TD Ameritrade IP Company, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1810001813072
Complainant is TD Ameritrade IP Company, Inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thinkoswim.com>, registered with Internet Domain Service BS Corp.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 22, 2018; the Forum received payment on October 22, 2018.
On October 24, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <thinkoswim.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the domain name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 October 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@thinkoswim.com. Also on October 24, 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 November 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 operates a financial institution that uses the THINKORSWIM trademark in connection with the provision of financial investment and account information, and sophisticated trading platform. Complainant has rights in the THINKORSWIM trademark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,568,003, registered May 7, 2002). Respondent’s <thinkoswim.com> domain name is confusingly similar to Complainant’s THINKORSWIM trademark as Respondent merely omits the letter “r” in the trademark, while adding a “.com” generic top-level domain (“gTLD”) to the trademark.
Respondent has no rights or legitimate interests in the <thinkoswim.com> domain name. Respondent is not licensed or permitted to use Complainant’s THINKORSWIM trademark and has no business relationship with Complainant. Additionally, Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent diverts users to its website where it attempts to procure users’ personal information through phishing.
Respondent registered and uses the <thinkoswim.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it tricks users to provide personal information as part of a phishing scheme. Furthermore, Respondent engaged in typosquatting when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the U.S. trademark registrations
- No. 2,568,003 THINKORSWIM (word), registered May 7, 2002, for services in class 36
- No. 3,351,845 THINKORSWIM (fig), registered December 11, 2007, for services in class 36
- No. 4,635,739 THINKORSWIM (word), registered November 11, 2014, for goods and services in classes 9, 36, 38 and 41
The Respondent registered the <thinkoswim.com> domain name on January 11, 2006.
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 Complainant has registered the THINKORSWIM trademark with the USPTO (e.g., Reg. No. 2,568,003, registered May 7, 2002).
The Panel finds that registration of a trademark with the USPTO is sufficient to establish rights in a trademark for the purposes of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The relevant part of the disputed domain name is “thinkoswim”. The addition of the generic Top-Level Domain “.com” is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Panel notes that the disputed domain name <thinkoswim.com> is confusingly similar to the Complainant’s trademark THINKORSWIM, as the domain name incorporates the trademark in its entirety while only omitting the letter “r”. Misspelling of a complainant’s trademark, either by adding or removing letters, may not sufficiently mitigate any confusing similarity between a disputed domain name and a trademark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”).
The Panel concludes that the disputed domain name <thinkoswim.com> is confusingly similar to the trademark THINKORSWIM in which the Complainant has right (Policy ¶ 4(a)(i)).
Complainant argues that Respondent has no rights or legitimate interests in the <thinkoswim.com> domain name.
Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). The Panel notes that the disputed domain name is registered under a privacy service. As such, the WHOIS information of record identifies the Respondent as “Domain Admin / Whois Privacy Corp.”, with no references to the THINKORSWIM trademark. Furthermore, no information of the record indicates that Respondent was authorized to use the Complainant’s THINKORSWIM trademark, or has not been commonly known by the <thinkoswim.com> domain name.
The Panel further notes that Complainant does not specifically argue Respondent’s lack of rights or legitimate interests in the <thinkoswim.com> domain name or its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Complainant claims that Respondent uses the disputed domain name as a “security check” to entice users to submit personal information for a scam or phishing. Use of a disputed domain name to procure users’ personal or financial information in connection of a fraudulent scheme may not amount to a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”); see also Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”).
Therefore, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant claims that Respondent registered and uses the <thinkoswim.com> domain name in bad faith, specifically by disrupting Complainant’s business and attracts, for commercial gain, users to the disputed domain name where it operates a “security check” used to obtain users’ personal information through phishing. The Panel agree that use of a disputed domain name to obtain users’ personal or financial information through a fraudulent, phishing scheme demonstrates bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website).
Finally, Complainant contends that Respondent’s registration of the disputed domain name <thinkoswim.com> constitutes typosquatting. As already stated above, the Panel notes that misspelling of a complainant’s trademark, either by adding or removing letters, in order to capitalize on user confusion may well be sufficient to establish bad faith under Policy ¶ 4(a)(iii). See Priceline.com, Inc. v. Ryan G Foo / PPA Media Services, FA 135598 (Forum Aug. 18, 2016) (holding that registration of a domain name consisting of a slight misspelling of the complainant’s mark and affiliation of that domain name with the complainant’s affiliate program constituted bad faith per Policy ¶ 4(a)(iii)). In this case, the disputed domain name merely omits the letter “r” from Complainant’s THINKORSWIM trademark, thereby showing that the Respondent is engaged in typosquatting.
The Panel concludes that Respondent registered and uses the disputed domain name in bad faith under 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 <thinkoswim.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 25, 2018
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