DECISION

 

The Toronto-Dominion Bank v. miguel rodriguez

Claim Number: FA1710001752033

PARTIES

Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden.  Respondent is miguel rodriguez (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eaywebtd.com> (‘the Domain Name’), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne of Palmer Biggs IP as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 4, 2017; the Forum received payment on October 4, 2017.

 

On October 05, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <eaywebtd.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  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 October 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@eaywebtd.com.  Also on October 5, 2017, 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 Oct 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant’s contentions can be summarised as follows:

 

Complainant owns many trade mark registrations, inter alia, in Canada and the USA consisting of or including TD with first use recorded as 1969. The trade mark EASYWEB is owned by a company in Complainant’s financial group and has been used since 1998. These marks are registered and used in relation to financial services.

 

The Domain Name is confusingly similar to Complainant’s trade marks being merely a combination of its TD mark and a misspelling of the EASYWEB mark owned by another company in Complainant’s financial group. Combining two trade marks associated with a complainant in a domain name does not distinguish that domain name from those marks. A deliberate misspelling of a mark intended to confuse internet users must be confusingly similar by design. The confusion is to be shown at the second level of a domain name so the .gTLD is not taken into account.

 

The Domain Name registered in 2017 currently points to a blank page, but it has been used to resolve to a web site that imitates Complainant’s web site at https://EASYWEB.td.com in an attempt to obtain personal information from Complainant’s customers, which also suggests Respondent intended the Domain Name to be confusing.

 

Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trade marks in any manner.

 

Respondent is not commonly known by the Domain Name.

 

Phishing and using an imitation web site to pass off cannot support any rights or legitimate interests or be a legitimate non commercial or fair use, nor can passive use.  

 

The Domain Name has been registered and used in bad faith. Typosquatting and using a site imitating Complainant’s web site on the Domain Name which is highly similar to Complainant’s web address where the genuine site appears shows a knowledge of Complainant and its business. Although the Domain Name is not currently being used past bad faith use is sufficient for a finding of bad faith under the Policy and passive use of a typosquatting Domain Name containing a Complainant’s mark can be bad faith.

 

Respondent did not respond to a cease and desist letter from Complainant.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant owns many trade mark registrations, inter alia, in Canada and the USA consisting of or including TD with first use recorded as 1969. The trade mark EASYWEB is owned by a company in Complainant’s group used since 1998. These marks are registered and used in relation to financial services.

 

The Domain Name registered in 2017 currently points to a blank page, but it has been used to resolve to a web site that imitates Complainant’s web site at https://EASYWEB.td.com which invites users to log in.

 

 

DISCUSSION

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:

 

 

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 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.”).

 

Identical or Confusingly Similar

 

The Domain Name consists of Complainant's TD mark (which is registered, inter alia in USA and Canada for financial services and has been used since 1969), a misspelling of the mark EASYWEB omitting the ‘s’ (which is registered in Canada by a company on Complainant’s financial group for financial services and has been used since 1998)  and the gTLD .com. The Panel agrees that combining two marks associated with Complainant or members of its financial group with slight differences such as a removal of a space or letter does not  distinguish the Domain Name from Complainant's trade mark pursuant to the Policy. In fact it may add to confusion as Complainant carries on business on the Internet in the banking sector and uses a very similar web address to the Domain Name for a site which has been mimicked by Respondent and was attached to the Domain Name.

 

The gTLD .com does not serve to distinguish the Domain Name from the TD or EASYWEB marks. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to the TD mark in which Complainant has rights and to the EASYWEB mark owned by a member of Complainant’s financial group.

 

As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name.  See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).

 

The web site to which the Domain Name redirects has offered financial services in competition with those of Complainant.  It did not make it clear that there was no commercial connection with Complainant and, in fact, mimicked the official site of Complainant at   https://EASYWEB.td.com a very similar url. The Panel finds this use is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc. v Busby FA 156251 (Forum May 30, 2003) finding that Respondent's attempts to pass itself off as Complainant online demonstrated no rights or legitimate interests in the domain name .)

 

As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

 

In the opinion of the Panel the use made of the Domain Name in relation to the site was confusing and disruptive in that visitors to the site might have reasonably believed it was connected to or approved by Complainant as it offered competing financial services under a Domain Name containing Complainant’s TD mark and a misspelling of the EASYWEB mark owned by a member of Complainant’s financial group and was connected to a site mimicking the genuine corresponding web site of Complainant.  The use of this imitation site and the use of Complainant's TD word mark in proximity with the EASYWEB mark owned by another member of Complainant’s financial group for competing financial services shows that it is highly likely that Respondent was aware of Complainant and its business at the time of registration of the Domain Name.

 

Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a  likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. (See Allianz of Am. Corp v Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy 4 (b)(iv) where Respondent was diverting Internet users searching for Complainant to its own web site and likely profiting).

 

Further, phishing can be evidence of bad faith registration and use within the Policy 4 (a)(iii) See Klabzuba Oil & Gas, Inc v LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).

 

Typosquatting itself can also be evidence of relevant bad faith registration and use under Policy 4 (b)(iii). See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype Complainant’s mark and be taken to Respondent’s site is registration and use in bad faith).

 

As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii). It is not necessary to consider any further alleged grounds of bad faith.

 

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <eaywebtd.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated:  November 6, 2017