THE TORONTO-DOMINION BANK v. RD BANK / -
Claim Number: FA1404001554468
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is RD BANK / - (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rdbank.com>, registered with Register.com, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2014; the National Arbitration Forum received payment on April 16, 2014.
On April 17, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rdbank.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 April 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@rdbank.com. Also on April 17, 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 May 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
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 is the owner of trademark registrations with the Canadian Intellectual Property Office (“CIPO”) and with the United States Patent and Trademark Office (“USPTO”) for the TD BANK mark.
Respondent’s <rdbank.com> domain name is confusingly similar to Complainant’s TD BANK mark.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has not been commonly known by the disputed domain name. Respondent is using the disputed domain name to redirect Internet users to a resolving website that diverts customers from the legitimate TD BANK website.
The disputed domain name should be considered as having been registered and being used in bad faith. Respondent registered the disputed domain name primarily to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his documented out-of-pocket expenses. Respondent’s use of the disputed domain name to redirect Internet users looking for Complainant’s products disrupts Complainant’s business.
Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for Complainant’s products. The <rdbank.com> domain name takes advantage of a common, simple typographical error in which users mistakenly type the letter “r” in place of the letter “t.”
Respondent knew or should have known of Complainant’s TD BANK marks.
Respondent deliberately attempted to hide its identity in registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of CIPO and USPTO registrations for the TD BANK mark.
Respondent is not authorized to use Complainant’s mark in any capacity.
The <rdbank.com> domain name redirects to website that diverts customers from the legitimate TD BANK 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 at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights.
Complainant owns rights in the TD BANK mark through its trademark registrations thereof with the CIPO as well as with the USPTO. See Cactus Rests. Ltd. v. Web Master, FA 671297 (Nat. Arb. Forum May 23, 2006) (“The Panel should not “second guess” the Patent Offices of Canada and the USA to say that Cactus Club should not have been registered as a trademark.”). The Policy does not require Complainant to register its mark in the country in which Respondent resides. 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). Therefore, Complainant’s registration of the TD BANK mark with the CIPO shows that it owns rights in a mark pursuant to Policy ¶ 4(a)(i).
In forming the at-issue domain name Respondent replace the letter “t” in Complainant’s trademark with the letter “t”, removes the space between the trademark’s terms, and appends the top-level domain name, “.com,” to the resulting string. Respondent’s substitution of one letter for another is inconsequential under Policy ¶ 4(a)(i) in differentiating the disputed domain name from Complainant’s trademark. 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”). Likewise, the omission of the space between the terms in Complainant’s mark and the addition of the necessary top-level domain are inconsequential regarding analysis under 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).”). Therefore in light of the foregoing, the Panel concludes that Respondent’s <rdbank.com> domain name is confusingly similar to Complainant’s TD BANK mark under Policy ¶ 4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the <rdbank.com> domain name lists “RD BANK / -” as the domain name’s registrant. However, there is nothing in the record that corroborates the WHOIS data’s suggestion that Respondent may be commonly known by the <rdbank.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003)(finding that respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.”).
Respondent’s <rdbank.com> website displays generic links to third-party websites, some of which directly compete with Complainant and others that link to businesses that are unrelated to Complainant. Such links include “Personal Banking,” “Saving Accounts,” “Checking Accounts,” and more. Therefore, the Panel concludes that Respondent’s use of the <rdbank.com> domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s offer to sell the disputed domain name on Sedo’s website and on the WHOIS record for the at-issue domain name for $6500 USD suggest bad faith under Policy ¶4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007)(finding that respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Second and as mentioned above, Respondent’s domain name addresses a webpage containing links to Complainant’s competitors. By using the domain name in this manner Respondent disrupts Complainant’s business and demonstrates its bad faith 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).”).
Third, Respondent’s use of the confusingly similar <rdbank.com> domain name misleads and diverts Internet users looking for Complainant’s services to Respondent’s <rdbank.com> website. Such users are likely to believe that the website they have inadvertently arrived at and/or the commercial links thereon are sponsored by Complainant, when in fact they are not. Such use of the at-issue domain name demonstrates Respondent’s bad faith in registering and using the domain name pursuant to Policy ¶4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000)(finding bad faith where the domain name in question is obviously connected with complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Forth, it is clear that Respondent designed its <rdbank.com> domain name to takes advantage of a common typographical error where users mistakenly type the letter “r” in place of the letter “t.” The two letters are physically juxtaposed on the standard computer keyboard such that one might easily mistype an “r” when intending to type the letter “t.” Upon making the predictable error the wayward Internet user is directed via Respondent’s domain name corresponding to the mistyped string. The practice, commonly known as “typosquatting,” is in itself evidence of bad faith registration and use of the at-issue domain name 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).
Finally, the Panel’s finding of typosquatting necessarily indicates that Respondent knew of Complainant’s TD BANK mark when it registered the at-issue domain name. Reflecting a predictable mistyping of a trademark in a domain name logically requires that the domain name’s registrant know the correct spelling of the target trademark prior to registering the mistyped version as a domain name. Respondent’s prior knowledge of Complainant's trademark additionally shows that Respondent registered the <rdbank.com> domain name 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rdbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 13, 2014
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