The Toronto-Dominion Bank v. T Zarra
Claim Number: FA1404001554877
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is T Zarra (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com>, registered with GoDaddy.com, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2014; the National Arbitration Forum received payment on April 21, 2014.
On April 21, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 April 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2014 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@tdbankcard.com, postmaster@tdbankcards.com, postmaster@tdbankcreditcards.com, postmaster@tdbankcredit.com. Also on April 21, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
i. Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TD mark (e.g., Reg. No. 1,649,009, registered June 25, 1991).
iii. Complainant also owns the TD BANK mark through registration with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 549,396, registered August 7, 2001).
iv. Complainant uses the TD and TD BANK marks in connection with banking and financial services.
v. Respondent’s <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names are confusingly similar to Complainant’s TD BANK mark.
i. Respondent has no rights or legitimate interests in respect of the disputed domain names.
ii. Respondent has not been commonly known by the disputed domain names.
iii. Respondent is using the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names to direct Internet users to websites that feature generic links to links to third-party websites, some of which directly compete with Complainant’s business.
iv. Respondent’s disputed domain names phish personal information from Complainant’s customers for commercial gain.
i. The disputed domain names should be considered as having been registered and being used in bad faith.
ii. Respondent is currently soliciting bids for the <tdbankcard.com> and <tdbankcards.com> domain names.
iii. Respondent’s use of the disputed domain names should be regarded as disrupting Complainant’s business.
iv. Respondent is using the disputed domain names to confuse unsuspecting Internet users looking for Complainant’s services and official websites, and is profiting from the resulting confusion.
v. Respondent’s disputed domain names phish personal information from Complainant’s customers for commercial gain.
vi. Respondent has demonstrated a thorough knowledge of Complainant’s TD brand and business.
B. Respondent
1, Respondent has not submitted a response to this case.
2. The Panel notes that Respondent registered the <tdbankcard.com> and <tdbankcards.com> domain names on August 5, 2008, <tdbankcreditcards.com> domain name on August 2, 2010, and <tdbankcredit.com> domain name on April 14, 2009.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names in bad faith.
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(e), 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 (Nat. Arb. 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 contends that it is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant argues that it is the owner of trademark registrations with the USPTO for the TD mark (e.g., Reg. No. 1,649,009, registered June 25, 1991). Complainant also claims to own the TD BANK mark through registration with the CIPO (Reg. No. 549,396, registered August 7, 2001). See Complainant’s Exhibit A. Complainant uses the TD and TD BANK marks in connection with banking and financial services. The Panel finds that Complainant’s registrations of the TD and TD BANK marks with the USPTO and CIPO sufficiently proves that it has rights in the marks under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant asserts that Respondent’s <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain name are confusingly similar to Complainant’s TD BANK mark. Complainant contends that Respondent adds the generic or descriptive terms “card,” “cards,” and/or “credit” to Complainant’s TD mark in the disputed domain names. The Panel notes that Complainant’s operation includes providing banking and credit card services. The Panel finds that Respondent’s inclusion of a generic or descriptive term does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Lastly, the Panel observes that Respondent adds the generic top-level domain (“gTLD”) “.com” to each of the disputed domain names. The Panel determines, as previous panels have consistently done, that Respondent’s addition of a gTLD to a mark is irrelevant to a Policy ¶ 4(a)(i) determination. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain “.com” was irrelevant). Consequently, the Panel holds that Respondent’s <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain name are confusingly similar to Complainant’s TD BANK mark under Policy ¶ 4(a)(i).
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 (Nat. Arb. 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 (Nat. Arb. 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 alleges that Respondent has not been commonly known by the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names. Complainant argues that Respondent and the disputed domain names are not sponsored by or affiliated with Complainant in any way. Complainant claims that it has not granted Respondent permission or authorization to use Complainant’s marks in a domain name. The Panel notes that the WHOIS information reveals that “T Zarra” is the registrant of the disputed domain names. See Complainant’s Exhibit E. Therefore, the Panel concludes that Respondent is not commonly known under the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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).
Complainant states that Respondent is using the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names to direct Internet users to websites that feature generic links to links to third-party websites, some of which directly compete with Complainant’s business. The Panel observes that Respondent’s disputed domain names lead to web pages containing competing links to financial services, such as “Visa Credit Card,” “Cash in Gift Card,” “Gift Card Balance,” and others. See Complainant’s Exhibit F. Complainant claims that Respondent presumably receives pay-per-click fees from these linked websites. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that, because “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Thus, the Panel finds that Respondent is not using the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names 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 argues that Respondent’s <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names phish personal information from Complainant’s customers for commercial gain. Complainant asserts that the disputed domain names invite visitors to apply for credit cards through promoted links. See Complainant’s Exhibit F. Complainant contends that Respondent may be phishing for personal information from Internet users, such as the individual’s name and social security number. As the Panel finds that Respondent is using the disputed domain names to phish for consumers private information, the Panel holds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Complainant alleges that Respondent is currently soliciting bids for the <tdbankcard.com> and <tdbankcards.com> domain names through links posted at the two websites. Complainant asserts that the links direct users to pages at DomainSponsor, where users are able to offer bids for the domain names. See Complainant’s Exhibit E. Complainant argues that Respondent does not limit the offers and bids to a certain amount, so it can be inferred that Respondent is attempting to attract the highest bid possible. As the Panel finds that Respondent registered the <tdbankcard.com> and <tdbankcards.com> domain names with the purpose of selling, the Panel holds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant claims that Respondent’s use of the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names should be regarded as disrupting Complainant’s business. The Panel observes that Respondent’s disputed domain names lead to competing link directories with links titled “Visa Credit Card,” “Business Credit Card,” “Master Credit Card,” and more. See Complainant’s Exhibit F. Past panels have concluded that a respondent’s use of a domain name to provide competing links is disruptive to a complainant’s business. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Consequently, the Panel finds that Respondent’s use of the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names disrupts Complainant’s business, showing bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant states Respondent is using the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names to confuse unsuspecting Internet users looking for Complainant’s services and official websites. The Panel observes that Respondent directs Internet users to the disputed domain names to hyperlink directories containing links to competing financial services. See Complainant’s Exhibit F. Complainant asserts that Respondent is using the disputed domain names to increase traffic to the websites for its own commercial gain. In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel found that respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by complainant. Therefore, the Panel determines that Respondent has registered and is using the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names phish personal information from Complainant’s customers for commercial gain. Complainant contends that the disputed domain names invite visitors to apply for credit cards through its links. See Complainant’s Exhibit F. Past panels have held that a respondent’s use of a domain name to solicit personal and confidential information from a complainant’s customers evidences bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Thus, the Panel finds that Respondent’s use of the disputed domain names to attempt to phish for information from Complainant’s customers demonstrates bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent has demonstrated a thorough knowledge of Complainant’s TD brand and business. Complainant argues that its TD brand is known internationally and Complainant has marketed and sold services under the TD mark since 1969. Complainant contends that by performing a simple Google searches for the terms “td bank card,” “td bank cards,” “td bank credit cards,” and “td bank credit” retrieve multiple links and articles to Complainant’s websites. While previous panels have failed to find constructive knowledge sufficient to support a finding of bad faith, the Panel infers that Respondent had actual knowledge of Complainant's rights in the TD and TD BANK marks and therefore determines that Respondent registered the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbankcard.com>, <tdbankcards.com>, <tdbankcreditcards.com>, and <tdbankcredit.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 25, 2014
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