The Toronto-Dominion Bank v. Reggie Rags
Claim Number: FA1803001778853
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Reggie Rags (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadastrusts.com>, registered with NameCheap, Inc.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2018; the Forum received payment on March 26, 2018.
On March 26, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <tdcanadastrusts.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 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@tdcanadastrusts.com. Also on March 27, 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 April 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant has rights in the TD (e.g. Reg. No. TMA396087, registered Mar. 20, 1992) and CANADA TRUST (e.g. Reg. No. TMA409300, registered Mar. 12, 1993) marks through their registration with the Canadian Intellectual Property Organization (“CIPO”). Respondent’s <tdcanadastrusts.com> domain name is confusingly similar to Complainant’s mark as it merely combines Complainant’s TD and CANADA TRUST marks and adds the letter “s” to the CANADA and TRUST portion of the mark, while appending the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <tdcanadastrusts.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the registrant as “Reggie Rags.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent previously used the domain name to redirect Internet users to a website that copied and attempted to duplicate Complainant’s official website by featuring Complainant’s TD mark. Further, Respondent copies Complainant’s website to trick Internet users into logging in and divulging personal information. Additionally, Respondent offered the domain name for sale at a price which greatly exceeds out-of-pocket expenses.
Respondent registered and uses the <tdcanadastrusts.com> domain name in bad faith. When Complainant mailed its cease and desist letter to Respondent regarding the infringing use of the domain name, Respondent responded by offering to sell the domain name to Complainant. Further, Respondent’s domain name creates a likelihood of confusion by misappropriating the Complainant’s trademarks in the infringing domain name to host a website which designed to be a near exact replica of Complainant’s actual website for the purposes of phishing for information. Additionally, Respondent, by registering a domain name so closely resembling Complainant’s famous and well-known TD BANK mark, knew or should have known of Complainant’s rights in the mark prior to registering the domain name at issue. Finally, Respondent registered the domain name using a privacy service to conceal its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <tdcanadastrusts.com> domain name.
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 claims rights in the TD (e.g. Reg. No. TMA396087, registered Mar. 20, 1992) and CANADA TRUST (e.g. Reg. No. TMA409300, registered Mar. 12, 1993) marks through their registration with the CIPO. 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 and CANADA TRUST marks under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <tdcanadastrusts.com> domain name is confusingly similar to Complainant’s marks as it merely combines Complainant’s TD and CANADA TRUST marks and adds the letter “s” to the CANADA and TRUST portion of the mark, while appending the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See 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 LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”); 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). The Panel finds that the <tdcanadastrusts.com> domain name is confusingly similar to the TD and CANADA TRUST marks under Policy ¶4(a)(i).
Complainant has proved this element.
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), 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.”).
Complainant contends that Respondent has no rights or legitimate interests in the <tdcanadastrusts.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Reggie Rags” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TD BANK mark. 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 alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the mark for any purpose. Accordingly, the Panel finds that Respondent is not commonly known by the <tdcanadastrusts.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant contends that Respondent previously used the domain name to redirect Internet users to a website that copied and attempted to duplicate Complainant’s official website by featuring Complainant’s TD mark. Passing off as a complainant can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage along with a screenshot of its own webpage, both of which appear to contain similar color schemes and appear to display similar content. The Panel finds that Respondent attempts to pass itself off as Complainant, indicative of possessing no rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent uses the disputed domain name in connection with a phishing scheme to obtain information from users. Phishing schemes can evince a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant claims that Respondent uses the login option on the resolving webpage to obtain users’ information when they attempt to log in to the webpage. The Panel finds Respondent attempts to phish for information, and does not use the domain name in connection with 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).
Finally, Complainant claims that Respondent offered the domain name for sale at a price which greatly exceeds out-of-pocket expenses. Offering a confusingly similar domain name for sale in excess of out of pocket expenses can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Complainant provides a copy of email correspondence between itself and Respondent, where Respondent writes “I am willing to offer the domain to TD for the fair price of $5000.” The Panel finds that Respondent offered to sell the disputed domain name directly to Complainant at a price that greatly exceeds out-of-pocket-costs and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant claims that Respondent offered to sell the <tdcanadastrusts.com> domain name directly to Complainant. Offering to sell a confusingly similar domain name can evince bad faith registration and use 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).”). As noted above, Complainant provides an email response by Respondent where it writes “I am willing to offer the domain to TD for the fair price of $5000.” The Panel finds Respondent’s offering of the domain name for sale directly to the Complainant is evidence of bad faith registration and use for the purposes of Policy ¶ 4(b)(i).
Complainant argues that Respondent’s domain name creates a likelihood of confusion by misappropriating the Complainant’s trademarks in the infringing domain name to host a website which was designed to be a near exact replica of Complainant’s actual website for the purposes of phishing for information. Using a disputed domain name that trades upon the goodwill of a complainant to phish for information can evince bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As noted above, the screenshots of Respondent’s website and its own website show that Respondent employs a very similar color scheme and displays similar content to that of Complainant. Complainant claims Respondent benefits from phishing for information using the login option located on the resolving domain. The Panel finds Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant claims that Respondent had actual or constructive knowledge of Complainant’s TD BANK mark at the time of registering the <tdcanadastrusts.com> domain name. However, the Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge does adequately 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, by registering a domain name so closely resembling Complainant’s famous and well-known TD and CANADA TRUST marks, must have been aware of Complainant’s rights in the marks prior to registering the domain name at issue. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, and registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <tdcanadastrusts.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: April 19, 2018
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