TD Ameritrade IP Company, Inc. v. Deena Miller
Claim Number: FA1802001771231
Complainant is TD Ameritrade IP Company, Inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Deena Miller (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdamaritrade.com>, <tameritrade.com>, <tdameritradr.com>, <tdameritradw.com>, <tdamerotrade.com>, <tdametitrade.com>, <tdamiritrade.com>, <tdsmeritrade.com>, and <tfameritade.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 9, 2018; the Forum received payment on February 9, 2018.
On February 12, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdamaritrade.com>, <tameritrade.com>, <tdameritradr.com>, <tdameritradw.com>, <tdamerotrade.com>, <tdametitrade.com>, <tdamiritrade.com>, <tdsmeritrade.com>, and <tfameritade.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 February 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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@tdamaritrade.com, postmaster@tameritrade.com, postmaster@tdameritradr.com, postmaster@tdameritradw.com, postmaster@tdamerotrade.com, postmaster@tdametitrade.com, postmaster@tdamiritrade.com, postmaster@tdsmeritrade.com, postmaster@tfameritade.com. Also on February 12, 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 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leader in the provision of investment products and related services, including online investing and trading.
Complainant holds a registration for the trademark and service mark TD AMERITRADE, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,808,580, registered June 22, 2010.
Respondent registered the <tdamaritrade.com>, <tameritrade.com>, <tdameritradr.com>, <tdameritradw.com>, <tdamerotrade.com>, <tdametitrade.com>, <tdamiritrade.com>, <tdsmeritrade.com> and <tfameritade.com> domain names on November 22, 2005, November 22, 2005, April 23, 2006, April 23, 2006, July 29, 2005, April 23, 2006, July 29, 2005, April 23, 2006, and April 23, 2006, respectively.
The domain names are confusingly similar to Complainant’s TD AMERITRADE trademark and service mark.
Respondent has no rights to or legitimate interests in any of the domain names.
Complainant has no relationship with Respondent, and Complainant has not licensed or otherwise permitted Respondent to use the TD AMERITRADE mark.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent employs the domain names to attempt to profit from the confusion they cause among Internet users as to the possibility of Complainant’s affiliation with them and to offer goods and services competing with those of Complainant.
Each of the domain names is an instance of typo-squatting.
Respondent both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the TD AMERITRADE mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registrations of the mark with a national trademark authority, the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of a mark with the USPTO adequately proved its rights in that mark under Policy ¶ 4(a)(i)).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of Respondent’s domain names, <tdamaritrade.com>, <tameritrade.com>, <tdameritradr.com>, <tdameritradw.com>, <tdamerotrade.com>, <tdametitrade.com>, <tdamiritrade.com>, <tdsmeritrade.com> and <tfameritade.com>, is confusingly similar to Complainant’s TD AMERITRADE mark. Each of the domain names is a slightly misspelled, but phonetically similar, version of the mark with an added generic Top Level Domain (“gTLD”). These alterations of the mark, made in forming the domain names, does not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum August 4, 2015), finding that:
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 Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015), finding that:
Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).
Further, see Lucasfilm Entertainment Company Ltd. LLC v George Ring, FA 1673825 (Forum June 7, 2016) (finding that, although a respondent’s domain name <lukasfilm.com> incorporated the LUCASFILM mark of another and merely substituted a phonetically identical ‘k’ for the ‘c,’ it was nonetheless confusingly similar to that mark).
Finally, see Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017):
[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Complainant has not licensed or otherwise authorized Respondent to use the TD AMERITRADE mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Deena Miller,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent,
that each of the domain names, <tdamaritrade.com>, <tameritrade.com>, <tdameritradr.com>, <tdameritradw.com>, <tdamerotrade.com>, <tdametitrade.com>, <tdamiritrade.com>, <tdsmeritrade.com> and <tfameritade.com>, resolves to a web page designed to generate pay-per-click revenue for Respondent from the operation of hyperlinks to websites offering goods and services competitive with those of Complainant, including links related to Google keyword searches for terms such as “td ameritrade, options trading, futures trading, investment tips, high yield money market, stock tips, dividend stocks, retirement, investor education.” This employment of the domain names is neither a bona fide offering of goods or services by means of the domain name s under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names within the meaning of those provisions of the Policy. 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 [websites offering] 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.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Before addressing Complainant’s contentions as to whether Respondent has registered and now uses the <tdamaritrade.com>, <tameritrade.com>, <tdameritradr.com>, <tdameritradw.com>, <tdamerotrade.com>, <tdametitrade.com>, <tdamiritrade.com>, <tdsmeritrade.com> and <tfameritade.com> domain names in bad faith, we must examine a threshold question presented by the fact that complainant’s TD AMERITRADE mark was not registered until 2010, some years after all of the domain names were registered. On this point, arbitral jurisprudence under the Policy has established that, in appropriate circumstances, where the facts show that a respondent’s intent in registering and using a domain name is to capitalize unfairly on a UDRP complainant’s as yet unripe trademark rights, bad faith may be found notwithstanding that that respondent has registered a domain name that is confusingly similar to the complainant’s contending mark in advance of the registration of that mark. Such circumstances include registration of a domain name after a public announcement of a corporate merger, or following significant media attention, such as publicity regarding a product launch or other prominent event. This is sometimes called opportunistic bad faith.
In this instance, it is evident from the record that Respondent registered all of the disputed domain names in the midst of extensive nationwide publicity in 2005-06 surrounding the announced purchase of the securities brokerage firm TD Waterhouse USA by Complainant and the fusion of their names into TD Ameritrade. This is the very essence of opportunistic bad faith. See, for example, Aveva Group Plc. v. Edward Kim, D2015-2349 (WIPO March 1, 2016):
Although Complainant's … [m]arks were not yet registered at the time the disputed domain name was registered, the Panel finds it likely that Respondent was aware of and intended to exploit Complainant's imminent launch of its new product when he registered the disputed domain name on October 20, 2015, thereby evidencing bad faith. See General Growth Properties, Inc., Provo Mall LLC v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845 (collecting cases in which bad faith was found where the disputed domain name was opportunistically registered prior to the registration of the trademark at issue based on advance knowledge of imminent business event, such as a product launch or merger).
Accordingly, we are free to confront the issue of bad faith as to all of the domain names as they relate to the mark TD AMERITRADE. In so doing, we come first to the conclusion that Respondent’s use of the domain names, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain names. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018):
Respondent’s hosting of links to [the websites of] Complainant’s competitors demonstrates bad faith registration and use of the … domain name pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment of each of the <tdamaritrade.com>, <tameritrade.com>, <tdameritradr.com>, <tdameritradw.com>, <tdamerotrade.com>, <tdametitrade.com>, <tdamiritrade.com>, <tdsmeritrade.com> and <tfameritade.com> domain names, which we have found are confusingly similar to Complainant’s TD AMERITRADE mark, is an attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with them. Under Policy ¶ 4(b)(iv), this too stands as proof of Respondent’s bad faith in registering and using the domain names. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (finding that a respondent’s use of the <capitaloneonebank.com> domain name to display links to the websites of a UDRP complainant’s commercial competitors demonstrated bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv)).
Finally, under this head of the Policy, it is evident from the record that each of Respondent’s domain names is an instance of typo-squatting, i.e.: the creation of a domain name that represents a common misspelling of the mark of another in order fraudulently to take advantage of common typing errors made by Internet users when entering into their web browsers the names of enterprises with which they wish to do business online. Typo-squatting is independent proof of Respondent’s bad faith in registering and using the domain names. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum August 11, 2016):
Typo[-]squatting is a practice whereby a domain name registrant, such as Respondent, deliberately [and in bad faith] introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <tdamaritrade.com>, <tameritrade.com>, <tdameritradr.com>, <tdameritradw.com>, <tdamerotrade.com>, <tdametitrade.com>, <tdamiritrade.com>, <tdsmeritrade.com>, and <tfameritade.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 16, 2018
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