The Toronto-Dominion Bank v. hochan liu / Kathleen Kim / Luther Fleming
Claim Number: FA1711001759509
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is hochan liu / Kathleen Kim / Luther Fleming (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdauttofinance.com>, <tcdanadatrust.com>, <tdacnadatrust.com>, <tdcanaadtrust.com>, and <tdcnaadatrust.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 or knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 21, 2017; the Forum received payment on November 21, 2017.
On November 21, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <tdauttofinance.com>, <tcdanadatrust.com>, <tdacnadatrust.com>, <tdcanaadtrust.com>, and <tdcnaadatrust.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 December 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@tdauttofinance.com, postmaster@tcdanadatrust.com, postmaster@tdacnadatrust.com, postmaster@tdcanaadtrust.com, and postmaster@tdcnaadatrust.com. Also on December 6, 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 December 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a large financial institution that conducts its operations all around the world. Complainant uses its marks for financial, banking and related businesses, goods, and services. Complainant registered the TD (e.g. Reg. No. TMA396087, registered Mar. 20, 1992), TD AUTO FINANCE (e.g. Reg. No. TMA826012, registered June 11, 2012), and CANADA TRUST (e.g. Reg. No. TMA409300, registered Mar. 12, 1993) marks with the Canadian Intellectual Property Office (“CIPO”). See Compl. Ex. A. Respondent’s <tdauttofinance.com> domain name is confusingly similar to Complainant’s TD AUTO FINANCE mark as it simply adds an additional “t” to the mark along with the generic top-level domain (“gTLD”) “.com.” Additionally, Respondent’s <tcdanadatrust.com>, <tdacnadatrust.com>, <tdcanaadtrust.com>, and <tdcnaadatrust.com> domain names are all confusingly similar to Complainant’s mark as they combine Complainant’s TD and CANADA TRUST marks, transpose various letters within the marks, and add the gTLD “.com.”
Respondent has no rights or legitimate interests in the <tdauttofinance.com>, <tcdanadatrust.com>, <tdacnadatrust.com>, <tdcanaadtrust.com>, and <tdcnaadatrust.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use any of Complainant’s marks. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent’s <tdauttofinance.com> and <tcdanadatrust.com> domain names direct users to a website that features adult content. See Compl. Ex. F. Respondent’s <tdcanaadtrust.com> domain name redirects users to a website featuring links to third-party websites, some of which directly compete with Complainant's business, presumably to profit from pay-per-click fees. See Compl. Ex. F. Respondent’s final two domain names, <tdacnadatrust.com> and <tdcnaadatrust.com>, redirect users to websites that lack substantive content. See Compl. Ex. F.
Respondent registered and uses the <tdauttofinance.com>, <tcdanadatrust.com>, <tdacnadatrust.com>, <tdcanaadtrust.com>, and <tdcnaadatrust.com> domain names in bad faith. Respondent has demonstrated an intent to sell, rent, or otherwise transfer the domain names for valuable consideration in excess of out-of-pocket expenses when it offered to transfer the domain names to Complainant for $700.00. See Compl. Ex. H (email between Complainant and Respondent). Complainant also has previously won a UDRP case against Respondent which was filed based on very similar domain name registrations. See Compl. pg. 10, 13 (list of prior UDRP decisions against Respondent). Further, Respondent creates a likelihood of confusion with Complainant and its trademarks with the <tdcanaadtrust.com> domain name to confuse unsuspecting internet users looking for Complainant’s services, and to mislead internet users as to the source of the domain name and pay-per-click website therein. See Compl. Ex. F. Additionally, Respondent’s <tdauttofinance.com> and <tcdanadatrust.com> domain names feature sexually-explicit, pornographic content. See Compl. Ex. F. Moreover, Respondent’s <tdacnadatrust.com> and <tdcnaadatrust.com> domain names redirect Internet users to holding pages which lack substantive content and are not being used. See Compl. Ex. F. Furthermore, Respondent intentionally misspells Complainant’s marks incorporated in the domain names, which constitutes typosquatting. Finally, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business by registering numerous domain names incorporating slightly misspelled versions of Complainant’s registered and famous marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that all of the domain names are owned by the same entity for the following reasons: (1) the domain names were registered on the same day; (2) the WHOIS information was identical for the domain names through February 6, 2017; (3) the email addresses are the same for all domain names; (4) Complainant received a response to its cease and desist letter, where Respondent said it would transfer all five domain names to Complainant for a fee and never denied owning all of the domain names; (5) all of the current WHOIS information is unreliable and appears to be fake; and, (6) the registrar is the same for all domain names and has never changed.
The Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and that the disputed domain names are therefore registered by the same domain name holder.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Complainant has alleged that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant argues that the proceedings should continue in the English language for the following reasons: (1) Complainant is unable to communicate in Japanese and would be unfairly disadvantaged and burdened, and the proceedings would be delayed; (2) the disputed domain names use Latin characters, and the content available on the domains are entirely in English; and, (3) Respondent replied to Complainant’s cease and desist letter in the English language.
Having regard to all of those matters, the Panel finds that the proceeding should be conducted in the English language
1. Complainant is a Canadian company that is a large financial institution that conducts its operations all around the world.
2. Complainant registered the TD (e.g. Reg. No. TMA396087, registered Mar. 20, 1992), TD AUTO FINANCE (e.g. Reg. No. TMA826012, registered June 11, 2012), and CANADA TRUST (e.g. Reg. No. TMA409300, registered Mar. 12, 1993) marks with the Canadian Intellectual Property Office (“CIPO”), thus establishing its trademark rights in those marks.
3. Respondent registered all of the domain names on December 12, 2016.
4. Respondent’s <tdauttofinance.com> and <tcdanadatrust.com> domain names direct users to a website that features adult content. Respondent’s <tdcanaadtrust.com> domain name redirects users to a website featuring links to third-party websites, some of which directly compete with Complainant's business, presumably to profit from pay-per-click fees. Respondent’s final two domain names, <tdacnadatrust.com> and <tdcnaadatrust.com>, redirect users to websites that lack substantive content.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has registered the TD (e.g. Reg. No. TMA396087, registered Mar. 20, 1992), TD AUTO FINANCE (e.g. Reg. No. TMA826012, registered June 11, 2012), and CANADA TRUST (e.g. Reg. No. TMA409300, registered Mar. 12, 1993) marks with the CIPO. See Compl. Ex. A. Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”). Accordingly, the Panel finds that Complainant has established rights in the TD, TD AUTO FINANCE, AND CANADA TRUST marks for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to one of Complainant’s marks. Complainant argues that Respondent’s <tdauttofinance.com>, <tcdanadatrust.com>, <tdacnadatrust.com>, <tdcanaadtrust.com>, and <tdcnaadatrust.com> domain names are identical or confusingly similar to one of Complainant’s respective mark as they include one or two of Complainant’s marks and the gTLD “.com,” and either transpose two letters or add one. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶4 (a)(i). See Google, Inc. v. DktBot.org, FA 286993 (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).”); see also Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”); see also 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 Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Here, Respondent’s <tdauttofinance.com> domain name contains Complainant’s TD AUTO FINANCE mark and adds an additional “t” to the mark along with the gTLD “.com.” Respondent’s <tcdanadatrust.com>, <tdacnadatrust.com>, <tdcanaadtrust.com>, and <tdcnaadatrust.com> domain names combine Complainant’s TD and CANADA TRUST marks, transpose various letters within the marks, and add the gTLD “.com.” The Panel therefore finds that the disputed domain names are all confusingly similar to Complainant’s marks under Policy ¶4 (a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take one of Complainant’s aforesaid marks and has used it in its entirety in the domain names, making only the minor changes referred to above;
(b) Respondent registered the disputed domain names on December 12, 2016;
(c) Respondent has caused the <tdauttofinance.com> and <tcdanadatrust.com> domain names to direct users to a website that features adult content. Respondent’s <tdcanaadtrust.com> domain name redirects users to a website featuring links to third-party websites, some of which directly compete with Complainant's business, presumably to profit from pay-per-click fees. Respondent’s final two domain names, <tdacnadatrust.com> and <tdcnaadatrust.com> redirect users to websites that lack substantive content;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the domain names at issue. 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). Complainant provides the initial and subsequent registration information, which identifies various registrants as associated with the domain names: “houchang li / li houchang,” “Luther Fleming,” “Kathleen Kim,” and “hochan liu.” See Compl. Ex. E. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by its marks. Panels may use these 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). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the marks in any domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent’s <tdauttofinance.com> and <tcdanadatrust.com> domain names direct users to a website that features adult content. Using a confusingly similar domain name in connection with adult oriented material generally does not constitute a bona fide offer of goods or services or a legitimate noncommercial or fair use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant provides screenshots of the resolving webpages: the <tdauttofinance.com> appears to host a pornographic webpage directly, while the <tcdanadatrust.com> appears to redirect users to the <gggav65651.com> domain name, which appears also to contain pornographic material. See Compl. Ex. F. As such, the Panel agrees with Complainant and finds that Respondent’s use of the <tdauttofinance.com> and <tcdanadatrust.com> domain names in connection with adult oriented material fails to convey any rights or legitimate interests in the domain names;
(g) Complainant argues that Respondent uses the <tdcanaadtrust.com> domain name to resolve in a website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to benefit commercially from pay-per-click fees. Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The screenshot provided by Complainant shows that the resolving webpage for the domain name contains links such as “Online Banking” and “Personal Trust Services.” See Compl. Ex. F. Accordingly, the Panel finds that Respondent uses the <tdcanaadtrust.com> domain name to offer competing hyperlinks, failing to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(h) Complainant contends that Respondent’s final two domain names, <tdacnadatrust.com> and <tdcnaadatrust.com>, redirect users to websites that lack substantive content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots for these two domain names, both of which simply contain their domain name typed out on the resolving webpages. See Compl. Ex. F. Accordingly, the Panel finds that Respondent fails to use the <tdacnadatrust.com> and <tdcnaadatrust.com> domain names actively, thus failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent offered to sell the disputed domain names to Complainant while responding to Complainant’s cease and desist letter. Offering to sell confusingly similar domain names can evince bad faith registration under Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). Complainant provides an email conversation between Complainant and Respondent, which shows Respondent offering to transfer the domain names to Complainant for $700.00. See Compl. Ex. H. The Panel uses Respondent’s offering of the domain names for sale directly to the Complainant as evidence of bad faith registration.
Secondly, Complainant argues that Respondent registered the disputed domain names in bad faith as Respondent has prior adverse UDRP decisions against it. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant submits it has previously won a UDRP case against Respondent, which it avers was filed based on very similar domain registrations, and also provides other UDRP decisions involving Respondent. See Compl. pg. 10, 13. Accordingly, the Panel finds that Respondent registered the disputed domain names in bad faith based on Respondent’s prior history in UDRP proceedings.
Thirdly, Complainant argues that Respondent registered and uses the <tdcanaadtrust.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to benefit commercially by offering competing pay-per-click links. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith 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)). As noted above, Complainant provides a screenshot of the resolving webpage, which appears to contain hyperlinks to services in competition with Complainant. See Compl. Ex. F. Accordingly, the Panel agrees that Respondent attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Fourthly, Complainant claims that Respondent uses the <tdauttofinance.com> and <tcdanadatrust.com> domain names to feature sexually-explicit, pornographic content. Using a confusingly similar domain name in connection with adult oriented material can provide evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 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).”). As mentioned previously, Complainant provides screenshots of the resolving webpages, both of which appear to resolve to sites containing pornographic content. See Compl. Ex. F. Accordingly, the Panel agrees with Complainant and finds that Respondent’s use of the <tdauttofinance.com> and <tcdanadatrust.com> domain names in connection with adult oriented material constitutes bad faith registration and use.
Fifthly, Complainant claims that Respondent inactively holds the <tdacnadatrust.com> and <tdcnaadatrust.com> domain names, as Respondent fails to display any substantive material. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Once again, Complainant’s provided screenshots of the landing pages only contain domain names written out. See Compl. Ex. F. The Panel agrees that Respondent fails to make an active use of the <tdacnadatrust.com> and <tdcnaadatrust.com> domain names and hold that Respondent registered and uses those two domain names in bad faith per Policy ¶ 4(a)(iii).
Sixthly, Complainant contends that Respondent intentionally misspells Complainant’s marks incorporated in the domain names, which constitutes typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). The domain names each contain one or two of Complainant’s marks, and either add one letter, or transpose two letters. Thus, as the Panel agrees that Respondent engages in typosquatting, then the Panel uses this as further evidence of Respondent’s bad faith.
Seventhly, Complainant submits that Respondent had actual knowledge of Complainant’s marks at the time of registering the domain names at issue. Actual knowledge at the time of registering confusingly similar domain names can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business by registering numerous domain names incorporating slightly misspelled versions of Complainant’s registered and famous marks. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s marks, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using Complainant’s marks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdauttofinance.com>, <tcdanadatrust.com>, <tdacnadatrust.com>, <tdcanaadtrust.com>, and <tdcnaadatrust.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 2, 2018
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