The Toronto-Dominion Bank v. ICS INC
Claim Number: FA1408001573914
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdautofincance.com>, registered with ENOM, 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 August 7, 2014; the National Arbitration Forum received payment on August 7, 2014.
On August 8, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <tdautofincance.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 August 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@tdautofincance.com. Also on August 8, 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 September 4, 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 owns the TD AUTO FINANCE mark through registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 826,012, registered June 11, 2012, filed January 12, 2011) as well as with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,259,945 registered December 18, 2012, filed January 13, 2011). Complainant is the second largest bank in Canada as measured by market capitalization and deposits, and uses the TD AUTO FINANCE mark in connection with banking services, notably automobile financing services.
The <tdautofincance.com> domain name is confusingly similar to the TD AUTO FINANCE mark as the domain name is comprised of a misspelling of the mark, specifically, the mere addition of the letter “c” to the word FINANCE.
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not sponsored by Complainant. Second, Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS record. In addition, Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-parties, some of which compete with Complainant in the banking and auto insurance industries. Respondent presumably gathers click-through-fees from the linked pages.
Respondent registered and is using the disputed domain name in bad faith. First, Respondent offered to sell the disputed domain name for the price of $1,069, which is an amount in excess of out-of-pocket expenses. Second, Respondent has attempted to mislead users as to Complainant role in the disputed domain name such that Respondent can profit from the goodwill associated with Complainant and its mark. Third, Respondent knew, or should have known, of Complainant’s rights in the mark at the time the disputed domain name was registered. Finally, Respondent has engaged in typosquatting by misspelling the TD AUTO FINANCE by a single added letter, which is evidence in and of itself of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the TD AUTO FINANCE mark through registration with the CIPO as well as with the USPTO
Respondent registered the at-issue domain name after Complainant acquired rights in TD AUTO FINANCE.
Respondent is not authorized to use Complainant’s mark in any capacity.
The <tdautofincance.com> domain name addresses a website displaying pay-per-click links relating to Complainant competitors.
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 trademark in which Complainant has rights.
Complainant establishes its rights in the TD AUTO FINANCE mark through its USPTO and/or CIPO trademark registration(s). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the domain name’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <tdautofincance.com> domain name contains Complainant’s trademark with the term “finance” misspelled as “fincance” and the generic top-level domain “.com” appended to the resulting string. These alterations to Complainant’s TD AUTO FINANCE trademark are insufficient to distinguish the at-issue domain name from such trademark for the purposes of the Policy. Therefore, the Panel finds that the <tdautofincance.com> domain name is confusingly similar to Complainant’s TD AUTO FINANCE mark. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
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.
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.
WHOIS information for the at-issue domain name lists “ICS INC” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <tdautofincanace.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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent’s at-issue domain name addresses a website displaying an array of third party links such as “Car Insurance,” “Auto Loans,” and “Online Banking.” The linked services appear to compete with Complainant’s services and it is likely that the links are also of the pay-per-click variety. Using the domain name in this manner is neither 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). H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that using a domain name to promote related advertising was a commercial use that was not bona fide).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent offered to sell the at-issue domain name to Complainant for an amount in excess of its reasonable out-of pocket expenses incurred in connection with the domain name. Respondent’s offer to sell suggests Respondent’s bad faith pursuant to Policy 4(b)(i).
Second, Respondent has registered multiple domain names that have each precipitated UDRP proceedings against Respondent where Respondent was subsequently ordered to transfer the subject domain name to the complaint. Only recently this Panel found against Respondent in a dispute between the instant parties that closely mimics the current dispute. See The Toronto-Dominion Bank v. ICS INC, FA1569675 (Nat. Arb. Forum August 12, 2014). These prior adverse UDRP decisions together encourage a finding that Respondent is engaged in a bad faith pattern of “cybersquatting” under Policy ¶4(b)(ii) with regard to the dispute now at bar. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 0814312 (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); .
Third, as mentioned above several of the hyperlink advertisements on the <tdautofincance.com> website lead to Complainant’s competitors. Respondent’s use of the domain name thereby disrupts Complainant’s business and demonstrates bad faith under paragraph 4(b)(iii) of the Policy. 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)).
Fourth, Respondent’s use of the confusingly similar domain name creates a likelihood that Internet users will be fooled into assuming Complainant is somehow associated with or sponsors Respondent’s <tdautofincace.com> website. Such use of the confusingly similar domain name demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding a Policy ¶ 4(b)(iv) likelihood of confusion when the domain name was used to house advertisements related to Complainant’s business).
Fifth, furthermore Respondent’s <tdautofincance.com> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with a targeted trademark, and thereby be directed to a web presence controlled by the domain name’s registrant. Here Respondent simply inserts a letter “c” into Complainant’s trademark to form the typosquatted domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally sixth, Respondent registered the <tdautofincance.com> domain name knowing that Complainant had trademark rights in the TD AUTO FINANCE mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s overt misspelling of such trademark in forming the at-issue domain name in this dispute and in prior disputes. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <tdautofincance.com> domain name in bad faith pursuant to 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 had "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 <tdautofincance.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 8, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page