The Toronto-Dominion Bank v. Yu Long Deng / Shen Zhen Shi Tu Dou Ge Dian Zi Shang Wu Ke Ji You Xian Gong Si
Claim Number: FA1703001724002
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Yu Long Deng / Shen Zhen Shi Tu Dou Ge Dian Zi Shang Wu Ke Ji You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdgbank.com>, registered with HiChina Zhicheng Technology Limited.
The undersigned certifies that he 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.
David L. Kreider as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2017; the Forum received payment on March 27, 2017.
On March 29, 2017, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <tdgbank.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 April 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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 email@example.com. Also on April 3, 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 May 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider 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.
The Disputed Domain Name is a purposeful misspelling of Complainant’s TD BANK trademark and must be considered confusingly similar to the Complainant’s trademark. More specifically, the Disputed Domain Name varies from Complainant’s trademark by only one letter – Respondent has added the single letter “g” in between the terms ‘TD’ and ‘BANK’ of Complainant’s TD BANK trademark.
As the Disputed Domain Name differs from Complainant’s trademark by just one letter, Respondent’s domain 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).
The practice of “typosquatting” intentionally takes advantage of Internet users who 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 the Complainant’s trademark constitutes “typosquatting” and, thus, creates a domain name that is confusingly similar to the 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, rather, renders the domain name confusingly similar to the complainant’s marks).
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.
By registering a domain name that is a one-letter typo of complainant’s TD BANK trademark, Respondent has created a domain name that is confusingly similar to Complainant’s trademark, as well as its <tdbank.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 the Respondent would have been unaware of” the Complainant’s brands at the time the Disputed Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, TD BANK is 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). Moreover, where the Disputed Domain Name is a one-letter typo of Complainant’s TD BANK trademark, “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).
The Disputed Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Disputed Domain Name, and thus, the Disputed Domain Name must be considered as having been registered and used in bad faith pursuant to Policy ¶4(b)(iv), with no good faith use possible.
Accordingly, any use of the Disputed Domain Name for an actual website could only be in bad faith.” See Vevo LLC v. Ming Tuff, FA 1440981 (NAF May 29, 2012). Further, considering these circumstances, any use of the Disputed Domain Name whatsoever, whether actual or theoretical, would have to be in bad faith.
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant requests that English be the language of these administrative proceedings for the following reasons:
1. Respondent has shown he is able to read and write in English. Subsequent to being notified of an arbitration proceeding being filed against them, Respondent responded to the Forum, in English, requesting additional information about the case, stating: “We are domain name holders, want to know the details of the domain name infringement, please publish the results, Contact: Deng Sheng Tel: 0755-33113922,” which proves that the Respondent both understands and is able to communicate in English. Further, the Forum replied to Respondent’s communication, in English, stating: “Note, this case has not yet commenced. Once it has commenced, you will be provided with full case details. Please let me know if you have further questions.” At the time of the filing of this Amended Complaint, Respondent has neither requested to have communication resent in Chinese nor gave any indication Respondent did not understand the communication in English as provided thus far;
2. Complainant previously sent a cease-and-desist letter to Respondent, as is noted in the Complaint, and Respondent had ample time and opportunity to respond to such letter and request that communications continue in Chinese;
3. Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden Complainant and delay the proceedings and adjudication of this matter. To allow Respondent to dictate the course of this matter and further burden Complainant at this juncture would contravene the spirit of the UDRP and disadvantage Complainant;
4. Such additional delay, considering the obviously abusive nature of the Disputed Domain Name (Respondent has registered a confusingly similar domain name which differs from Complainant’s primary domain name by the addition of just one letter) poses continuing risk to Complainant and unsuspecting consumers seeking Complainant or its products;
5. The Disputed Domain Name is comprised of Latin characters;
6. The terms TDG and BANK, which are the dominant portions of the Disputed Domain Name, do not carry any specific meaning in the Chinese language; and
7. Pursuant to Paragraph 11(a) of the Rules, the Panel may determine the language of the proceedings having regard to all circumstances, and to help ensure fairness, and maintain an inexpensive and expeditious avenue for resolving domain disputes. Here, in light of Respondent’s use of the Disputed Domain Name, previous communication in English and Respondents decision to register a domain name that misappropriates the famous TD BANK mark and brand, it would unduly burden Complainant to have to arrange and pay for translation where Respondent has demonstrated behavior that disrupts Complainant’s business and has already required Complainant to devote significant time and resources to addressing this instance of abuse. Even in instances where a registration agreement was in a language other than English, past Panels have made the decision to allow a case to proceed in English based on the totality of circumstances in that case. See Immobilière Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun, D2011-2106 (WIPO February 21, 2012). See also Dama S.p.A. v. Duan Zuochun, D2012-1015 (WIPO July 5, 2012).
At the outset, it should be noted that the Panelist speaks and reads the Chinese language in addition to his native English. The Panel notes Respondent’s April 11, 2017 email to FORUM, written in Chinese, in which Respondent avers that his company lacks English language capability and therefore requires time for preparation, including preparing a defense; assembling relevant information; and locating a lawyer specialized in the field to provide translations and an opinion. Tellingly, the reference header to Respondent’s Chinese language email recites in English: “Feedback on the tdgbank.com domain name dispute notification”.
Based on the evidence, including Respondent’s April 11, 2017 email referenced above, the Panelist finds that Respondent has demonstrated his familiarity with and understanding of the English language. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
The Panel accepts Complainant’s submission that requiring the use of the Chinese language in these proceedings, in circumstances where Respondent has defaulted and has failed to file a Response, would work a particular hardship on Complainant. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case”).
The Panel decides that the language of these administrative proceedings shall be English.
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 registered its TD BANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,788,055, registered May 11, 2010), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <tdgbank.com> domain name is confusingly similar to Complainant’s TD BANK mark.
Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant has not licensed or otherwise authorized Respondent to use its TD BANK mark and Respondent is not commonly known by the Disputed Domain Name.
The Disputed Domain Name resolves to an inactive website. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent had actual knowledge of Respondent’s rights in the TD BANK mark at the time Respondent registered the Disputed Domain Name. Further, Respondent failed to make any active use of the domain name. Finally, Respondent’s misspelling of Complainant’s mark amounts to “typosquatting” and is independent evidence of bad faith in the registration and use of the Disputed Domain Name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdgbank.com> domain name be TRANSFERRED from Respondent to Complainant.
David L. Kreider, Panelist
Dated: May 2, 2017
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