¶ 4(a)(ii) Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 argues that Respondent has not been known by the <dtbank.com> domain name, and evidence submitted by Complainant supports there is nothing in the WHOIS information or other available records to show that Respondent has in fact ever been known by the domain name, with no evidence submitted by Respondent to the contrary. Complainant contends that Respondent is not otherwise licensed or authorized to use the TD BANK mark in trade. The Panel notes that the WHOIS information verified with the Registrar of record lists “Acuway / Host Master” as the registrant of record for the disputed domain name. Respondent has asserted, without any evidentiary showing, that the domain name stands for “DirectTransferBank”. Respondent makes no claim that it actually owns or operates any business under such a name. The Panel also notes that the Response was submitted through an unidentified individual using the [xxxxxx]@gmail.com e-mail account.
The Panel also notes that in an Additional Submission by Respondent dated March 31, 2014, Respondent submitted 3 bank statements from 2007, 2008 and 2010 which appear to show credit card purchases of domain names from Registrar of record GoDaddy, but nothing is provided in Respondent’s Additional Submission to tie these documents to Respondent’s arguments and as such the materials submitted do nothing to further Respondent’s position. The Panel finds that Respondent has not shown that it is actually known by the <dtbank.com> domain name under Policy ¶ 4(c)(ii) based on the record provided. See 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 also argues and provides evidence from the landing page of Respondent’s web site, which the Panel has accessed and reviewed, that Respondent is using the <dtbank.com> domain name to direct Internet users to a website featuring generic links to third-party financial services and banking websites, some of which compete directly with Complainant’s business.
The Panel notes that the domain name resolves to a website that promotes an array of related and competing hyperlinks to various third-party financial service businesses, including well known banks, brokerages and financial service companies. Complainant Annex Exhibit F. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) the panel determined that the use of a confusingly similar domain name for hyperlink advertisements was neither a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See also 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); Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (NAF Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names). Based on the foregoing evidence this Panel likewise finds that Respondent’s use of the <dtbank.com> domain name is not protected by Policy ¶¶ 4(c)(i) or (iii).
Complainant, through its Additional Submission, further claims that by transposing the letters “T” and “D” of Complainant’s mark Respondent is engaged in typosquatting. Complainant argues and the Panel agrees that Respondent has not substantiated its claim that it runs a “Direct Transfer Bank.” The Panel notes that typosquatting is a practice wherein a common misspelling of a trademark is registered as an Internet domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark).
Respondent’s arguments in its initial Response, raising hypothetical transpositions of two letter domain names involving other famous brands in an attempt by Respondent to refute Complainant’s claims of typosquatting are unpersuasive. The transposition domain name examples Respondent provides are for famous marks involving different services (e.g. Pitney Bowes v British Petroleum, American Eagle Outfitters v Electronic Arts), not similar services as found between the marks and domain name web sites in this proceeding. Pitney Bowes would not lose business if a consumer seeking Pitney Bowes postage meters erroneously transposes PB to BP and ends up at British Petroleum’s BP.com site featuring gasoline or oil refinery services. Likewise American Eagle Outfitters is not likely to lose a customer looking for shirts at AE.com if that customer transposes to EA.com and ends up at an Electronic Arts game software site. In sharp contrast, however, Complainant does stand to lose business if a customer or potential customer seeking TD Bank’s banking services transposes TD to DT and ends up at Respondent’s DTbank.com web site landing page with multiple links to banking and financial services of major banks that directly compete with Complainant, including Bank of America, PNC, Chase Bank and others referenced above.
The Panel finds that the <dtbank.com> domain name constitutes typosquatting, and that Respondent has no Policy ¶ 4(a)(ii) rights or legitimate interests in the domain name.
Complainant asserts that Respondent has placed the disputed domain name up for sale, which Complainant argues is evidence of Respondent’s bad faith. The Panel notes that the disputed domain name’s website includes a link reading “Inquire about this domain.” Complainant Annex Exhibit F. The Panel agrees that this text which links to a page requesting the contact information of the inquiring party, implies an offer to sell the domain name. As such the Panel finds bad faith under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant further argues that Respondent’s decision to host offers to competing financial and banking businesses on the <dtbank.com> domain name’s website is evidence of bad faith commercial disruption. The Panel again notes that some of the hyperlinks viewable through the disputed domain name landing page link to third-party banking and financial services websites of well -known banks that compete with Complainant, including the financial services providers PNC, Bank of America, SunTrust, Chase Bank and American Express. Complainant Annex Exhibit F. The Panel finds that competing hyperlinks are evidence of Policy ¶ 4(b)(iii) bad faith through commercial disruption. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent profits from a likelihood that Internet users will confuse Complainant as the source or origin of the content viewable through the domain name’s website. Complainant concludes that Respondent profits by way of click-through advertising revenue. The Panel notes that Complainant Annex Exhibit F illustrates various related and potentially competing hyperlink advertisements viewable through the <dtbank.com> domain name’s website. In TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) the panel found bad faith through Policy ¶ 4(b)(iv) when the respondent had profited through monetized hyperlinks on a confusingly similar domain name. The Panel here likewise finds that Respondent’s actions give rise to Policy ¶ 4(b)(iv) bad faith.
Complainant argues that Respondent’s typosquatting behavior in regards to registering the <dtbank.com> domain name is clear evidence of bad faith. In Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) the panel found that a simple misspelling of the complainant’s mark was evidence of bad faith because it illustrated that the respondent sought to capitalize on Internet users’ mistakes. The Panel agrees and on this basis also finds Policy ¶ 4(a)(iii) bad faith.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the domain name, of its rights to use the disputed domain name. Based on the foregoing analysis relating to Complainant’s marks, the substantial evidence submitted by Complainant and lack of meaningful evidence in support of Respondent’s allegations, the Panel disagrees with Respondent.
The Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), and, therefore, the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED to Complainant and as to Respondent’s claim for Reverse Domain Name Hijacking, relief to Respondent shall be DENIED.
Accordingly, it is Ordered that the <dtbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: April 9, 2014
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