The Toronto-Dominion Bank v. I S / ICS INC
Claim Number: FA1805001784544
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is I S / ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbankbusinessonline.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 1, 2018; the Forum received payment on May 1, 2018.
On May 1, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdbankbusinessonline.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@tdbankbusinessonline.com. Also on May 4, 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 May 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <tdbankbusinessonline.com> domain name is confusingly similar to Complainant’s TD BANK mark.
2. Respondent does not have any rights or legitimate interests in the <tdbankbusinessonline.com> domain name.
3. Respondent registered and uses the <tdbankbusinessonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada and sixth largest in North America. Complainant holds a registration for its TD BANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,788,055, registered May 11, 2010).
Respondent registered the <tdbankbusinessonline.com> domain name on October 5, 2017, and uses it to resolve to a website that attempts to infect Internet users’ computers with malware.
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 Panel finds that Complainant has rights in the TD BANK mark under Policy ¶ 4(a)(i) based upon its registration with the USPTO. 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)).
Respondent’s <tdbankbusinessonline.com> domain name contains the TD BANK mark and adds the descriptive terms “business” and “online”, as well as the gTLD “.com.” Panels have consistently found that slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark, along with gTLDs, do not distinguish a domain name from a mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” Accordingly, the Panel finds that Respondent’s <tdbankbusinessonline.com> domain name is confusingly similar to Complainant’s TD BANK mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent has no rights or legitimate interests in <tdbankbusinessonline.com> and is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the TD BANK mark in any way. The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record currently identifies the registrant of the disputed domain name as “I S / ICS INC.” Thus, the Panel finds that there is no evidence on the record that Respondent is commonly known by the disputed domain name. 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.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name); see also 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 further argues that Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by the failure to use the name to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant avers that Respondent used the domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly competed with Complainant’s business, and provides supporting screenshots. Offering links to products in competition with a complainant can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business.). Accordingly, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that the <tdbankbusinessonline.com> domain name attempts to infect Internet users’ computers with viruses or malware, and provides screenshot evidence that Internet users are presented with the message “Windows Warning Alert. Malicious Pornographic Spyware/Riskware Detected.” Users are then instructed to call the 866 number contained in the message to remove the malware. The Panel finds that this use does not establish legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”).
Complainant also argues that the disputed domain name is being offered for sale. Offering a disputed domain name for an amount that exceeds out-of-pocket expenses to register the disputed domain name can serve as evidence of a respondent’s lack of rights and legitimate interests. See Reese v. Morgan, FA 0917029 (Forum Apr. 5, 2007) (offer to sell a domain name in excess of the out-of-pocket expenses incurred in maintaining the domain name was evidence that the respondent had no true rights or legitimate interests). Complainant provides screenshots that indicate that Respondent offered to sell the domain name for $299.00. The Panel finds that this offer is more than out-of-pocket expenses and is further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <tdbankbusinessonline.com> domain name in bad faith because Respondent is attempting to sell the disputed domain name for a price that exceeds Respondent’s out-of-pocket costs. Seeking to profit from the sale of a confusingly similar domain name that incorporates a party’s trademark is evidence of bad faith. See Broadcom v. Domain Management/ Syed Hussain FA 1419370 (Forum Jan. 17, 2012) (holding Respondent’s offer to sell<broadcomnetlogic.com> to the general public and to complainant constitutes bad faith under Section ¶4(b)(i)). Therefore, the Panel finds that Respondent registered the domain name in bad faith under Policy ¶ 4(b)(i).
Complainant further alleges that Respondent is a serial cybersquatter, and provides multiple UDRP cases with adverse decisions against Respondent. The Panel therefore finds 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 also argues that Respondent has registered and uses the <tdbankbusinessonline.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to resolve to a website featuring links to third-party websites that create revenue for the respondent. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”). The Panel finds that Respondent attempted to capitalize off Complainant’s mark in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant has shown that the <tdbankbusinessonline.com> domain name attempts to download malware on the computers of Internet users. The Panel finds Respondent’s use of the domain name in connection with malware indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1357512 (Forum Dec. 17, 2010) (finding that a domain name which resolves to a website to attract internet users and download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Complainant asserts that it is the second largest bank in Canada, sixth largest bank in North America, and that Complainant’s marks are well known to customers around the world. Actual knowledge may be proven through a totality of circumstances surrounding the registration of a disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the TD BANK mark when it registered the <tdbankbusinessonline.com> domain name, in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbankbusinessonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 30, 2018
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