THE TORONTO-DOMINION BANK v. Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho
Claim Number: FA1703001724017
Complainant is THE TORONTO-DOMINION BANK (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdauutofinance.com>, <tdautofinancce.com>, <tdautoofinance.com>, and <tdcanadtarust.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 March 27, 2017; the Forum received payment on March 27, 2017.
On March 30, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <tdauutofinance.com>, <tdautofinancce.com>, <tdautoofinance.com>, and <tdcanadtarust.com> domain names are registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the names. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@tdauutofinance.com, postmaster@tdautofinancce.com, postmaster@tdautoofinance.com, postmaster@tdcanadtarust.com. Also on April 7, 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 April 10, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant operates in the banking and finance industry. In furtherance of its business operations, Complainant has registered several marks with trademark authorities. For example, Complainant has registered the TD AUTO FINANCE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,259,945, registered Dec. 18, 2012), the TD mark with the USPTO (e.g., Reg. No. 1,649,009, registered June 25, 1991), and the CANADA TRUST mark with the Canadian Intellectual Property Office (“CIPO”) (TMA409300, registered Mar. 12, 1993). As to confusing similarity, the <tdauutofinance.com>, <tdautofinancce.com>, and <tdautoofinance.com> domain names incorporate the TD AUTO FINANCE mark—less the spaces—and merely incorporate minor misspellings, as well as the generic top-level domain (“gTLD”) “.com.” The <tdcanadtarust.com> domain name combines the TD and CANADA TRUST marks—less the spacing—and merely transposes the “T” and “A” in CANADA TRUST, while adding the gTLD “.com.”
Respondent has no rights or legitimate interests in or to <tdauutofinance.com>, <tdautofinancce.com>, <tdautoofinance.com>, and <tdcanadtarust.com>. Respondent is not commonly known by the disputed domain names, and Complainant has not given Respondent any license, authorization, or permission to utilize any of Complainant’s marks in any respect. Further, Respondent has not utilized the domain names with any bona fide offering of goods or services or for any legitimate noncommercial or fair use because the resolving websites display adult oriented material.
Respondent registered and used <tdauutofinance.com>, <tdautofinancce.com>, <tdautoofinance.com>, and <tdcanadtarust.com> in bad faith. Respondent offered the domain names for sale to Complainant—conduct proscribed by Policy ¶ 4(b)(i). Further, Respondent’s registration of multiple infringing domain names imputes Policy ¶ 4(b)(ii). Next, the resolution of the domain names to adult oriented material warrants a finding of nonexclusive bad faith under Policy ¶ 4(a)(iii) as this use tarnishes Complainant’s goodwill in its marks. Lastly, Respondent has demonstrated typosquatting and actual/constructive knowledge of Complainant’s marks and its rights in the marks, both evincing bad faith under Policy ¶ 4(a)(iii).
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, TD AUTO FINANCE, and CANADA TRUST, as well as numerous related marks, that Complainant has continuously used in connection with its provision of financial, and business, goods and services, since at least as early as 1955. Complainant also owns and operates numerous websites incorporating its marks including <tdbank.com> and <td.com>.
Respondent is Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho, of China. Respondent’s registrar’s address is listed as Tokyo, Japan. The Panel notes that <tdauutofinance.com>, <tdautofinancce.com>, <tdautoofinance.com>, and <tdcanadtarust.com> were registered on or about December 12, 2016.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the parties in control of the domain names at issue are effectively 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 this case should proceed against Respondents for the following reasons:
1. The Whois information for the Disputed Domain Names was identical up until at least December 19, 2016.
2. Between December 20, 2016 and January 6, 2017, the Registrant Name and Registrant Organization on all four domains changed to reflect what had previously been listed as the Admin Name and Admin Organization.
3. Subsequent to Complainant’s sending of a Cease and Desist letter on January 9, 2017, three of the four domains again changed Registrant information on January 10, 2017.
4. Complainant’s Cease and Desist letter referenced all four Disputed Domain Names. Respondent, in its multiple responses, made no effort to deny it was the holder of all four domain names, despite continued communication after changes to the Whois information.
5. The current public Whois information is not reliable and cannot be used in the determination of a single entity. The current addresses listed in the Whois for all four domains do not appear to be valid addresses. Furthermore, Registrant’s response appears to be from a ‘black john,’ a name which has not at any time been associated with any of the Disputed Domain Names and is further evidence that Respondent is attempting to hide his true identity and frustrate the proceeding.
6. The Registrar, GMO Internet, Inc., and Name Servers, dnspod.com, for all four Domain Names has never changed despite the contact information being changed.
7. The current websites connected to the Domain Names display the exact same content and have displayed the same content since prior to Complainant’s sending of Cease and Desist letter.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Japanese language Registration Agreement. Complainant supports its assertion with the following:
1. Respondent has shown he is able to read and write in English. Complainant sent a cease-and-desist letter to Respondent, and Respondent answered, in English, requesting compensation for the Disputed Domain Names, stating “Can transfer the domain to you with $300 one domain” and “$100 one domain transfer fee. Otherwise we go to court,” which proves that the Respondent both understands and is able to communicate in English;
2. Complainant is unable to communicate in Japanese 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;
3. Such additional delay, considering the obviously abusive nature of the Disputed Domain Name and its website (Respondent has registered multiple confusingly similar domain names and is using the website found at the Disputed Domain Names to display pornographic content) poses continuing risk to Complainant and unsuspecting consumers seeking Complainant or its products;
4. The Disputed Domain Name is comprised of Latin characters;
5. The terms CANADA & TRUST and AUTO & FINANCE, which are the dominant portions of the Disputed Domain Names, do not carry any specific meaning in the Japanese language.
Based on the above, the Panel finds Pursuant to UDRP Rule 11(a), that Complainant has provided strong evidence to suggest that Respondent is likely conversant and proficient in the English language. After considering the circumstances of the present case, the Panel finds that the proceeding will be conducted in 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 operates in the banking and finance industry. In furtherance of its business operations, Complainant has registered several marks with trademark authorities. For example, Complainant has registered the TD AUTO FINANCE mark with the USPTO (Reg. No. 4,259,945, registered Dec. 18, 2012), the TD mark with the USPTO (e.g., Reg. No. 1,649,009, registered June 25, 1991), and the CANADA TRUST mark with the Canadian Intellectual Property Office (“CIPO”) (TMA409300, registered Mar. 12, 1993). Registrations with the USPTO and CIPO have been considered satisfactory demonstrations of Policy ¶ 4(a)(i) rights. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also State Farm Mutual Automobile Insurance Company v. VistaPrint Technologies c/o Vistaprint North American Services Corp., FA 1617798 (Forum June 3, 2015) (concluding that “Complainant’s valid registration of the STATEFARM.COM mark with the CIPO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). The Panel here finds that Complainant’s trademark registrations of TD, TD AUTO FINANCE, and CANADA TRUST with the USPTO and CIPO sufficiently demonstrate Complainant’s Policy ¶ 4(a)(i) rights in the marks.
Next, Complainant argues the <tdauutofinance.com>, <tdautofinancce.com>, and <tdautoofinance.com> domain names incorporate the TD AUTO FINANCE mark—less the spaces—and merely incorporate minor misspellings, as well as the gTLD “.com.” Eliminating spaces, duplicating letters, and adding TLDs have not been considered distinguishing features. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Further, Complainant argues that the <tdcanadtarust.com> domain name combines the TD and CANADA TRUST marks—less the spacing—and merely transposes the “T” and “A” in CANADA TRUST, while adding the gTLD “.com.” Transposition of letters and combination of marks also may not overcome a finding of confusing similarity. See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name); see also Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”). The Panel here finds that the alterations Respondent has made to Complainant’s marks to create the disputed domain names do not create any distinctions that overcome Complainant’s rights per 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 argues that Respondent has no rights or legitimate interests in or to <tdauutofinance.com>, <tdautofinancce.com>, <tdautoofinance.com>, and <tdcanadtarust.com>. Complainant argues that Respondent is not commonly known by the disputed domain names, and Complainant has not given Respondent any license, authorization, or permission to utilize any of Complainant’s marks in any respect. Where a response has not been submitted, WHOIS information is generally considered dispositive of Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information lists “Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho” as registrant, and Respondent has submitted nothing to refute Complainant’s contentions. The Panel finds that Respondent has failed to show it is commonly known by the disputed domains under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent has not utilized the domain names with any bona fide offering of goods or services or for any legitimate noncommercial or fair use because the resolving websites display adult oriented material. Adult oriented use has not been considered representative of rights or legitimate interests. See Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent’s arrangement of explicit materials on the resolving websites at issue do not represent a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain names.
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 asserts that Respondent registered and used <tdauutofinance.com>, <tdautofinancce.com>, <tdautoofinance.com>, and <tdcanadtarust.com> in bad faith. First, Respondent offered the domain names for sale to Complainant—conduct proscribed by Policy ¶ 4(b)(i). Offers for sale may amount to bad faith. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). The Panel may take note that Respondent offered the domain names (or just one domain name—it is not clear) to Complainant for $300. The Panel finds Respondent’s offer amounts to bad faith under Policy ¶ 4(b)(i) as Respondent’s offer is presumably in excess of its out-of-pocket costs.
Complainant contends that Respondent’s registration of multiple infringing domain names imputes Policy ¶ 4(b)(ii). Bad faith under this prong has been found where even fewer domain names were at issue. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Here, four domain names are alleged to incorporate iterations of Complainant’s marks. The Panel here finds that Respondent has engaged in Policy ¶ 4(b)(ii) bad faith.
Next, Complainant avers that the resolution of the domain names to adult oriented material warrants a finding of nonexclusive bad faith under Policy ¶ 4(a)(iii) as this use tarnishes Complainant’s goodwill in its marks. Adult oriented material has been considered to constitute bad faith. See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). The Panel here finds that Respondent’s use of the domain names, as evidenced by various screen shots, is clearly adult-oriented use and therefore is nonexclusive evidence of bad faith under Policy ¶ 4(a)(iii).
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 <tdauutofinance.com>, <tdautofinancce.com>, <tdautoofinance.com>, and <tdcanadtarust.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 17, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page