The Toronto-Dominion Bank v. Above.com Legal / Host Master / Domain Privacy Above
Claim Number: FA1402001544846
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Above.com Legal / Host Master / Domain Privacy Above (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <tdautofnance.com>, registered with DNC Holdings, Inc.
The domain names at issue are <tdbanks.com>, <tdbnk.com>, <tdautfinance.com>, and <tdautofinane.com>, registered with Above.com Pty 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 February 21, 2014; the National Arbitration Forum received payment on February 21, 2014.
On February 21, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <tdautofnance.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 24, 2014, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <tdbanks.com>, <tdbnk.com>, <tdautfinance.com>, and <tdautofinane.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty 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 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 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@tdbanks.com, postmaster@tdbnk.com, postmaster@tdautfinance.com, postmaster@tdautofnance.com, and postmaster@tdautofinane.com. Also on February 27, 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 28, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i. Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TD BANK mark (Reg. No. 3,788,055, registered May 11, 2005); and for the TD AUTO FINANCE mark (Reg. No. 4,259,945, filing January 13, 2011, registered December 28, 2012).
iii. Respondent’s domain names are each purposeful misspellings of Complainant’s trademarks.
i. Respondent has no rights or legitimate interests in respect of the disputed domain names.
ii. Respondent has not been commonly known by the disputed domain names.
iii. Respondent is using the <tdbanks.com>, <tdbnk.com>, <tdautfinance.com>, <tdautofnance.com>, and <tdautofinane.com> domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
iv. Respondent’s <tdbanks.com> and <tdbnk.com> domain names occasionally redirect Internet users to a website offering visitors the opportunity to “Get a Credit Score from all 3 Credit Bureaus.”
i. The domain names should be considered as having been registered and being used in bad faith.
ii. Respondent has demonstrated intent to sell, rent, or otherwise transfer the disputed domain names for valuable consideration in excess of his documented out-of-pocket expenses.
iii. The disputed domain names constitute a disruption of Complainant’s business.
iv. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on Respondent’s website or location.
v. Respondent’s <tdbanks.com> and <tdbnk.com> domain names occasionally redirect Internet users to a website offering visitors the opportunity to “Get a Credit Score from all 3 Credit Bureaus.”
vi. At the time of registration of the disputed domain names, Respondent knew, or at least should have known, of the existence of Complainant’s trademarks.
Respondent registered the disputed domain names between September 13, 2011 and August 24, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TD BANK mark (Reg. No. 3,788,055, registered May 11, 2005); and for the TD AUTO FINANCE mark (Reg. No. 4,259,945, filing January 13, 2011, registered December 28, 2012).
Respondent, Above.com Legal / Host Master / Domain Privacy Above, is using the <tdbanks.com>, <tdbnk.com>, <tdautfinance.com>, <tdautofnance.com>, and <tdautofinane.com> domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s <tdbanks.com> and <tdbnk.com> domain names occasionally redirect Internet users to a website offering visitors the opportunity to “Get a Credit Score from all 3 Credit Bureaus.” Respondent registered the disputed domain names between September 13, 2011 and August 24, 2013.
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 has rights in the TD BANK and TD AUTO FINANCE MARK under Policy ¶ 4(a)(i) through registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <tdbanks.com> and <tdbnk.com> domain names are misspellings of Complainant’s TD BANK trademark. Respondent adds an additional letter to its <tdbanks.com> domain name. Respondent’s inclusion of an additional letter is inconsequential to a Policy ¶ 4(a)(i) analysis. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Respondent removes the letter “a” in Complainant’s TD BANK mark in its <tdbnk.com> domain name. Respondent’s omission of a letter does not differentiate the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Respondent eliminates the space in Complainant’s TD BANK mark and adds the generic top-level domain (“gTLD”) “.com” to its <tdbanks.com> and <tdbnk.com> domain names. Respondent’s removal of spaces and inclusion of gTLDs is irrelevant to a confusingly similar analysis according to Policy ¶ 4(a)(i). See 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).”). Thus, Respondent’s <tdbanks.com> and <tdbnk.com> domain names are confusingly similar to Complainant’s TD BANK mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <tdautfinance.com>, <tdautofnance.com>, and <tdautofinane.com> domain names are misspellings of Complainant’s TD AUTO FINANCE mark. Respondent’s <tdautfinance.com>, <tdautofnance.com>, and <tdautofinane.com> domain names are a misspelling of Complainant’s TD AUTO FINANCE mark, by removing the letter “o,” “i,” or “c.” Respondent removes the spaces in Complainant’s TD AUTO FINANCE mark and adds the gTLD “.com.” Therefore, Respondent’s <tdautfinance.com>, <tdautofnance.com>, and <tdautofinane.com> domain names are confusingly similar to Complainant’s TD AUTO FINANCE 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 under the <tdbanks.com>, <tdbnk.com>, <tdautfinance.com>, <tdautofnance.com>, and <tdautofinane.com> domain names pursuant to Policy ¶ 4(c)(ii). Respondent and the disputed domain names are not sponsored by or affiliated with Complainant in any way. Complainant has not granted Respondent permission or authorization to use Complainant’s marks. The WHOIS record identifies “Above.com Legal / Host Master / Domain Privacy Above” as the registrant of the disputed domain names. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)( 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark).
Respondent is using the <tdbanks.com>, <tdbnk.com>, <tdautfinance.com>, <tdautofnance.com>, and <tdautofinane.com> domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s disputed domain names are being used to provide competing hyperlink directories, containing links titled “Banks Account,” “Online Banks,” “Checking Account Banks,” and others. Accordingly, Respondent is not using the <tdbanks.com>, <tdbnk.com>, <tdautfinance.com>, <tdautofnance.com>, and <tdautofinane.com> domain names for 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Respondent’s <tdbanks.com> and <tdbnk.com> domain names occasionally redirect Internet users to a website offering visitors the opportunity to “Get a Credit Score from all 3 Credit Bureaus.” Complainant alleges that Respondent is taking advantage of the fame of Complainant’s trademarks to, at best, increase traffic to his website for personal gain, and at worst, “phish” personal information from Complainant’s customers for personal gain since an individual’s name and social security number would be required to obtain his or her credit score. Respondent has not been using the disputed domain names for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Respondent is currently offering to sell the disputed domain names through DomainSponsor (<domainsponsor.com>) for $2,000. A respondent’s offer to sell a domain name for consideration that is in excess of its own out-of-pocket expenses shows bad faith. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Therefore, Respondent has registered and is using the <tdbanks.com> and <tdbnk.com> domain names in bad faith pursuant to Policy ¶ 4(b)(i).
Respondent’s
use of the <tdbanks.com> and <tdbnk.com> domain names
constitutes a disruption of Complainant’s business. Respondent’s use of the
disputed domain names to provide competing hyperlinks disrupts Complainant’s
business, thus proving bad faith use and registration under Policy ¶ 4(b)(iii).
See Compania
Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat.
Arb. Forum
July 14, 2008) (“Respondent’s disputed domain name
resolves to a parking website which provides click through revenue to
Respondent and which displays links to travel-related products and services
that directly compete with Complainant’s business. Accordingly, Respondent’s
competing use of the disputed domain name is additional evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on Respondent’s website or location. Respondent presumably receives click-through fees from its use of the disputed domain names. Therefore, Respondent has registered and is using the <tdbanks.com> and <tdbnk.com> domain names in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent’s <tdbanks.com> and <tdbnk.com> domain names occasionally redirect Internet users to a website offering visitors the opportunity to “Get a Credit Score from all 3 Credit Bureaus.” In Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), it was held that phishing “involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.” Respondent’s use of the disputed domain names to feature a link stating “Click Here to See Your Credit Score” evidences phishing as an individual’s name and social security number would be required to obtain his or her credit score, thus showing bad faith use and registration of the <tdbanks.com> and <tdbnk.com> domain names pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
Complainant argues that at the time of registration of the <tdbanks.com> and <tdbnk.com> domain names, Respondent knew, or at least should have known, of the existence of Complainant’s trademarks. Complainant asserts that its TD brand is known internationally. Complainant contends that it has marketed and sold services using the TD marks since 1969. If the Panel finds that Respondent knew of Complainant’s TD BANK and TD AUTO FINANCE marks at the time it registered the domain names, Respondent had actual knowledge of Complainant's mark and rights marks at the time it registered the <tdbanks.com> and <tdbnk.com> domain names. Therefore, Respondent registered these disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <tdbanks.com>, <tdbnk.com>, <tdautfinance.com>, <tdautofnance.com>, and <tdautofinane.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 28, 2014
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