The Toronto-Dominion Bank v. Jonathan Thomas / John Thomas / Jt inc. / batti picka / none
Claim Number: FA1509001636182
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Jonathan Thomas / John Thomas / Jt inc. / batti picka / none (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdcanadatrustbankingsupport.com>, <tdcanadatrust0nlineactivation.com>, <tdcanadatrustloginpage.com>, and <tdcanadatrustactivation.com>, registered with Bizcn.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2015; the Forum received payment on September 2, 2015.
On September 3, 2015, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <tdcanadatrustbankingsupport.com>, <tdcanadatrust0nlineactivation.com>, <tdcanadatrustloginpage.com>, and <tdcanadatrustactivation.com> domain names are registered with Bizcn.com, Inc. and that Respondent is the current registrant of the names. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.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 September 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2015 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@tdcanadatrustbankingsupport.com, postmaster@tdcanadatrust0nlineactivation.com, postmaster@tdcanadatrustloginpage.com, postmaster@tdcanadatrustactivation.com. Also on September 4, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2015, 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 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 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that these entities have been linked before in prior UDRP decisions where the panel treated them as one entity. See The Toronto-Dominion Bank v. john jones/ joh jones / batti picka / Jonathan Thomas / Jt inc. FA 1615346 (NAF June 25, 2015); see also The Toronto-Dominion Bank v. marc charles / cimpinca6 / marco miliano / duville / joe bloe / none / batti picka / none, FA 1579226 (NAF Nov. 3, 2014). Further, Complainant argues that because the registrar, Bizcn.com, Inc., operates its website in the Chinese language, and the supposed multiple respondents are from different areas of the globe, it is highly unlikely that multiple individuals from across the world would be able to register a domain name using the Bizcn.com, Inc. registrar, especially given the similarity amongst the disputed domain names.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled by a single Respondent who is using multiple aliases in satisfaction of Paragraph 3(c) of the Rules.
A. Complainant
Complainant owns trademark registrations for the TD trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,649,009, registered June 25, 1991), and the CANADA TRUST mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA409300, registered Mar. 12, 1993). The marks are used on or in connection with the provision of banking and financial services. The <tdcanadatrustbankingsupport.com>, <tdcanadatrustloginpage.com>, <tdcanadatrustactivation.com>, and <tdcanadatrust0nlineactivation.com> domain names are confusingly similar to both the TD and CANADA TRUST trademarks because they all contain the addition of the generic top-level domain (“gTLD”) “.com” as well as various generic terms. Also, the <tdcanadatrust0nlineactivation.com> domain name substitutes the number zero for the letter “o.”
Respondent has no rights or legitimate interests. Respondent is not commonly known by any of the disputed domain names, as demonstrated by the available WHOIS information for all of the disputed domain names. Further, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Rather, Respondent uses the disputed domain names to resolve to a blank website.
Respondent has engaged in bad faith registration and use. Respondent uses the confusingly similarity of the disputed domain names to attract Internet users to its own website for commercial gain. Further, Respondent has provided false WHOIS information and had actual knowledge of Complainant and its rights in the TD and CANADA TRUST marks when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the Toronto-Dominion Bank, of Toronto, Ontario, Canada. Complainant is the owner of domestic and international registrations for the marks CANADA TRUST and TD, both alone as well as in connection with goods or services, such as TD BANK, with all such marks relating to its provision of financial and business goods and services. Complainant also owns and operates numerous websites incorporating its marks such as <tdbank.com> and <td.com>.
Respondents are Jonathan Thomas / John Thomas / Jt inc. / batti picka / none of Hong Kong and the Arab Emirates. Respondents registrar’s address is listed as
Xiamen China for all disputed domains. The Panel notes that <tdcanadatrustbankingsupport.com> was registered on or about January 27, 2015; <tdcanadatrust0nlineactivation.com> was registered on or about January 30, 2015; <tdcanadatrustactivation.com> was registered on or about May 18, 2015; and <tdcanadatrustloginpage.com> was registered on or about July 8, 2015.
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 owns trademark registrations for the TD trademark with the USPTO (e.g., Reg. No. 1,649,009, registered June 25, 1991), and the CANADA TRUST mark with the CIPO (e.g., Reg. No. TMA409300, registered Mar. 12, 1993). The marks are used on or in connection with the provision of banking and financial services. The Panel finds that trademark registrations with the USPTO and CIPO are both sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also 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.”).
Complainant argues that the <tdcanadatrustbankingsupport.com>, <tdcanadatrustloginpage.com>, <tdcanadatrustactivation.com>, and <tdcanadatrust0nlineactivation.com> domain names are confusingly similar to both the TD and CANADA TRUST trademarks. Complainant correctly notes that all of the domain names contain the generic top-level domain (“gTLD”) “.com,” which offers no distinguishing relief for Respondent. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Complainant also notes that all of the domain names contain both the TD and CANADA TRUST marks in their entirety, the only difference being the addition of different generic terms such as “banking support,” “login page,” or “activation.” With regard to the <tdcanadatrust0nlineactivation.com> domain name, Respondent seems to add the generic term “online activation,” but has instead placed the number zero where the letter “o” would normally appear. Whether adding generic terms or substituting the number zero for the letter “o,” or some combination of the two, prior panels have found confusing similarity in each situation. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”). The Panel here finds that the <tdcanadatrustbankingsupport.com>, <tdcanadatrustloginpage.com>, <tdcanadatrustactivation.com>, and <tdcanadatrust0nlineactivation.com> domain names are confusingly similar to both the TD and CANADA TRUST trademarks under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards 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), 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 asserts that Respondent is not commonly known by any of the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the TD or CANADA TRUST trademarks in domain names. The Panel notes that “batti picka” is listed as the registrant of record for the <tdcanadatrustactivation.com> and <tdcanadatrustloginpage.com> domain names; “John Thomas” is listed as the registrant of record for the <tdcanadatrust0nlineactivation.com> domain name; and “Jonathan Thomas” is listed as the registrant of record for the <tdcanadatrustbankingsupport.com>. Further, the record is devoid of any evidence to indicate that Respondent(s) is either commonly known as any of the disputed domain names or in possession of licensing rights. Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii) where, as here, Respondent has presented no evidence to indicate the establishment of such rights. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding 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).
Complainant also argues that Respondent has provided false Whois information, which further indicates that Respondent is not commonly known as any of the disputed domain names. Complainant argues that the address on the public Whois records is listed as “3085 rue Camus, Terrebone, Hong Kong, J6Y 2A3, India” for the <tdcanadatrustbankingsupport.com> domain name and 3085 rue Camus, Terrebone, Hong Kong, J6Y 2A3, Iraq” for the <tdcanadatrust0nlineactivation.com> domain name. Complainant notes that according to Google Maps, the address “3085 rue Camus, Terrebone, J6Y 2A3” is a private residence in Terrebonne, Quebec, Canada. Thus, according to Complainant, the address provided in the Whois has no connection with Hong Kong, India or Iraq. Respondent provision of information that is false or misleading further supports a finding that Respondent is not commonly known by the disputed domain names.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As 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 argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes that Internet users are likely to believe that the disputed domain names are sponsored by or affiliated with Complainant and its TD and CANADA TRUST trademarks. Further, Complainant claims that Respondent is presumable profiting from this use. Previous panels have found bad faith under Policy ¶ 4(b)(iv) where a likelihood of confusion existed and the respondent was attempting to profit. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel here finds that Respondent is engaging in bad faith registration and use under Policy ¶ 4(b)(iv).
Also, Complainant contends that Respondent’s has provided misleading or incorrect Whois information, which is further indicative of bad faith. Complainant again mentions that the address on the public Whois records is listed as “3085 rue Camus, Terrebone, Hong Kong, J6Y 2A3, India” for the <tdcanadatrustbankingsupport.com> domain name and 3085 rue Camus, Terrebone, Hong Kong, J6Y 2A3, Iraq” for the <tdcanadatrust0nlineactivation.com> domain name. Complainant notes that according to Google Maps, the address “3085 rue Camus, Terrebone, J6Y 2A3” is a private residence in Terrebonne, Quebec, Canada. Thus, according to Complainant, the address provided in the Whois has no connection with Hong Kong, India or Iraq. Past panels have found that false Whois information can be evidence of a respondent’s bad faith registration. See McDonald’s Corp. v. Holy See, FA 155458 (Nat. Arb. Forum June 27, 2003) (holding that the respondent’s use of falsified information when it registered the disputed domain name was evidence that the domain name was registered in bad faith, despite the respondent’ claim that such an action was necessary to protect it from a reprisal by the complainant). The Panel here finds that Respondents provision of false information is evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As 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 <tdcanadatrustbankingsupport.com>, <tdcanadatrust0nlineactivation.com>, <tdcanadatrustloginpage.com>, and <tdcanadatrustactivation.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 16, 2015
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