The Toronto-Dominion Bank v. Robert Stewart / HUSH IP LLC
Claim Number: FA1812001819810
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by Korto Lyons of CSC Digital Brand Services Group AB, Sweden. Respondent is Robert Stewart / HUSH IP LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbankcreditcardservices.com>, <tdacardservices.com>, and <tdcardservives.com>, registered with Key-Systems GmbH.
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 December 7, 2018; the Forum received payment on December 7, 2018.
On December 10, 2018, Key-Systems GmbH confirmed by e-mail to the Forum that the <tdbankcreditcardservices.com>, <tdacardservices.com>, and <tdcardservives.com> domain names are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. 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 December 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@tdbankcreditcardservices.com, postmaster@tdacardservices.com, postmaster@tdcardservives.com. Also on December 10, 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 January 6, 2019, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <tdbankcreditcardservices.com>, <tdacardservices.com>, and <tdcardservives.com> domain names are confusingly similar to Complainant’s TD BANK mark.
2. Respondent does not have any rights or legitimate interests in the <tdbankcreditcardservices.com>, <tdacardservices.com>, and <tdcardservives.com> domain names.
3. Respondent registered and uses the <tdbankcreditcardservices.com>, <tdacardservices.com>, and <tdcardservives.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Toronto-Dominion Bank, was created in 1955 and is the second largest bank in Canada. Complainant holds a registration for the TD BANK mark with the Canadian Intellectual Property Organization (“CIPO”) (Reg. No. TMA549396, registered Aug. 7, 2001), and for the TD mark (CIPO Reg. No. TMA396087, registered Mar. 20, 1992)
Respondent registered the disputed domain names on the following dates: <tdbankcreditcardservices.com> (March 6, 2016), <tdacardservices.com> (March 6, 2016), and <tdcardservives.com> (February 25, 2016), and use them to redirect Internet users to various third-party websites, some of which compete with Complainant.
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 established rights in the TD and TD BANK marks under Policy ¶ 4(a)(i) through the registration with the CIPO. 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.”).
Respondent’s <tdbankcreditcardservices.com>, <tdacardservices.com>, and <tdcardservives.com> domain names all use the TD or TD BANK marks and add descriptive terms (“credit card services,” “a card services,” or “ card servives”) and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). The Panel therefore finds that Respondent’s <tdbankcreditcardservices.com>, <tdacardservices.com>, and <tdcardservives.com> domain names are confusingly similar to Complainant’s TD and/or TD BANK marks.
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 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 <tdbankcreditcardservices.com>, <tdacardservices.com>, and <tdcardservives.com> domain names. The WHOIS identifies “Robert Stewart / HUSH IP LLC” as the registrant for all of the domain names. Complainant argues that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain names, and has no permission to use Complainant’s marks for any purpose. The Panel therefore finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 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); 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 argues that Respondent uses the domain names to offer hyperlinks that redirect Internet users to various third-party websites, some of which compete with Complainant. Using a domain name to offer links to services in direct competition with a complainant does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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 associated with the disputed domain names containing links to services such as “TD Bank Credit Card,” “Visa Credit Card,” and “Online Payment Card.” The Panel finds that Respondent’s attempts to commercially benefit from competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use and thus Respondent has no rights under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in a pattern of cybersquatting, as shown by prior UDRP decisions against Respondent, Respondent’s ownership of numerous domain names, and Respondent’s registration of three domain names in this case. Complainant provides copies of adverse UDRP decisions against Respondent, and also provides examples of other domain names owned by Respondent. Therefore, the Panel finds that Respondent registered the disputed domain names in bad faith based on Respondent’s prior history of registering confusingly similar domain names. See 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).”); see also Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Complainant argues that Respondent uses the <tdbankcreditcardservices.com>, <tdacardservices.com>, and <tdcardservives.com> domain names to create a likelihood of confusion by replicating Complainant’s website and phishing for Internet users’ information. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Accordingly, the Panel finds that Respondent attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent, by registering domain names so closely resembling Complainant’s well-known TD mark, must have been aware of Complainant’s rights in the marks prior to registering the domain names at issue. The Panel agrees, noting Respondent’s use of the disputed domain names to directly compete with Complainant and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating 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).
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 <tdbankcreditcardservices.com>, <tdacardservices.com>, and <tdcardservives.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 7, 2019
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