The Toronto-Dominion Bank v. HAcker Damson / Hacker Damson Company
Claim Number: FA1803001778430
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is HAcker Damson / Hacker Damson Company (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbsaveup.com>, <tdbsavenow.com>, and <tdbsaveupnow.com> (‘the Domain Names’), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2018; the Forum received payment on March 23, 2018.
On March 24, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <tdbsaveup.com>, <tdbsavenow.com>, and <tdbsaveupnow.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 March 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 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@tdbsaveup.com, postmaster@tdbsavenow.com, and postmaster@tdbsaveupnow.com. Also on March 27, 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 April 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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’s contentions can be summarised as follows:
The Complainant is the owner of trade mark registrations for TD in, inter alia, Canada and the USA and for TD BANK registered, inter alia, in Canada and the USA for, inter alia, financial services. It owns TDbank.com and TD.com.
To create the Domain Names the Respondent has added ‘b’ to ‘TD’ to make the initials of the Complainant’s TD BANK trade mark and added generic terms ‘save up’, ‘save up now’ and ‘save now’ which only adds to confusing similarity as the Complainant has an on line campaign to encourage youths to save up now.
The Domain Names registered in 2017 or 2018 were attached to a copy of the Complainant’s web site using the Complainant’s TD logo in a phishing scheme.
The Respondent is not authorised to use the Complainant’s marks and is not commonly known by the Domain Names. Use for a copy phishing website is not bona fide use or legitimate non commercial use.
This use also shows actual knowledge of the Complainant and its business. Intentionally passing off websites attached to the Domain Names as belonging to the Complainant in a phishing scheme is bad faith registration and use and is intended to cause confusion amongst Internet users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of trade mark registrations for TD in, inter alia, Canada and the USA and for TD BANK registered, inter alia in Canada and the USA for, inter alia, financial services. It owns TDbank.com and TD.com.
The Domain Names have been used to mimic the Complainant’s official web sites in a phishing scheme.
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.”).
Identical or Confusingly Similar
The Domain Names consists of the Complainant's TD mark (which is registered in the USA and Canada with first registration in the USA recorded as 1992 for financial services), the letter ‘b’, the generic terms ‘save up’, ‘save up now’ or ‘save now’ and the gTLD .com. The Panel agrees that these additions do not distinguish the Domain Names from the TD trade mark pursuant to the Policy especially as the ‘b’ appears to refer to the third initial of Toronto Dominion Bank and the generic terms refer to the Complainant’s business.
The addition of generic terms which are related to the Complainant’s business and services supports a finding of confusing similarity. Accordingly the addition of ‘save up’, ‘save up now’ or ‘save now’ does not serve to distinguish the Domain Names from the Complainant’s TD mark especially bearing in mind that the Complainant has an advertising campaign encouraging youths to save up. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms particularly terms pertaining to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i).)
The gTLD .com does not serve to distinguish the Domain Names from the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the 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 Names are confusingly similar for the purpose of the Policy to the TD mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact. commonly known by the Domain Names.
Passing off in furtherance of a phishing scheme is not a bona fide offering of goods and services or a legitimate non commercial or fair use. See Google Inc. v Prisma Singh/Pandaje Technical Services Pvt Ltd, FA 1660771 (Forum Mar. 17, 2016).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Phishing schemes can evince bad faith registration and use. See Klabzuba Oil & Gas, Inc. v LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).
The Respondent’s use of the Domain Names to copy the Complainant’s web site and the use of the Complainant’s logo shows actual knowledge of the Complainant and its business and is designed to confuse Internet users for personal gain thereby disrupting the Complainant’s business.
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under 4(b)(iv) and 4(b)(iii) and there is no need to consider further grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbsaveup.com>, <tdbsavenow.com>, and <tdbsaveupnow.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 18, 2018
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