The Toronto-Dominion Bank v. Whois Privacy Service
Claim Number: FA1408001573919
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Whois Privacy Service (“Respondent”), Luxembourg.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdautofianance.com>, registered with Premium Registrations Sweden AB.
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.
Darryl C. Wilson, 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 15, 2014, Premium Registrations Sweden AB confirmed by e-mail to the National Arbitration Forum that the <tdautofianance.com> domain name is registered with Premium Registrations Sweden AB and that Respondent is the current registrant of the name. Premium Registrations Sweden AB has verified that Respondent is bound by the Premium Registrations Sweden AB 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 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@tdautofianance.com.
Also on August 15, 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 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Policy ¶ 4(a)(i)
Complainant uses the TD AUTO FINANCE mark in connection with financial and banking services. Complainant registered the TD AUTO FINANCE mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,259,945 registered December 18, 2012, filed January 13, 2011), and with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 826,012 registered June 11, 2012, filed January 12, 2011). The <tdautofianance.com> domain name is confusingly similar to the TD AUTO FINANCE mark as the name is a misspelling of the mark.
2. Policy ¶ 4(a)(ii)
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. The WHOIS record indicates that “Whois Privacy Service” is the registrant of the disputed domain name, which offers no evidence of Policy ¶ 4(c)(ii) association. In addition Complainant has not authorized Respondent’s use of the name in any way. As for use, Respondent is using the disputed domain name to redirect users to a site featuring links to third-party businesses, some of which compete with Complainant in the financial sector. Respondent presumably generates click-through fees from the linked pages. Respondent’s offer to sell the disputed domain name for excess of out-of-pocket expenses is further evidence that Respondent lacks rights or legitimate interests.
3. Policy ¶ 4(a)(iii)
Respondent has engaged in bad faith use and registration. Respondent’s bad faith is apparent from Respondent’s efforts to sell the disputed domain name for consideration in excess of out-of-pocket expenses. Further, Respondent’s use of the disputed domain name disrupts Complainant business as the resolving page features links to Complainant’s competitors. Third, Respondent has attempted to mislead Internet users as to Complainant’s role in the disputed domain name in hopes of attaining commercial gain from Complainant’s goodwill. Fourth, Respondent has demonstrated a knowledge of and familiarity with Complainant’s business, and had such knowledge at the time of registration. And finally, Respondent’s attempt to capitalize on typing errors is evidence of bad faith in and of itself.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The Toronto-Dominion Bank, of Ontario, Canada. Complainant owns hundreds of domestic and international trademark registrations that include an abbreviation of its name in the form of TD, including the mark TD AUTO FINANCE. Complainant has continuously used the TD AUTO FINANCE mark since at least 2011 in association with financial, banking and related goods and services.
Respondent is Whois Privacy Service, of Luxembourg. Respondent’s registrar’s address is listed as Sweden. The disputed domain name was registered on or about November 30, 2011.
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 uses the TD AUTO FINANCE mark in connection with financial and banking services. Complainant registered the TD AUTO FINANCE mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,259,945 registered December 18, 2012, filed January 13, 2011), and with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 826,012 registered June 11, 2012, filed January 12, 2011). The Panel notes that Respondent purportedly resides in Luxembourg. Prior panels have concluded that the mark does not need to be registered in the jurisdiction that the respondent resides, but merely that the mark is registered with some trademark agency. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Further, rights in a registered mark date back to the filing date. See 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”). The Panel here finds that Complainant’s USPTO and CIPO registrations of the TD AUTO FINANCE mark satisfy the initial requirements of Policy ¶ 4(a)(i).
Complainant claims the <tdautofianance.com> domain name is confusingly similar to the TD AUTO FINANCE mark. In so arguing, Complainant urges that the generic top-level domain (“gTLD”) “.com” is immaterial, and the domain name differs from the mark by a misspelling. Prior panels agree that the inclusion of a gTLD and omission of spacing are irrelevant to the Policy ¶ 4(a)(i) analysis because spaces are impermissible in domain names and TLDs are required of all domain names. 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).”). Further, prior panels have concluded that the addition of a single letter to an otherwise incorporated mark does not distinguish the name from the mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that the <tdautofianance.com> domain name is confusingly similar to the TD AUTO FINANCE mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues Respondent lacks rights or legitimate interests in the disputed domain name. Complainant first claims that Respondent is not commonly known by the disputed domain name. In so arguing, Complainant points to the WHOIS record, which indicates that “Whois Privacy Service” is the registrant of the disputed domain name. In addition, Complainant contends it has not authorized Respondent’s use of the name in any way. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Based on the WHOIS information as well as the fact that Respondent has failed to submit a response in this proceeding, the Panel finds that the evidence does not indicate that Respondent is commonly known by the domain name in dispute pursuant to Policy ¶ 4(c)(ii).
Complainant next contends that Respondent is using the disputed domain name to redirect users to a site featuring links to third-party businesses, some of which compete with Complainant in the financial sector. Complainant presumes that Respondent generates click-through fees from the linked pages. The Panel notes that Respondent included a screenshot of the disputed landing page, which features links such as “Auto Loan Payment,” “Finance Loan,” “Visa Credit Card,” and “Credit Repair Companies.” Under comparable circumstances, prior panels have found that such use does not amount to protected use envisioned under Policy ¶¶ 4(c)(i) or (iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel here finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to the Policy.
Complainant also argues that Respondent’s offer to sell the disputed domain name for excess of out-of-pocket expenses is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant urges that the minimum bid threshold for the domain name is 300 EUR. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name. The Panel here finds that Respondent’s offer to sell the disputed domain name for at least 300 EUR is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent’s bad faith is apparent from Respondent’s efforts to sell the disputed domain name for consideration in excess of out-of-pocket expenses. The Panel again notes that Respondent’s minimum bid threshold is 300 EUR. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the Panel concluded that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered the domain for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name. The Panel here finds that Respondent’s effort to sell the domain name in excess of 300 EUR evinces bad faith pursuant to Policy ¶ 4(b)(i).
Complainant further contends that Respondent’s use of the disputed domain name disrupts Complainant business as the resolving page features links to Complainant’s competitors. The Panel again notes that the <tdautofianance.com> domain name resolves to Respondent’s site promoting links such as, “Auto Loan Payment,” “Finance Loan,” and “Visa Credit Card.” The Panel here finds that Respondent has engaged in bad faith use and registration under Policy ¶ 4(b)(iii) by promoting links in competition with Complainant in the financial sector. 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).”).
Complainant additionally argues that Respondent has attempted to mislead Internet users as to Complainant’s role in the disputed domain name in hopes of attaining commercial gain from Complainant’s goodwill. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel reasoned, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” The Panel here finds that Respondent’s use of the disputed domain name to promote click-through links, some of which compete with Complainant, is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent’s attempt to capitalize on Internet user’s typing errors, also known as typosquatting, is evidence of bad faith in and of itself. Previous panels have found that typosquatting exists when a domain name merely embodies common spelling errors that Internet users may make when pursuing the complainant’s business via the Internet. 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).”). The Panel notes that the <tdautofianance.com> domain name differs from the TD AUTO FINANCE mark by the inclusion of an additional letter “a” in the FINANCE portion of the mark. The Panel finds that Respondent’s behavior amounts to typosquatting, which supports a finding that Respondent has engaged in Policy ¶ 4(a)(iii) bad faith.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <tdautofianance.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 23, 2014
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