The Toronto-Dominion Bank v. Tulip Trading Company
Claim Number: FA1811001817210
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Tulip Trading Company (“Respondent”), St. Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcashcard.com>, registered with Key-Systems GmbH.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2018; the Forum received payment on November 19, 2018.
On November 21, 2018, Key-Systems GmbH confirmed by e-mail to the Forum that the <tdcashcard.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 November 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@tdcashcard.com. Also on November 26, 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 December 20, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, The Toronto-Dominion Bank, uses the TD and TD BANK marks to provide and market products and services. Complainant has rights in the TD mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. TD—Reg. No. 1,649,009, registered Jun. 26, 1991; TD BANK—Reg. No. 3,788,055, registered May 11, 2010) and the Canadian Intellectual Property Office (“CIPO”) (e.g... TD— TMA396087, registered Mar. 20, 1992; TD Bank— Reg. No. TMA549396, registered Aug. 7, 2001). See Amend. Compl. Ex. A. Respondent’s <tdcashcard.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s TD mark in its entirety, merely adding the descriptive terms “cash” and “card” along with the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <tdcashcard.com> domain name. Respondent is not permitted or licensed to use Complainant’s TD mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the <tdcashcard.com> domain name to redirect internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business.
Respondent has registered and used the <tdcashcard.com> domain name in bad faith. Respondent has engaged in pattern of bad faith registration. Additionally, Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. Respondent has employed a privacy service to hide its identity. Respondent has failed to respond to cease-and-desist letters. See Amend. Compl. Ex. L. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TD and TD BANK marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Canadian company engaged in the banking and related industries and is the second largest bank in Canada.
2. Complainant has established its trademark rights in the TD and TD BANK marks based upon their registration with the United States Patent and Trademark Office (“USPTO”) (e.g. TD—Reg. No. 1,649,009, registered Jun. 26, 1991; TD BANK—Reg. No. 3,788,055, registered May 11, 2010) and the Canadian Intellectual Property Office (“CIPO”) (e.g.. TD— TMA396087, registered Mar. 20, 1992; TD Bank— Reg. No. TMA549396, registered Aug. 7, 2001).
3. Respondent registered the <tdcashcard.com> domain name on January 8, 2018.
4. Respondent has used the <tdcashcard.com> domain name to redirect internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business.
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 claims rights in the TD and TD BANK marks based upon their registration with the USPTO (e.g. TD—Reg. No. 1,649,009; TD BANK—Reg. No. 3,788,055, registered May 11, 2010) and the CIPO (e.g. TD— TMA396087, registered Mar. 20, 1992; TD Bank— Reg. No. TMA549396, registered Aug. 7, 2001). See Amend. Compl. Ex. A. Registrations of a mark with multiple trademark agencies is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Therefore, the Panel finds that Complainant has rights in the TD and TD BANK marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TD and/or TD BANK marks. Complainant argues Respondent’s <tdcashcard.com> domain name is identical or confusingly similar to Complainant’s TD mark as Respondent merely adds two descriptive words and a gTLD to the mark. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see alsoTrip 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, Complainant argues Respondent merely adds the words “cash” and “card” along with the gTLD “.com” to Complainant’s TD mark. Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s TD mark 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 name 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 trademark and to use it in its domain name, adding the words “cash” and “card” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <tdcashcard.com> domain name on January 8, 2018;
(c) Respondent has used the <tdcashcard.com> domain name to redirect internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in <tdcashcard.com> as Respondent is not authorized to use Complainant’s TD mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). 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). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. 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). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. See Amend. Compl. Ex. E. As a result, the Panel finds that the WHOIS information of record identifies the registrant as “Tulip Trading Company.” Id. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name;
(f) Complainant argues that Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by its failure to use the domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Use of a disputed domain name to feature links to products in competition with a complainant can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policies ¶¶ 4(c)(i) or (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.) Complainant provides screenshots of the resolving webpages for the disputed domain name, which link to websites directly competing with Complainant’s business. See Amend Compl. Ex. F. The Panel agrees with Complainant that this use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and uses the <tdcashcard.com> domain name in bad faith because Respondent has engaged in a pattern of bad faith registration and use. A respondent’s past UDRP cases may reflect a pattern of bad faith registration under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Further, evidence that a respondent has registered other domain names appropriating third party marks may evince a finding of bad faith. See Blue Diamond Growers v. L Wood, FA 1464477 (Forum June 7, 2017) (finding evidence that the respondent had previously registered domain names infringing on famous third-party marks established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant provides Respondent’s recent UDRP history where Respondent registered domain names using other famous third party marks. See Amend. Compl. Ex. J. Additionally, Complainant provides WHOIS information for domain names Respondent registered that incorporate third party marks. See Compl. Ex. K. Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant argues that 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 competing, 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)”). Here, Respondent creates a likelihood of confusion with Complainant and its trademarks by registering a domain name that incorporates—in its entirety—Complainant’s famous TD mark, and merely adds the descriptive words “cash” and “card”. Respondent is presumed to be commercially benefiting from the multiple pay-per-click links posted on Respondent’s website, some of which directly reference Complainant. See Amend. Compl. Ex. F. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Complainant submits that is the second largest bank in Canada and sixth largest bank in North America. Complainant’s marks are famous to countless customers around the world. See Amend. Compl. Exs B–D. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the 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.”). Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the TD and TD BANK marks when it registered the <tdcashcard.com> domain name, thereby supporting a finding of 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 name using the TD mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it 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 <tdcashcard.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 21, 2018
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