The Toronto-Dominion Bank v. Shi Lei / Nexperian Holding Limited / Li Zhan
Claim Number: FA1802001770188
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Shi Lei / Nexperian Holding Limited / Li Zhan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdcardcenter.com>, <tdcardcenter.xyz>, <tddigitialbank.com>, <tdhloanonline.com>, <tdhubank.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com>. The <tdcardcenter.com>, <tddigitialbank.com>, <tdhloanonline.com>, <tdhubank.com>, tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names are registered with HiChina Zhicheng Technology Limited, and the <tdcardcenter.xyz> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2018; the Forum received payment on February 2, 2018.
On February 5, 2018, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <tdcardcenter.com>, <tdcardcenter.xyz>, <tddigitialbank.com>, <tdhloanonline.com>, <tdhubank.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) or HiChina Zhicheng Technology Limited, and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and HiChina Zhicheng Technology Limited have verified that Respondent is bound by the respective Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and HiChina Zhicheng Technology Limited registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2018 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@tdcardcenter.com, postmaster@tdcardcenter.xyz, postmaster@tddigitialbank.com, postmaster@tdhloanonline.com, postmaster@tdhubank.com, postmaster@tdiautofinace.com, postmaster@tdigitalbank.com, postmaster@tdinsuramce.com, and postmaster@tdloanonline.com. Also on February 12, 2018, 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 March 12, 2018, 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.
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 five of the disputed domain names list “Shi Lei” as the Respondent, and four list “Nexperian Holding Limited,” both of which use the same registration email. Additionally, Complainant sent a cease and desist letter. Respondent admitted to owning all five domain names, two of which are owned by Respondent “Nexperian Holding Limited” and three by “Shi Lei.” Furthermore, Respondent registered all of the disputed domain names with the same registrars: HiChina Zhicheng Technology Limited and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The Panel therefore finds find the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and that the proceeding may continue in its present form.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement relating to the domain names is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in the English language. The Panel has 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 is unable to communicate in Chinese and such a disadvantage would only delay these proceedings. Additionally, Respondent replied to Complainant’s cease and desist letters in English. See Compl. Ex. I. Furthermore, Respondent registered the disputed domain names with the TD mark and other Latin characters, which hold no specific meaning in the Chinese language.
Accordingly, the Panel exercises its discretion under UDRP Rule 11(a) to find that it is appropriate in all the circumstances that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant is the second largest bank in Canada and the sixth largest bank in North America by market capitalization and deposits. Complainant has rights in the TD (e.g., TMA396087, registered Mar. 20, 1992), TD BANK (e.g., TMA549396, registered Aug. 7, 2001), and TD AUTO FINANCE (e.g., TMA826012, registered Jun. 11, 2012) marks through their registrations with the Canadian Intellectual Property Office (“CIPO”). See Compl. Ex. A. Respondent’s <tdcardcenter.com>, <tdcardcenter.xyz>, <tddigitialbank.com>, <tdhloanonline.com>, <tdhubank.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names are confusingly similar to Complainant’s TD and TD BANK marks as Respondent intentionally misspells Complainant’s marks, adds generic terms such as “card,” “center,” “digital,” “online,” or “hu,” and adds the generic top-level domain (“gTLD”) “.com” or “.xyz.”
Respondent has no rights or legitimate interests in the infringing domain names as Respondent does not have permission to use Complainant’s marks and Respondent is not commonly known by the disputed domain names. Additionally, Respondent is using the <tdcardcenter.com>,<tddigitialbank.com>, <tdiautofinace.com>, <tdhloanonline.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names to redirect users via hyperlinks to Complainant’s competitors. See Compl. Ex. F. Furthermore, Respondent’s uses the <tdcardcenter.xyz> and <tdhubank.com> domain names to redirect users to blank websites that lack any content. Id. Finally, Respondent’s <tdhloanonline.com> , <tdigitalbank.com> and <tdloanonline.com> domain names are being offered for sale. See Compl. Ex. I.
Respondent registered and uses the domain names in bad faith. Respondent currently offers to sell the <tdhloanonline.com>, <tdigitalbank.com> and <tdloanonline.com> domain names. See Compl. Ex. I. Further, Respondent exhibits a pattern of bad faith registration and use as Respondent has lost prior UDRP proceedings and has registered multiple domain names in the current proceeding. Additionally, Respondent is using the <tdcardcenter.com>, <tddigitialbank.com>, <tdhloanonline.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names to attract users for commercial gain and redirecting users via hyperlinks to Complainant’s competitors. See Compl. Ex. F. Moreover, Respondent fails to make an active use of the <tdhubank.com> and <tdcardcenter.xyz> domain names. See Compl. Ex. F. Next, Respondent is engaging in typosquatting which is further evidence of bad faith registration and use. Respondent also employed a privacy service to shield its identity. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the TD and TD BANK marks at the time Respondent registered the disputed domain names. Respondent also failed to respond to Complainant’s cease and desist letters which further demonstrates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Canadian company engaged in the banking industry. It is the second largest bank in Canada and the sixth largest bank in North America by market capitalization and deposits.
2. Complainant has established its trademark rights in the TD mark (e.g., TMA396087, registered Mar. 20, 1992), the TD BANK mark (e.g., TMA549396, registered Aug. 7, 2001), and the TD AUTO FINANCE mark (e.g., TMA826012, registered Jun. 11, 2012) by registering the same with the Canadian Intellectual Property Office (“CIPO”).
3. Respondent registered the <tdcardcenter.com>, <tdcardcenter.xyz>, <tddigitialbank.com>, <tdhloanonline.com>, <tdhubank.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names on:
|
<tdcardcenter.com> |
December 19, 2017 |
|
<tdcardcenter.xyz> |
December 19, 2017 |
|
<tddigitialbank.com> |
November 7, 2017 |
|
<tdhloanonline.com> |
November 5, 2017 |
|
<tdhubank.com> |
December 19, 2017 |
|
<tdiautofinace.com> |
November 7, 2017 |
|
<tdigitalbank.com> |
November 7, 2017 |
|
<tdloanonline.com> |
November 5, 2017 |
4. Respondent uses the <tdcardcenter.com>,<tddigitialbank.com>, <tdiautofinace.com>, <tdhloanonline.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names to redirect users via hyperlinks to Complainant’s competitors. Respondent uses the <tdcardcenter.xyz> and <tdhubank.com> domain names to redirect users to blank websites that lack any content. Respondent’ has offered the <tdhloanonline.com>, <tdigitalbank.com> and <tdloanonline.com> domain names for sale.
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 next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TD, TD BANK and TD AUTO FINANCE marks. Complainant argues Respondent’s <tdcardcenter.com>, <tdcardcenter.xyz>, <tddigitialbank.com>, <tdhloanonline.com>, <tdhubank.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names are confusingly similar to Complainant’s marks as Respondent intentionally misspells Complainant’s marks, adds generic terms such as “card,” “center,” “digital,” “online,” and “hu,” and adds the gTLD “.com” or “.xyz.” Such changes do not negate any confusing similarity between the disputed domain name and the mark per Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”). Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s TD, TD BANK, and TD AUTO FINANCE marks per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TD, TD BANK and TD AUTO FINANCE trademarks and to use them in its domain names, making only the amendments referred to above;
(b) Respondent registered the disputed domain names on the dates set out above;
(c) Respondent uses the <tdcardcenter.com>,<tddigitialbank.com>, <tdiautofinace.com>, <tdhloanonline.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names to redirect users via hyperlinks to Complainant’s competitors. Respondent uses the <tdcardcenter.xyz> and <tdhubank.com> domain names to redirect users to blank websites that lack any content. Respondent has offered the <tdhloanonline.com>, <tdigitalbank.com> and <tdloanonline.com> domain names for sale;
(e) Complainant argues Respondent has no rights or legitimate interests in the <tdcardcenter.com>, <tdcardcenter.xyz>, <tddigitialbank.com>, <tdhloanonline.com>, <tdhubank.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names as Respondent is not permitted to use Complainant’s marks and Respondent is not commonly known by any of the disputed domain names. In the event a respondent fails to submit a response, panels have relied on WHOIS information to determine whether respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). As Complainant contends, WHOIS information for the disputed domain names identifies the Respondent as “Shi Lei / Nexperian Holding Limited.” See Compl. Ex. E. Therefore, the Panel finds Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent does not use the <tdcardcenter.com>, <tddigitialbank.com>, <tdiautofinace.com>, <tdhloanonline.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent redirects users via hyperlinks to Complainant’s competitors. Featuring hyperlinks at a disputed domain name is generally not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). 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.”). Complainant provides screenshots of the resolving webpages for the six domain names, all of which contain hyperlinks related to loan and mortgage services. See Compl. Ex. F. Therefore, the Panel finds that Respondent’s use of competing hyperlinks does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant submits Respondent’s <tdhubank.com> and <tdcardcenter.xyz> domain names resolve into inactive sites with no content. Inactive holding of a disputed domain name generally does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant’s screenshots of Respondent’s <tdhubank.com> and <tdcardcenter.xyz> domain names show that the domain names resolve to blank websites with no content. See Compl. Ex. F. Therefore, the Panel finds Respondent’s inactive holding of the two domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii);
(h) Complainant contends Respondent’s <tdhloanonline.com>, <tdigitalbank.com> and <tdloanonline.com> domain names are being offered for sale at prices that far exceed Respondent’s out-of-pocket costs. Offering to sell a disputed domain name may serve as evidence that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). 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).”). As Complainant argues, Respondent attempted to sell the disputed domain names to Complainant for $1,000. See Compl. Ex. I. The Panel notes that the email correspondence provided by Complainant shows that Respondent appears to solicit five of the domain names to Complainant, including: <tdhloanonline.com>, <tddigitialbank.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com>. Therefore, the Panel finds Respondent’s attempts to sell the disputed domain names demonstrates Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
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 argues Respondent has attempted to sell the <tdhloanonline.com>, <tdigitalbank.com> and <tdloanonline.com> domain names, which indicates bad faith registration and use. Offering to sell a disputed domain name may be evidence of bad faith registration and use per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). As Complainant argues, Respondent offered to sell the disputed domain name to Complainant for $1,000 in an email. See Compl. Ex. I. Thus, the Panel finds Respondent’s attempts to sell the three domain names demonstrates bad faith registration and use per Policy ¶ 4(b)(i).
Secondly, Complainant contends Respondent exhibits a pattern of bad faith registration and use as Respondent has been an adverse party in prior UDRP proceedings and registered multiple disputed domain names in the present case. Registering multiple disputed domain names and being an adverse party in prior UDRP cases may be evidence of a pattern of bad faith registration and use per Policy ¶ 4(b)(ii). 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)); see also Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 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 contends Respondent registered eight disputed domain names all incorporating Complainant’s TD or TD BANK mark. Additionally, Complainant provides a list of prior UDRP decisions involving Respondent “Shi Lei,” including Amazon Technologies, Inc., Amazon.com Inc. and Goodreads, Inc. v. Shi Lei aka shilei, D2014-1093 (WIPO September 11, 2014). See Compl. pg. 13. Thus, the Panel finds Respondent has engaged in a pattern of bad faith registration and use per Policy ¶ 4(b)(ii).
Thirdly, Complainant argues Respondent attracts users to the <tdcardcenter.com>, <tddigitialbank.com>, <tdhloanonline.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names and redirects users via hyperlinks to Complainant’s competitors. Featuring competing hyperlinks at a disputed domain name for pecuniary gain may indicate bad faith registration and use per 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)). Complainant provides screenshots of the resolving webpages, which do appear to feature links that offer loan and mortgage services at third-party websites. See Compl. Ex. F. Therefore, the Panel finds Respondent featuring competing hyperlinks at the disputed domain names demonstrates bad faith registration and use per Policy ¶ 4(b)(iv).
Fourthly, Complainant submits that Respondent inactively holds the <tdhubank.com> and <tdcardcenter.xyz> domain names. 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).”). Complainant provides screenshots of the blank webpages associated with the two domain names listed above. See Compl. Ex. F. Accordingly, the Panel agrees that Respondent fails to use the <tdhubank.com> and <tdcardcenter.xyz> domain names in bad faith.
Fifthly, Complainant claims Respondent had actual and constructive knowledge of Complainant’s rights in the TD, TD BANK, and TD AUTO FINANCE marks at the time Respondent registered the <tdcardcenter.com>, <tdcardcenter.xyz>, <tddigitialbank.com>, <tdhloanonline.com>, <tdhubank.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names. While constructive notice is generally regarded as insufficient to support a finding of bad faith, a Panel may conclude on the evidence that Respondent had actual notice of Complainant's mark and registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). Complainant contends that the fame and use of the disputed domain names to feature competing hyperlinks indicate Respondent had actual knowledge of Complainant’s rights in the TD and TD BANK marks and the Panel agrees. See Compl. Ex. F. Therefore, the Panel finds Respondent had actual knowledge of Complainant’s rights in the TD and TD BANK marks at the time Respondent registered the disputed domain names and this demonstrates bad faith registration and use per Policy ¶ 4(a)(iii).
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 <tdcardcenter.com>, <tdcardcenter.xyz>, <tddigitialbank.com>, <tdhloanonline.com>, <tdhubank.com>, <tdiautofinace.com>, <tdigitalbank.com>, and <tdloanonline.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: March 14, 2018
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