The Toronto-Dominion Bank v. xiquan lin
Claim Number: FA1701001712847
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is xiquan lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdautofiinance.com>, <tdautoffinance.com>, <tdautofinaance.com>, <tddautofinance.com>, <ttdautofinance.com>, and <dautofinance.com>, registered with Bizcn.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 17, 2017; the Forum received payment on January 17, 2017.
On January 25, 2017, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <tdautofiinance.com>, <tdautoffinance.com>, <tdautofinaance.com>, <tddautofinance.com>, <ttdautofinance.com>, and <dautofinance.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 January 23, 2017, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 13, 2017 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@tdautofiinance.com, postmaster@tdautoffinance.com, postmaster@tdautofinaance.com, postmaster@tddautofinance.com, postmaster@ttdautofinance.com, and postmaster@dautofinance.com. Also on January 23, 2017, the Chinese language 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 February 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Language of the Proceedings
After several attempts to secure verification from registrar Bizcn.com, Inc. pursuant to UDRP Rule 2, Forum commenced the proceedings despite the registrar’s failure to submit a timely verification. Forum reported registrar Bizcn.com, Inc.’s noncompliance on January 23, 2016. However, Bizcn.com, Inc. submitted an untimely verification on January 25, 2016, indicating a registration agreement in the Chinese language. The Complaint was received in English. UDRP Rule 11(a) says the language of the administrative proceeding shall be the language of the Registration Agreement “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Rule 10(b) says “the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” Further, Rule 10(c) says the Panel “shall ensure that the administrative proceeding takes place with due expedition.” There was no way for Complainant to know the registration agreement was in Chinese. All of the resolving parking pages are in English. The WHOIS registration contains Pinyin transliterations from Chinese into English. The domain names at issue primarily consist of English words. Respondent did not respond in any fashion, including an email in Chinese. Requiring Complainant to submit a Chinese language complaint unfairly prejudices Complainant and unreasonably extends these proceedings because the registrar failed to provide registrant information timely.
Complainant requests the domain names be transferred from Respondent to Complainant.
A. Complainant
The Toronto-Dominion Bank is the owner of hundreds of trademark registrations in Canada, the United States and elsewhere that consist of, or include, the elements TD (abbreviation of TORONTO- DOMINION) and TD AUTO FINANCE , as well as the trade names and unregistered trademarks TD and TD AUTO FINANCE in association with financial, banking and related businesses, goods, and services. Complainant has registered its marks with the Canadian Intellectual Property Office (CIPO) and the U.S. Patent and Trademark Office’s (USPTO). Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as the “Complainant’s Marks.” The trademarks relevant to this instant matter are TD AUTO FINANCE and TD.
Complainant, The Toronto-Dominion Bank (publicly listed NYSE: TD, TSX: TD, TYO: 8640), is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Commonly known as TD and operating as TD Bank Group, the bank was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively.
Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, the retail bank operates as TD Canada Trust and serves more than 12 million customers at over 1,100 branches. In the United States, the company operates as TD Bank (the initials are used officially for all U.S. operations). The U.S. subsidiary was created through Complainant’s acquisition of Banknorth and Commerce Bank, and for many years was known as TD Banknorth. TD Bank now serves more than 8 million customers with a network of more than 1,300 branches, primarily located in the eastern United States. TD also ranks among the world’s leading online financial services firms.
Complainant operates numerous websites, chief among them http://www.tdautofinance.com/, http://www.tdbank.com/ and http://www.td.com/. According to Similarweb.com <tdautofinance.com> attracts over 400,000 unique visitors per month. According to Compete.com, <tdbank.com> attracts over 2.61 million unique visitors per month, making it the 404th most popular website in the United States. Alexa.com ranks <td.com> as the 21st most popular website in Canada, 5,282nd most popular website in the United States, and 1,202nd most popular website globally.
Complainant is ranked number 71 on the 2013 Forbes Global 2000 listing. Brand Finance® Brand Directory, which ranks the world’s most valuable brands, ranks TD as number 89 on its 2013 Global 500 list. The Toronto-Dominion Bank is one of a few banks in the world rated AAA by Moody’s.
In addition, in 2013, brandZ ranked Complainant as number 46 on its list of the Top 100 most valuable global brands and as number 6 on its list of Top 10 Regional Banks in the world. Furthermore, TD has also been named one of Canada’s Top 100 Employers for the fifth year in a row. This recognition followed announcements of inclusion on the lists of Financial Post’s Ten Best Companies to Work For (2011), and as one of the Great Place to Work Institute’s Best Workplaces in Canada (2011).
The inaugural 2012 Ipsos Influence Index Study recently asked Canadians to rate 100 leading global brands on a wide variety of attributes, and TD ranked #17 on the list.
Interbrand’s Best Canadian Brands, published every two years, ranks the top 25 Canadian brands according to value and provides insight into their ability to manage brands effectively as a contributor to business performance. TD was ranked as the number 1 overall Canadian brand in the 2012 and 2014 editions of the publication.
In summary, Complainant’s brand is well recognized by consumers, industry peers, and the broader global community.
Complainant owns the Marks cited in Section 6(c) above for which it has obtained numerous trademark registrations. None of the listed registrations have been abandoned, cancelled, or revoked. Complainant has made significant investments over the years to advertise, promote, and protect Complainant’s Marks through various forms of media, including the Internet. Based on its extensive use and trademark registrations, Complainant owns the exclusive right to use the TD and TD AUTO FINANCE marks for banking and related financial services.
A. The Disputed Domain Names are Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights
(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
By virtue of its federal trademark and service mark registrations, Complainant is the owner of Complainant’s trademarks. See United Way of America v. Alex Zingaus, FA 1036202 (FORUM Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”). Furthermore, a complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (FORUM April 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); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 0622122 (FORUM Apr. 14, 2006).
When comparing the Disputed Domain Names to Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Names and Complainant’s trademarks. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 0153545 (FORUM May 27, 2003) (“[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
The Disputed Domain Names are purposeful misspellings of Complainant’s TD AUTO FINANCE trademark and must be considered confusingly similar to Complainant’s trademark and <tdautofinance.com> domain name. The Disputed Domain Names vary from Complainant’s trademark and <tdautofinance.com> domain name by only one letter – Respondent has either added or removed one letter from Complainant’s trademark or domain name. More specifically:
<tdautofiinance.com> adds an “i” to Complainant’s trademark;
<tdautoffinance.com> adds an “n” to Complainant’s trademark;
<tdautofinaance.com> adds an “a” to Complainant’s trademark;
<tddautofinance.com> adds a “d” to Complainant’s trademark;
<ttdautofinance.com> adds a “t” to Complainant’s trademark; and
<dautofinance.com> removes the first “t” from Complainant’s trademark
As the Disputed Domain Names differ from Complainant’s trademark and domain name by just one letter, Respondent’s domains must be considered a prototypical example of typosquatting – the “intentional registration of a domain name that is a slight misspelling of a distinctive or famous mark, causing an internet user who makes a slight spelling or typing error to reach an unintended website.” See The Neiman Marcus Group, Inc. v. Music Wave, FA 0135020 (FORUM Jan. 16, 2003). Thus, the practice of typosquatting intentionally takes advantage of internet users that inadvertently type an incorrect address – often a misspelling of the complainant’s trademark – when seeking to access the trademark owner’s website. This means that a deliberate misspelling of a trademark registered as a domain name, which is intended to confuse internet users, must be confusingly similar by design. See RX America, L.L.C. v. Tony Rodolakis, D2005-1190 (WIPO Jan. 11, 2006) (referring to intentional misspellings as “typosquatting”, which “has consistently been regarded as creating domain names that are confusingly similar to the relevant mark”). See also Dow Jones & Co. v. Powerclick, Inc., D2000- 1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes does not render respondent’s domain name less confusingly similar to the core trademark held by the complainant). In other words, Respondent’s registration of a domain name that is a minor misspelling of Complainant’s trademark constitutes typosquatting and thus creates a domain name that is confusingly similar to Complainant’s trademark. See Victoria’s Secret v. Zuccarini, FA 0095762 (FORUM Nov. 18, 2000) (finding that by misspelling words or adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). See also Yahoo! Inc. v. PPA Media Services / Ryan G Foo, FA 1526653 (FORUM Dec. 4, 2013) (Typosquatting behavior causes a likelihood of confusion between a complainant’s registered mark and a respondent’s disputed domain name based on a slight variation or misspelling of the complainant’s mark). See also Caterpillar Inc. v. Center for Ban on Drugs, FA 0661437 (FORUM May 2, 2006) (finding that “the omission of a single letter from Complainant’s mark does not adequately distinguish the disputed domain name from the mark”). See also Google, Inc. v. DktBot.org, FA 0286993 (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)”)
B. Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Names
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The granting of registrations by the U.S. Patent and Trademark Office and the Canadian Intellectual Property Office (CIPO) to Complainant for the TD and TD AUTO FINANCE trademarks is prima facie evidence of the validity of the terms “TD” and “TD AUTO FINANCE” as trademarks, of Complainant’s ownership of this trademark, and of Complainant’s exclusive right to use the TD and TD AUTO FINANCE trademarks in commerce on or in connection with the goods and/or services specified in the registration certificates.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is not commonly known by the Disputed Domain Names, which evinces a lack of rights or legitimate interests. See Policy, ¶4(c)(ii); see WhoIs data for the Disputed Domain Names. Where “the Whois information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s…mark,” a Panel should find that Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, FA 1036202 (FORUM Aug. 30, 2007). In the instant case, the pertinent WhoIs information identifies the Registrant as “xiquan lin,” which does not resemble the Disputed Domain Names in any manner – thus, where there is no evidence, including the WhoIs record for the Disputed Domain Names, suggests that Respondent is commonly known by the Disputed Domain Names, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Names within the meaning of ¶4(c)(ii). See Instron Corp. v. Kaner, FA 0768859 (FORUM Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the Whois information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). See also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 0715089 (FORUM July 17, 2006) (respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶4(c)(ii), where there was no evidence in the record, including the relevant Whois information, suggesting that respondent was commonly known by the disputed domain name).
Respondent is using the Disputed Domain Names to redirect internet users to websites featuring links to third-party websites, some of which directly compete with Complainant's business. For instance, the websites at which the Disputed Domain Names resolve feature multiple third-party links for auto loans, auto refinancing, and refinance. Further, Respondent’s websites also feature links that directly reference Complainant and its business. Presumably, Respondent receives pay-per-click fees from the linked websites that are listed at the Disputed Domain Name’s websites. Prior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. As such, Respondent is not using the Disputed Domain Names to provide bona fide offerings of goods or services as allowed under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy ¶4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (FORUM Jan. 2, 2008) (As the “respondent’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). See also Vance Int’l, Inc. v. Abend, FA 0970871 (FORUM June 8, 2007) (Concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). See also American Century Proprietary Holdings, Inc. v. Travis Martin, FA 1262486 (FORUM Jun. 23, 2009) (Holding no rights or legitimate interests where domain name resolves to a parked website and Respondent presumably generates click-through fees from such use). See also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 0187429 (FORUM Sept. 26, 2003) (holding that Respondent's use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent registered the Disputed Domain Names on March 10, 2016, which is significantly after Complainant filed for registration of its relevant trademarks with CIPO and the USPTO, and also significantly after Complainant’s first use in commerce of the TDAUTOFINANCE trademark in 2011 and the TD trademark in 1969.
Respondent registered the Disputed Domain Names on March 10, 2016, which is significantly after Complainant’s registration of its TDAUTOFINANCE.COM on January 12, 2011, TD.COM on April 15, 1998 and TDBANK.COM on April 14, 1995.
C. The Disputed Domain Name was Registered and is Being Used in Bad Faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Complainant and its TD and TD AUTO FINANCE trademarks are known internationally. Complainant has marketed and sold its goods and services using this trademark since 1969, which is well before Respondent’s registration of the Disputed Domain Names on March 10, 2016.
By registering domain names that vary from Complainant’s trademark by only one letter, Respondent has created domain names that are confusingly similar to Complainant’s trademark, as well as its <tdautofinance.com> domain. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which Respondent would have been unaware of” Complainant’s brands at the time the Disputed Domain Names were registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, TD and TD AUTO FINANCE are so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Further, where the Disputed Domain Names vary from Complainant’s trademark by only one letter , “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415 (WIPO Dec. 10, 2007)
At the time of registration of the Disputed Domain Names, Respondent knew, or at least should have known, of the existence of Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the Disputed Domain Names, Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Further, Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, the retail bank operates as TD Canada Trust and serves more than 12 million customers at over 1,100 branches, in the United States, where Complainant operates as TD BANK, Complainant serves more than 8 million customers with a network of more than 1,300 branches, and in Europe where Complainant operates as TD Securities, it has over 18 offices worldwide and employs over 3,000 people, which demonstrates Complainant’s fame. Further, performing searches across a number of internet search engines for “tdautofiinance.com”, “tdautoffinance.com”, “tdautofinaance.com”, “tddautofinance.com”, “ttdautofinance.com”, and “dautofinance.com” returns multiple links referencing Complainant and its business. See Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“given Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”). See also Victoria's Secret v. Hardin, FA 096694 (FORUM Mar. 31, 2001) (Finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith). Further, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past Panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding, as is the case here. See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (FORUM Mar. 13, 2012) (“a finding of bad faith hinges squarely on the probability that it was more likely than not that respondent knew of, and targeted, complainant’s trade mark”). See also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (FORUM Feb. 6, 2014) (“The Panel notes that although 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”). See also Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., D2014-0878 (WIPO Aug. 5, 2014) (“Knowledge and targeting [of a trademark] may be proven inferentially”).
Typosquatting itself has been taken as evidence of bad faith registration and use by past Panels. The Disputed Domain Names are slight misspellings of Complainant’s TD AUTO FINANCE trademark, as well as its <tdautofinance.com> domain name, and Respondent is attempting to capitalize on typing errors committed by Complainant’s customers in trying to locate Complainant on the internet. In other words, the Disputed Domain Names are typosquatted versions of Complainant’s TD AUTO FINANCE trademark and have intentionally been designed to closely mimic Complainant’s trademark and primary domain. Numerous Panels have found that registering a domain name to take advantage of traffic generated by typing errors committed by another’s customers, as here, is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (FORUM Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a typosquatted version of Complainant's DERMALOGICA mark, stating "typosquatting itself is evidence of bad faith registration and use pursuant to Policy 4(a)(iii)"). See also Zone Labs, Inc. v. Zuccarini, FA 190613 (FORUM Oct. 15, 2003) (finding that Respondent registered and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶4(a)(iii) because the name was merely a typosquatted version of Complainant's ZONEALARM mark). See also Myspace, Inc. v. Kang, FA 672160 (FORUM June 19, 2006) (“Respondent misspells the Mark with intent to intercept Internet users from Complainant's website, given the fact that Complainant's website is a popular website and the Disputed Domain Name is a misspelling of the Mark which is highly likely to occur. This typosquatting is evidence of bad faith”).
ICANN policy dictates that bad faith can be established by evidence demonstrating that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website…by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on [Respondent’s] website or location,” see UDRP Policy 4(b)(iv). Here, Respondent creates a likelihood of confusion with Complainant and its trademarks by registering domains that vary from Complainant’s trademark and <tdautofinance.com> domain name by only one letter, which demonstrates that Respondent is using the Disputed Domain Names to confuse unsuspecting internet users looking for Complainant’s services, and to mislead internet users as to the source of the domain names and websites. By creating this likelihood of confusion between Complainant’s trademarks and the Disputed Domain Names, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Names, Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of Complainant’s trademarks in order to increase traffic to the Disputed Domain Names’ websites for Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay- per-click links posted to Respondent’s website, some of which directly reference Complainant and/or its competitors. Previous Panels have found bad faith under Policy ¶4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links to third-party websites that create revenue for the respondent. See PRL USA Holdings, Inc. v. LucasCobb, D2006-0162 (WIPO Mar. 30, 2006) (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith”). See also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (FORUM Mar. 21, 2006) (“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)”).
Respondent has registered numerous domain names that each infringe upon Complainant’s TD AUTO FINANCE trademark. The sheer number of infringing domain names registered by Respondent demonstrates that Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use. See The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., D2000-0113 (WIPO Apr. 13, 2000) (“…Respondent was in bad faith when it registered these ten (10) domain names with NSI beginning in February, 1999. To register so many domain names using so many combinations of Complainant’s trademarks is a pattern and a calculated attempt by Respondent to foreclose Complainant from using its own trademarks in cyberspace (the Policy 4 (b)(ii)). This is classic cybersquatting”). See also Unified Brands, Inc. v. John Paul / International Chef Solutions, FA 1563720 (FORUM July 30, 2014) (Panel finds that Respondent registered all 66 of the Domain Names in order to prevent the trademark owner from reflecting its marks in corresponding domain names, and that the sheer number of domain names so registered constitutes a pattern of such conduct. This constitutes evidence of both bad faith registration and bad faith use under Policy ¶4(b)(ii)).
Finally, on balance of the facts set forth above, it is more likely than not that Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Disputed Domain Names in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., FA D2014-1754 (WIPO Jan 12, 2014) (“the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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(f), 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 (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 claims it registered the TD AUTO FINANCE mark with the Canadian Intellectual Property Office (“CIPO”) (registration # TMA826012) and the United States Patent and Trademark Office’s (“USPTO”) (Reg. No. 4,259,945, registered Dec. 18, 2012). Registration with the CIPO and the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even though Respondent is in another country. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Complainant’s registration of its mark with the CIPO and the USPTO is sufficient to establish its rights in the mark under Policy ¶4(a)(i).
Complainant claims Respondent’s domain names are confusingly similar to Complainant’s mark because the mark is included, less the spaces, adding the “.com” gTLD, and with either a duplicative letter added, or with the “T” omitted. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. The slight misspellings do not prevent a finding of confusing similarity. These minor alterations leave the domain names confusingly similar to Complainant’s marks. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”); see also WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). Respondent’s domain names are merely minor misspellings of Complaint’s TD AUTO FINANCE mark and therefore are confusingly similar domain names under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 has no rights or legitimate interests in the domain names because Respondent is not commonly known by the domain names. Where there is no response, the WHOIS and common sense allow the Panel to decide Respondent is not commonly known by the domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS lists “xiquan lin” as registrant. There is no obvious relationship between Respondent’s name and the disputed domain names. Respondent is not commonly known by any of the domain names under Policy ¶4(c)(ii).
Complainant claims Respondent is using the domain names to redirect Internet users to dynamic parking pages with “pay per click” hyperlinks, some of which directly compete with Complainant’s business. Such a passive use does not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Presumably Respondent receives pay-per-click fees from the parking pages. This is neither a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used the domain names in bad faith. Respondent has registered numerous domain names in the instant case, and Complainant claims this shows a pattern under Policy ¶4(b)(ii). While some Panels would agree, this Panel does not. Policy ¶4(b)(ii) requires Respondent to have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided Respondent has engaged in a pattern of such conduct. Complainant owns the TDautoFinance.com domain name, so Complainant can (and does) reflect its mark in a domain name. Respondent’s registration of the domain names does not constitute bad faith registration and use under Policy ¶4(b)(ii).
Complainant claims Respondent has engaged in bad faith by profiting from Internet user confusion through pay-per-click links under Policy ¶4(b)(iv). Certainly Respondent appears to be using pay per click parking pages for its commercial advantage. Certainly Respondent expects (nay, it even hopes!) its domain names will be misunderstood as having some relationship with Complainant. This constitutes bad faith registration and use under Policy ¶4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶4(b)(iv)).
Finally, Complainant claims Respondent had actual knowledge of Complainant and its marks. Given the length of the marks and the way they were used, it is very likely Respondent knew about Complainant and its marks when Respondent registered the domain names. This constitutes bad faith registration and use under the penumbra of Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tdautofiinance.com>, <tdautoffinance.com>, <tdautofinaance.com>, <tddautofinance.com>, <ttdautofinance.com>, and <dautofinance.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, February 23, 2017
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