TD Ameritrade IP Company, Inc. and THINKORSWIM HOLDINGS INC. v. weijun kuang
Claim Number: FA1403001550983
Complainant is TD Ameritrade IP Company, Inc. and THINKORSWIM HOLDINGS INC. (“Complainant”), Nebraska, USA. Respondent is weijun kuang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdameritrads.com>, <tdameritrfade.com>, <tdzameritrade.com>, and <thnkorswim.com>, registered with GoDaddy.com, LLC.
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 March 26, 2014; the National Arbitration Forum received payment on March 26, 2014.
On March 26, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdameritrads.com>, <tdameritrfade.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 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@ameritrade3.com, postmaster@ameritradew.com, postmaster@ameritradfe.com, postmaster@ameritradwe.com, postmaster@ameretrade.com, postmaster@ameritrasde.com, postmaster@amerityrade.com, postmaster@ametritrade.com, postmaster@amiritrade.com, postmaster@anmeritrade.com, postmaster@tdameritradd.com, postmaster@tdameritraded.com, postmaster@tdameritrads.com, postmaster@tdameritrfade.com, postmaster@tdzameritrade.com, and postmaster@thnkorswim.com. Also on March 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 April 24, 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 provides investing and trading services for nearly six million client accounts that now total more than $500 billion in assets, and custodial services for over 4500 independent registered investment advisors.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TD AMERITRADE mark (e.g., Reg. No. 3,808,580, registered June 22, 2010); for the AMERITRADE mark (e.g., Reg. No. 2,032,285, registered January 21, 1997); and for the THINKORSWIM mark (e.g., Reg. No. 2,568,003, registered May 7, 2002).
iii. The disputed domain names are purposeful misspellings of Complainant’s marks.
i. Respondent has no rights or legitimate interests in respect of the disputed domain name.
ii. Respondent has not been commonly known by the disputed domain names.
iii. Respondent is using the <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
iv. The <tdameritrads.com> and <tdameritrfade.com> domain names do not resolve to an active website.
i. The domain names should be considered as having been registered and being used in bad faith.
ii. Respondent is using the <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names to redirect unsuspecting Internet users to a website featuring advertising links to third-party websites, many of which are competitors of Complainant, and is presumably receiving pay-per-click fees in the process.
iii. The <tdameritrads.com> and <tdameritrfade.com> domain names do not resolve to an active website.
iv. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
v. Respondent knew or should have known of the existence of Complainant’s marks at the time Respondent registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: TD Ameritrade IP Company, Inc. and THINKORSWIM HOLDINGS INC. THINKORSWIM HOLDINGS INC. is an affiliate of TD Ameritrade IP Company, Inc. and that both are wholly-owned subsidiaries of TD Ameritrade Online Holdings Corporation.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.
The Panel concludes that a sufficient enough nexus exists between the Complainants to them as a single entity in this proceeding. The Panel will collectively refer to the Complainants as “Complainant.”
Complainant provides investing and trading services. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TD AMERITRADE mark (e.g., Reg. No. 3,808,580, registered June 22, 2010); for the AMERITRADE mark (e.g., Reg. No. 2,032,285, registered January 21, 1997); and for the THINKORSWIM mark (e.g., Reg. No. 2,568,003, registered May 7, 2002).
Respondent, weijun kuang, registered the disputed domain names between December 6, 2013 and February 7, 2014. Respondent is using the <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The <tdameritrads.com> and <tdameritrfade.com> domain names do not resolve to an active website.
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.”).
The Panel finds that Complainant’s registration of the TD AMERITRADE, AMERITRADE, and THINKORSWIM marks with the USPTO sufficiently proves its rights in the marks under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country of Respondent’s residence. See 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).
Complainant argues that Respondent’s <tdameritradd.com>, <tdameritraded.com>, <tdameritrads.com>, <tdameritrfade.com>, and <tdzameritrade.com> domain names are purposeful misspellings of Complainant’s TD AMERITRADE mark. Respondent removes one letter and adds another in its <tdameritradd.com> and <tdameritrads.com> domain names. Respondent’s replacing of one letter for another letter is inconsequential to a Policy ¶ 4(a)(i) determination. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Respondent adds a letter to its <tdameritraded.com>, <tdameritrfade.com>, and <tdzameritrade.com> domain names. Respondent’s inclusion of an additional character does not prevent a panel from finding confusing similarity pursuant to Policy ¶ 4(a)(i). 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 space in Complainant’s TD AMERITRADE mark and adds the generic top-level domain (“gTLD”) “.com” to its disputed domain names. Respondent’s elimination of spaces and inclusion of a gTLD does not distinguish the domain names from Complainant’s TD AMERITRADE mark under Policy ¶ 4(a)(i). 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 finds that Respondent’s <tdameritradd.com>, <tdameritraded.com>, <tdameritrads.com>, <tdameritrfade.com>, and <tdzameritrade.com> domain names are confusingly similar to Complainant’s TD AMERITRADE mark according to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, and <anmeritrade.com> domain names are a purposeful misspelling of Complainant’s AMERITRADE mark. Respondent adds the numeral “3” to Complainant’s mark in its <ameritrade3.com> domain name. The addition of numerals to a mark is not enough to prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar). Respondent adds an additional letter to its <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, and <anmeritrade.com> domain names. Respondent replaces one letter with another in its <ameretrade.com> and <amiritrade.com> domain names. Respondent adds the gTLD “.com” to each of its disputed domain names. The Panel finds that Respondent’s <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, and <anmeritrade.com> domain names are confusingly similar to Complainant’s AMERITRADE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <thnkorswim.com> domain name is a purposeful misspelling of Complainant’s THINKORSWIM mark. Respondent’s <thnkorswim.com> domain name is missing the letter “i.” Respondent’s removal of a letter in Complainant’s mark does little to differentiate the domain name from Complainant’s mark under 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 adds the gTLD “.com” to its disputed domain name. The Panel finds that Respondent’s <thnkorswim.com> domain name is confusingly similar to Complainant’s THINKORSWIM mark according 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).
Complainant alleges that Respondent has not been commonly known by the disputed domain names. Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use its marks in a domain name or otherwise. The registrant is identified as “weijun kuang” in the WHOIS information for the disputed domain names. The Panel finds that Respondent is not commonly known by the <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006)(respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name).
Respondent is using the <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s disputed domain names lead to competing hyperlink directories, containing links titled “Ameritrade,” “Ameritrade Online,” “Invest Stock Market,” and other competing links. The Panel finds that Respondent is not using the <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (the respondent mere use of the domain name to operate a website containing links to various competing commercial websites was not a use in connection with 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)).
Respondent’s <tdameritrads.com> and <tdameritrfade.com> domain names do not resolve to active websites. Respondent’s failure to make an active use of the <tdameritrads.com> and <tdameritrfade.com> domain names shows a lack of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent is using the <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names to redirect unsuspecting Internet users to a website featuring advertising links to third-party websites, many of which are competitors of Complainant, and is presumably receiving pay-per-click fees in the process. Therefore, the Panel finds that Respondent has registered and is using the <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000)(the panel found bad faith under Policy ¶ 4(b)(iv) where respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to complainant’s services and merely took advantage of Internet user mistakes).
As Respondent’s <tdameritrads.com> and <tdameritrfade.com> domain names do not resolve to an active website, Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Respondent adds, deletes, or substitutes numbers to each of its <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdameritrads.com>, <tdameritrfade.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names. The Panel finds that Respondent has engaged in typosquatting, showing bad faith under Policy ¶ 4(a)(iii). See 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).”).
Respondent had actual knowledge of the TD AMERITRADE, AMERITRADE, and THINKORSWIM marks and Complainant's rights in its marks. Thus, the Panel finds that Respondent registered the <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdameritrads.com>, <tdameritrfade.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names in bad faith under Policy ¶ 4(a)(iii). See 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)."
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 <ameritrade3.com>, <ameritradew.com>, <ameritradfe.com>, <ameritradwe.com>, <ameretrade.com>, <ameritrasde.com>, <amerityrade.com>, <ametritrade.com>, <amiritrade.com>, <anmeritrade.com>, <tdameritradd.com>, <tdameritraded.com>, <tdameritrads.com>, <tdameritrfade.com>, <tdzameritrade.com>, and <thnkorswim.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 8, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page