The Toronto-Dominion Bank v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1408001577507
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdwaerhouse.com>, registered with Moniker Online Services LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2014; the National Arbitration Forum received payment on August 29, 2014.
On September 5, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <tdwaerhouse.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 September 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 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@tdwaerhouse.com. Also on September 11, 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 October 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Complaint:
1. Complainant owns the TD WATERHOUSE mark through its trademark registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 589,362 registered Sept. 10, 2003). Complainant uses the TD WATERHOUSE mark in connection with securities brokerage services. The <tdwaerhouse.com> domain name is confusingly similar to the TD WATERHOUSE mark, as the name omits a single letter while adding the generic top-level domain.
2. Respondent lacks rights in the <tdwaerhouse.com> domain name. Respondent is not known by the <tdwaerhouse.com> name as demonstrated by the WHOIS record, and Complainant has not authorized Respondent’s use. Respondent is using the disputed domain name to resolve to a page featuring links to third-party websites, some of which compete with Complainant. Respondent presumably generates revenue from the linked pages. Such use does not warrant the protections afforded under the Policy.
3. Respondent has engaged in bad faith use and registration for five reasons. First, Respondent has a history of cybersquatting as demonstrated by previous UDRP decisions. Second, Respondent uses the disputed domain name to promote links to competitors of Complainant, which disrupts Complainant’s own efforts. Third, Respondent presumable generates revenue from the linked pages, and therefore commercially benefits from the misleading domain. Fourth, Respondent knew, or at least should have known of Complainant’s rights in the TD WATERHOUSE mark at the time of registration. Fifth, Respondent has engaged in typosquatting as the <tdwaerhouse.com> domain name is a mere misspelling of the TD WATERHOUSE mark.
B. Response:
1. Respondent failed to submit a response in this proceeding.
1. Respondent’s <tdwaerhouse.com> domain name is confusingly similar to Complainant’s TD WATERHOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <tdwaerhouse.com> domain name.
3. Respondent registered or used the <tdwaerhouse.com> domain name in bad faith.
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 WATERHOUSE mark in connection with securities brokerage services. Complainant claims to own the TD WATERHOUSE mark through its trademark registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 589,362 registered Sept. 10, 2003). Prior panels have concluded that it is not necessary for the complainant to hold trademark registrations in the same jurisdiction as the respondent resides in order to demonstrates Policy ¶ 4(a)(i) rights in the mark, but merely that the mark is registered in some jurisdiction. 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). According, this Panel finds Complainant’s CIPO registration of the TD WATERHOUSE mark evinces Policy ¶ 4(a)(i) rights in the mark.
Complainant claims the <tdwaerhouse.com> domain name is confusingly similar to the TD WATERHOUSE mark, as the name omits a single letter while adding the generic top-level domain (“gTLD”). The Panel also sees that the domain name eliminates the spacing between the two-word mark. Prior panels have found such alterations fail to distinguish the name from the otherwise incorporated mark. See, e.g., The Gap, Inc. v. Hanying Li, FA 1331209 (Nat. Arb. Forum July 29, 2010) (finding the <oldavy.com> domain name was confusingly similar to the OLD NAVY mark despite the omissions of a letter and spacing from the mark as well as the addition of a gTLD). Accordingly, the Panel finds that Respondent’s <tdwaerhouse.com> domain name is confusingly similar to the TD WATERHOUSE trademark 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent lacks rights in the <tdwaerhouse.com> domain name. Complainant asserts that Respondent is not known by the <tdwaerhouse.com> name as demonstrated by the WHOIS record, and that Complainant has not authorized Respondent’s use. The Panel notes the WHOIS record identifies “Domain Admin / Taranga Services Pty Ltd” as the domain name registrant. Prior panels have looked to the available record, including the WHOIS, to determine whether the respondent is commonly known by the disputed name. See, e.g., Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the 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 the respondent was commonly known by the disputed domain name). Here, the Panel agrees that the record indicates no relevant connection between Respondent and the <tdwaerhouse.com> name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use does not warrant the protections afforded under Policy ¶¶ 4(c)(i) or (iii). Complainant urges that Respondent is using the disputed domain name to resolve to a page featuring links to third-party websites, some of which compete with Complainant. See Compl., at Attached Ex. F. The Panel sees the disputed domain name resolves to promote links such as “Investment,” “Futures Trading,” and “TD Waterhouse Brokerages.” See id. Complainant presumes Respondent generates revenue from the linked pages. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel wrote, “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).” The Panel finds Respondent has not used the domain name 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) as the domain name promotes links to Complainant and its competitors in the financial services sector.
To support its claim, Complainant points out that Respondent has a history of cybersquatting as demonstrated by previous UDRP decisions. Complainant claims that between 2009 and 2014, Respondent has been the losing party in forty-seven cases. See, e.g., Eidos Interactive Limited v. Moniker Privacy Services / Taranga Services Pty Ltd, D2009-0124 (WIPO Mar. 31, 2009); Citigroup Inc. v. Taranga Services Pty Ltd / Domain Admin, FA 1377829 (Nat. Arb. Forum Apr. 22, 2011). Prior panels have concluded that a historical pattern of bad faith may influence future bad faith considerations. For example, in Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008), the panel determined that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii). See also Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations under Policy ¶ 4(b)(ii)). Accordingly, the Panel agrees that Respondent registered and is using the <tdwaerhouse.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii) as Respondent has been subject to numerous adverse UDRP proceedings.
Second, Complainant argues that Respondent uses the disputed domain name to promote links to competitors of Complainant, which disrupts Complainant’s own efforts. Prior panels have found evidence of Policy ¶ 4(b)(iii) bad faith where the respondent has used a confusingly similar domain name to promote links in competition with the complainant’s own offerings. See, e.g., United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The disputed domain name resolves to promote links such as “Investment,” and “Futures Trading,” which compete with Complainant’s own financial and brokerage services. See Compl., at Attached Ex. F. In light of such competing links, the Panel finds evidence of Policy ¶ 4(b)(iii) bad faith.
Next, Complainant argues Respondent presumable generates revenue from the linked pages, and therefore commercially benefits from the misleading domain. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the Panel wrote, “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 agrees that Respondent’s efforts to promote brokerage related services under the guise of the <tdwaerhouse.com> domain name evince Policy ¶ 4(b)(iv) bad faith use and registration.
Complainant argues Respondent knew, or at least should have known of Complainant’s rights in the TD WATERHOUSE mark at the time of registration. While constructive knowledge has been deemed inadequate to support a finding of bad faith, prior panels have inferred actual knowledge where the circumstances permitted. Illustrative here, the panel in Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) wrote, “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” The <tdwaerhouse.com> domain name resolves to page featuring financial and investment related links, including link expressly naming Complainant’s TD WATERHOUSE mark. Based on the domain name and resulting use, the Panel infers Respondent had actual knowledge of Complainant’s TD WATERHOUSE mark at the time of registration, and therefore has engaged in Policy ¶ 4(a)(iii) bad faith.
Lastly, Complainant argues Respondent has engaged in typosquatting as the <tdwaerhouse.com> domain name is a mere misspelling of the TD WATERHOUSE mark. The domain name eliminates the letter “t” from the “waterhouse” portion of the mark. The Panel agrees that Respondent’s registration and use capitalizes on Internet users’ typographical errors, and finds additional evidence of 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).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdwaerhouse.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 15, 2014
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