The Toronto-Dominion Bank v. Domain Admin / Gotiao Internet
Claim Number: FA1701001714197
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Domain Admin / Gotiao Internet (“Respondent”), British Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbankcom.com>, registered with Fabulous.com Pty Ltd.
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 January 25, 2017; the Forum received payment on January 25, 2017.
On Jan 29, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <tdbankcom.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@tdbankcom.com. Also on January 31, 2017, 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 February 28, 2017, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant registered the TD (e.g., Reg. No. TMA396087, registered Mar. 20, 1992) and TD BANK (e.g., Reg. No. TMA549396, registered Aug. 7, 2001) marks (“Marks”) with the Canadian Intellectual Property Office (“CIPO”). Complainant additionally registered the Marks with multiple other governmental agencies. Respondent’s <tdbankcom.com> mark is confusingly similar as it fully incorporates the TD BANK mark and only differs by adding the generic term “com” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <tdbankcom.com>. There is no evidence that the Respondent listed in the WHOIS information is commonly known by the marks, nor has Complainant licensed or otherwise permitted Respondent to use Complainant’s marks or use a domain name with the marks. Respondent has also ignored all of Complainant’s attempts to resolve the dispute before initiating the instant action. Additionally, Respondent does not use the disputed domain name in a bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain name resolves to a website offering a “TD Bank Visitor Survey” that users can take and, after divulging their personal information, can win “as exclusive reward worth at least $50”. Alternatively, the disputed domain name redirects users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business, such as links for credit cards and other banking services. Respondent presumably receives pay-per-click fees from these links. Additionally, Respondent offers the domain name for sale to the public for a minimum of $250.
Respondent registered and is using the <tdbankcom.com> in bad faith. Respondent participates in a phishing scheme that seeks to extract personal information from users through surveys, while posing as Complainant. Additionally, Respondent attempts to attract Internet users for personal commercial gain by confusing users looking for Complainant and offering hyperlinks resolving in websites with similar and competing financial services as Complainant. Furthermore, Respondent attempts to sell the domain name, which also indicated bad faith registration. Finally, Respondent must have had actual knowledge of Complainant’s marks, as Complainant has sold its goods and services using the trademark since 1969; the disputed domain name captures the full TD BANK mark and is used for similar services; and Complainant is the sixth largest bank in North America and is known worldwide.
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 TD and TD BANK, in connection with its provision of banking, financial, and business goods and services. Complainant also owns and operates numerous websites incorporating its marks such as <tdbank.com> and <td.com>.
Respondent is Domain Admin / Gotiao Internet of Tortola, British Virgin Islands. Respondent’s registrar’s address is listed as Pyrmont, Australia. The Panel notes that Respondent registered <tdbankcom.com> on or about May 2, 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(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 is a large financial institution that conducts business throughout the world. Complainant uses its marks for financial, banking, and related goods and services. Complainant registered the TD (e.g., Reg. No. TMA396087, registered Mar. 20, 1992) and TD BANK (e.g., Reg. No. TMA549396, registered Aug. 7, 2001) Marks with the CIPO. Complainant also alleges to have registered the Marks with other governmental agencies. Past panels have held that registration of a mark with multiple governmental agencies sufficiently establishes a registrant’s rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). The Panel here finds that Complainant has established rights in the Marks for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tdbankcom.com> is confusingly similar as it only differs by the addition of three letters at the end, followed by the gTLD “.com”. Adding letters to the end of a fully incorporated mark has not been found to be distinguishing. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). Similarly, Panels have held that adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). In the instant proceeding Respondent used Complainant’s entire TD BANK mark, and added the letters “com” before adding the actual gTLD “.com” The Panel here finds that Respondent has not included elements in the domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
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 (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). Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in <tdbankcom.com>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Domain Admin / Gotiao Internet” as the registrant. Complainant argues there is no evidence that Respondent was ever known by the disputed domain name prior to its registration, nor has Complainant licensed or otherwise permitted Respondent to use Complainant’s Marks or use a domain name with the Marks. Previous panels have used similar assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel here finds that Respondent is not commonly known by <tdbankcom.com> under Policy ¶ 4(c)(ii).
Complainant also asserts that Respondent has no rights or legitimate interest because Respondent failed to respond to any of Complainant’s attempts to resolve the dispute privately, and failed to respond to the complaint. A respondent’s failure to respond can be used to demonstrate a lack of rights or legitimate interest. See BILD Gmbh & Co. KG v. James Cousin, FA 1641283 (Forum November 11, 2015) (“Respondent has failed to respond in this proceeding, and has not provided any evidence to indicate it owns a mark identical to the <bildpl.us> domain name. Such a lack of evidence is sufficient to allow this Panel to find Respondent has no rights to such a mark.”). Complainant alleges that it sent three notices to Respondent in order to allow Respondent the opportunity to cease use of the disputed domain name. Respondent did not respond to any of the correspondences, and also failed to respond to the complaint filed by Complainant. The Panel here finds that Respondent’s failure to respond demonstrates a lack of rights or legitimate interest.
Complainant further alleges that Respondent’s actions are not a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name directs users to a webpage where the user can take a survey and divulge personal information to win a prize. Prior panels have concluded that such conduct demonstrates lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Here, the disputed domain name resolves to a website offering a “TD Bank Visitor Survey” that users can take and, after divulging their personal information, can win “as exclusive reward worth at least $50”. The Panel here finds that Respondent’s actions are not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant further contends that the disputed domain name also redirects users to a website featuring links to third-party websites in competition with Complainant’s business, presumably to receive pay-per-click fees from the links. Using a confusingly similar domain name while offering competing services for commercial gain can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum August 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Respondent’s domain name redirects users to a generic webpage offering links to various banking, credit card and various links that include Complainant’s Marks. The Panel here finds that such use fails to establish a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant argues that Respondent’s use of the <tdbankcom.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent offers the domain name for sale to the public. Offering a domain name for sale has been found to indicate a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant indicates that Respondent lists the disputed domain name for sale beginning at $250 on <sedo.com>, where users may submit offers to purchase the domain from Respondent. The Panel here finds that Respondent’s offerings indicate a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant claims that Respondent registered and uses the <tdbankcom.com> domain name in bad faith. Complainant first contends that Respondent engages in a phishing survey scheme to extract personal information from readers. Phishing schemes through the guise of a survey have been used as evidence of bad faith registration. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (Forum July. 23, 2011) (finding that a domain name which resolves to a website which solicits Internet users for the completion of surveys is evidence of bad faith due to an attraction for commercial gain). As previously noted above, Respondent’s website allows users to take a “TD Bank Visitor Survey”. After the completion of the survey, users are prompted for personal information in exchange for a gift card or other prize. The Panel here finds Respondent registered and uses the <tdbankcom.com> domain name in bad faith.
Complainant additionally contends that Respondent attempts to attract Internet users for personal commercial gain by confusing users looking for Complainant and offering hyperlinks resolving to websites with similar and competing financial services as Complainant. Using a confusingly similar domain name to display hyperlinks to similar and competing services has been used as evidence of bad faith. 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)). Complainant alleges that Respondent attempts to commercially benefit from a pay-per-click fee scheme by offering hyperlinks to various services supposedly engaging in competing financial services. The Panel here finds that Respondent’s actions constitute bad faith registration and use.
Further, Complainant claims that Respondent listed the disputed domain name for sale to the public. Offering a website for sale has been used as evidence of bad faith. See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant alleges that Respondent publicly lists the disputed domain name for sale beginning at $250 on <sedo.com>, where users may submit offers to purchase the domain from Respondent. The Panel here finds that Respondent’s actions constitute bad faith registration and use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As 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 <tdbankcom.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 13, 2017
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