The Toronto-Dominion Bank v. Tobias Flaitz / DomCollect International GmbH
Claim Number: FA1801001769758
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Tobias Flaitz / DomCollect International GmbH (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <easywebtrustdca.com>, registered with 1&1 Internet SE.
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 Forum electronically on January 31, 2018; the Forum received payment on January 31, 2018.
On February 5, 2018, 1&1 Internet SE confirmed by e-mail to the Forum that the <easywebtrustdca.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 February 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@easywebtrustdca.com. Also on February 7, 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 March 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is the second largest bank in Canada and the sixth largest bank in North America. Complainant has rights in the EASYWEB (e.g., TMA 493,469, registered Apr. 22, 1998) and CANADA TRUST (e.g., TMA 447,666, registered Sep. 15, 1995) marks through its trademark registrations with the Canadian Intellectual Property Office (“CIPO”). Respondent’s <easywebtrustdca.com> domain name is confusingly similar to Complainant’s EASY WEB and CANADA TRUST mark because Respondent combines Complainant’s marks, removing the term “Canada” from one of the marks, before adding the descriptive term “dca” and the “.com” generic top level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <easywebtrustdca.com> domain name as Respondent is not affiliated with or sponsored by Complainant and Respondent is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain named in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent redirects users to third-party websites through competing hyperlinks. Furthermore, Respondent’s disputed domain name is being offered for sale for an amount that far exceeds Respondent’s out-of-pocket costs related to registration.
iii) Respondent registered and used the disputed domain name in bad faith. Respondent currently offers to sell the <easywebtrustdca.com> domain name for an amount in excess to out-of-pocket costs related to registration. Also, Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s resolving website which hosts pay-per-click links to Complainant’s competitors. Additionally, Respondent failed to respond to Complainant’s cease and desist letters. Further, Respondent more likely than not had actual knowledge of Complainant’s rights in the EASYWEB and CANADA TRUST marks at the time Respondent registered the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes Respondent registered the <easywebtrustdca.com> domain name on Jul. 23, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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(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.”).
Complainant claims to have rights in the EASYWEB and CANADA TRUST mark through trademark registrations with the CIPO. Registering a mark with the CIPO or USPTO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum Jul. 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.”). Here, Complainant provides copies of its CIPO trademark registrations for both marks (e.g., EASYWEB—TMA 493,469, registered Apr. 22, 1998; CANADA TRUST—TMA 447,666, registered Sep. 15, 1995 ). Thus, the Panel finds Complainant has sufficiently demonstrated rights in the EASYWEB and CANADA TRUST marks per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <easywebtrustdca.com> domain name is confusingly similar to Complainant’s EASYWEB and CANADA TRUST marks because Respondent combines the marks, removes a term, and adds a descriptive term and gTLD to the marks. Similar changes to a complainant’s mark do not negate any confusing similarity between the disputed domain name and said mark per Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum Jun. 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Complainant contends Respondent combines Complainant’s EASYWEB and CANADA TRUST marks, deletes the term “Canada,” and adds the descriptive term “dca” and a “.com” gTLD. Thus, the Panel finds Respondent’s <easywebtrustdca.com> domain name is confusingly similar to Complainant’s EASYWEB and CANADA TRUST marks per 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), 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”).
Complainant contends Respondent has no rights or legitimate interests in the <easywebtrustdca.com> domain name as Respondent is not sponsored or affiliated with Complainant and Respondent is not commonly known by the disputed domain name. In the event a respondent fails to submit a response, panels have relied on WHOIS information to determine whether respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum Jul. 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). As Complainant argues, WHOIS information for the disputed domain name lists Respondent as “Tobias Flaitz / DomCollect International GmbH.” See Compl. Ex. E. Thus, the Panel finds Respondent is not commonly known by the <easywebtrustdca.com> domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant asserts Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use at the <easywebtrustdca.com> domain name. Complainant argues Respondent’s disputed domain name resolves to feature third-party hyperlinks, some of which offer competing online banking and financial services. Using a disputed domain name to feature competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum Jul. 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.”). As Complainant contends, Respondent’s disputed domain name features click-through links with corresponding titles such as “TD Online Account” and “Bank Online.” Thus, the Panel finds Respondent’s use of the <easywebtrustdca.com> domain name to feature competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Furthermore, Complainant argues Respondent lacks rights or interests in the <easywebtrustdca.com> domain name as Respondent lists the disputed domain name for sale. General offers to sell a disputed domain name may be evidence of a respondent’s lack or rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant contends Respondent’s disputed domain name is listed for sale at “sedo.com” for $998.00. See Compl. Ex. G. Therefore, the Panel finds Respondent’s general offer to sell the <easywebtrustdca.com> domain name indicates Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant argues Respondent’s general offer to sell the <easywebtrustdca.com> domain name is evidence of bad registration and use. Attempting to sell a disputed domain name for more than out-of-pocket costs may indicate bad faith registration and use per Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum Jun. 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant contends Respondent’s disputed domain name is listed for sale at “sedo.com” for $998.00. See Compl. Ex. G. Thus, the Panel finds Respondent’s general offer to sell the <easywebtrustdca.com> domain name is evidence of bad registration and use per Policy ¶ 4(b)(i).
Next, Complainant contends Respondent incorporates Complainant’s EASY WEB and CANADA TRUST marks in the confusingly similar <easywebtrustdca.com> domain name to attract users to the disputed domain name and then redirects users through competing hyperlinks, presumably for commercial gain. Registering and using a confusingly similar disputed domain name to host pay-per-click links to a complainant’s competitors may demonstrate bad faith registration and use per 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)”). Complainant contends Respondent’s disputed domain name features five pay-per-click links with corresponding titles such as “TD Online Account” and “Bank Online.” See Compl. Ex. F. Thus, the Panel finds Respondent’s registration and use of the confusingly similar <easywebtrustdca.com> domain name to feature competing hyperlinks demonstrates bad faith registration and use per Policy ¶ 4(b)(iv).
Finally, Complainant argues Respondent more likely than not had actual knowledge of Complainant’s rights in the EASYWEB and CANADA TRUST marks at the time Respondent registered the disputed domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the panel finds that, due to the totality of the circumstances concerning the disputed domain name, a respondent had actual knowledge of a complainant’s rights in said mark prior to registration—bad faith per Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). Complainant contends Respondent’s registration of the disputed domain name combining two of Complainant’s marks and redirection of users to competing hyperlinks for banking and financial goods and services demonstrates Respondent’s actual knowledge of Complainant’s rights in the EASYWEB and CANADA TRUST marks. See Compl. Ex. F. The Panel agrees with Complainant, and thus, finds Respondent registered and used the <easywebtrustdca.com> domain name in bad faith per 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 <easywebtrustdca.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 5, 2018
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