The Toronto-Dominion Bank v. james / adex inc
Claim Number: FA1612001707009
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is james / adex inc (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdcanadatrstbnk.com> and <tdcanadatrtbnk.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2016; the Forum received payment on December 12, 2016.
On December 14, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <tdcanadatrstbnk.com> and <tdcanadatrtbnk.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017 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@tdcanadatrstbnk.com, postmaster@tdcanadatrtbnk.com. Also on December 14, 2016, 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 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant engages in worldwide financial, banking, and related services. In connection with its business, Complainant uses the TD and TD BANK marks.
Complainant registered TD and TD BANK with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. Nos. 3,041,792, registered Jan. 10, 2006; 3,788,055, registered Jun. 9, 2009, respectively). Complainant also registered the TD, TD BANK, and CANADA TRUST marks with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. Nos. TMA396087, registered Mar. 20, 1992; TMA549396, registered Aug. 7, 2001, TMA409300, registered March 12, 1993, respectively). Additionally, Complainant registered the TD mark with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 001942069, registered July 31, 2007).
Respondent’s <tdcanadatrstbnk.com> and <tdcanadatrtbnk.com> are confusingly similar to the TD and TD BANK marks because the domain names are a combination of Complainant’s trademarks. Additionally, Respondent utilized misspellings of the word “trust” (e.g., “trt”, “trst”) and omitted the “a” from the word “bank.”
Respondent has no rights or legitimate interests in <tdcanadatrstbnk.com> and <tdcanadatrtbnk.com>. Respondent is not commonly known by the disputed domain names. Complainant has not permitted Respondent to use the TD or TD BANK marks in any regard, nor has Complainant abandoned, cancelled, or revoked its rights to the marks. Respondent has not made a bona fide offering of goods or services or any legitimate non-commercial or fair use of the domain names. Respondent’s <tdcanadatrstbnk.com> domain names resolve to pages created to look like official Complainant sites presumably in an attempt to deceive customers and obtain personal information for profit. The <tdcanadatrtbnk.com> domain name resolves to a blank page.
Respondent has registered and used the domain names <tdcanadatrstbnk.com> and <tdcanadatrtbnk.com> in bad faith. Respondent’s attempts to deceive Complainant’s customers and obtain personal information evinces bad faith under Policy ¶ 4(b)(iv). Respondent also had constructive or actual knowledge of Complainant’s marks at the time the domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TD, TD BANK and CANADA TRUST marks through its registration of such marks with one or more of the following registrars: the CIPO, the USPTO or the EUIPO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark(s) in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue <tdcanadatrstbnk.com> domain name to address webpages that mimic those found at Complainant’s official websites; the at-issue <tdcanadatrtbnk.com> domain name is inactive.
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 at-issue domain names are each confusingly similar to trademarks in which Complainant has rights.
Complainant’s ownership of a national trademark registration for the TD, TD BANK and CANADA TRUST trademarks demonstrates its rights in such marks for the purposes of Policy ¶4(a)(i). See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“As stated above, Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i).”); see also, Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.).
Each at-issue domain name contains a combination of Complainant’s trademarks with some terms abbreviated, and has the top-level domain name “.com” appended to the resulting string. These alterations to Complainant’s trademarks are insufficient to distinguish either at-issue domain name from Complainant’s marks for the purposes of the Policy. Therefore, the Panel finds that the <tdcanadatrstbnk.com> and <tdcanadatrtbnk.com> domain names are each confusingly similar to one or more of Complainant’s trademarks. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also, F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at-issue domain names.
WHOIS information for the at-issue domain names lists ““james” as the domain names’ registrant and its organization as “adex inc.” There is nothing in the record that otherwise suggests Respondent is commonly known by either the <tdcanadatrstbnk.com> or <tdcanadatrtbnk.com>domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent uses the confusingly similar <tdcanadatrstbnk.com> domain name to direct internet users to webpages that mimic those at Complainant’s official websites, apparently for commercial gain. Respondent’s <tdcanadatrtbnk.com> domain name simply addresses a blank page. Neither use is either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also, Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (NAF Sept. 2, 2004) (Respondent is using the Disputed Domain Name to resolve to an empty page featuring no substantive content or links is further evidence that Respondent's failure to actively use the Disputed Domain Name(s) suggests a lack of rights and legitimate interests in the Disputed Domain Name(s) as blank pages are neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding the <tdcanadatrstbnk.com> and <tdcanadatrtbnk.com> domain names.
First and as mentioned above regarding rights and legitimate interests, Respondent uses the confusingly similar <tdcanadatrtbnk.com> domain name to deceive internet users that they are, or will be, visiting webpages sponsored or endorsed by Complainant when they will not. Respondent’s webpages addressed by the <tdcanadatrtbnk.com> domain name are designed to augment internet user confusion as the webpages resemble Complainant’s official webpages. Additionally, it is apparent that Respondent desires to commercially gain from the very confusion it seeks to create. Respondent’s attempt to pass itself off as Complainant demonstrates that Respondent has acted in bad faith per Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”).
Additionally, webpages addressed by the <tdcanadatrstbnk.com> domain name contain a login/registration options which may be used by Respondent to deceptively collect the personal information of accidental visitors. See Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Wells Fargo & Co. v. Maniac State, FA 608239 (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).
Regarding the inactive <tdcanadatrtbnk.com> domain name, such inactivity (especially considering the similar <tdcanadatrstbnk.com> companion domain name’s use in what appears to be a phishing scheme) suggests Respondent’s bad faith registration and use of such domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"); see also Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (NAF May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names”).
Finally, Respondent registered the <tdcanadatrstbnk.com> and <tdcanadatrtbnk.com> domain names knowing that Complainant had trademark rights in the TD, TD BANK, and CANADA TRUST marks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks, from Respondent’s overt use of the Complainant’s trademarks in forming the at-issue domain names, and significantly from Respondent’s use of one of the at-issue domain names to address webpages which were intentionally designed to look like Complainant’s official webpages. Indeed, Respondent’s webpages even include contrived metadata thereby adding to the charade and evidencing Respondent’s determination to confuse internet users for its benefit. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value rather than for some benign purpose. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <tdcanadatrstbnk.com> and <tdcanadatrtbnk.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanadatrstbnk.com> and <tdcanadatrtbnk.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 18, 2017
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