The Toronto-Dominion Bank v. Domain Protection
Claim Number: FA2007001906372
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Domain Protection (“Respondent”), represented by Law Offices of Howard M. Neu, P.A., United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbhome.com>, registered with Network Solutions, LLC.
Each of 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 a Panelist in this proceeding.
Panelists Hon. Karl V. Fink, Ret., Atty. Debrett G. Lyons and Atty. Terry F. Peppard
Complainant submitted a Complaint to the Forum electronically on July 29, 2020; the Forum received payment on July 29, 2020.
On July 29, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <tdbhome.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 July 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2020 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@tdbhome.com. Also on July 31, 2020, 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.
A timely Response was received and determined to be complete on August 24, 2020.
Complainant has filed an Additional Submission under date of October 19, 2020, and Respondent has filed an Additional Submission under date of October 22, 2020, both of which will be considered in the course of this proceeding.
On September 2, 2020, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Karl V. Fink, Ret., Atty. Debrett G. Lyons as Panelists, and Atty. Terry F. Peppard, Panelist and chair.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint and Additional Submission, Complainant alleges, inter alia, the following:
Complainant is the second largest bank in Canada, as measured by market capitalization and deposits, and the sixth largest bank in North America, and it ranks among the world’s leading online financial services firms.
Complainant operates numerous websites in support of its business, including those found at http://www.td.com and at http://www.tdbank.com.
Complainant holds a registration for the service mark TD BANK, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,788,055, registered May 11, 2010, and renewed May 4, 2020.
Respondent registered the domain name <tdbhome.com> on or about November 8, 2019.
The domain name is confusingly similar to both of Complainant’s TD and TD BANK marks.
Respondent has not been commonly known by the domain name.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not licensed or otherwise authorized Respondent to use the TD mark or the TD BANK mark in any manner.
Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to redirect to its own resolving website Internet users seeking one of Complainant’s official websites.
Respondent’s resolving website redirects Internet users to various third-party websites unrelated to Complainant’s business, and Respondent’s domain name host functions in such a way that each time an Internet user visits Respondent’s site s/he is redirected to a different website purporting to offer products or services unrelated to the business of Complainant.
The arrangement between Respondent and its domain name parking host involves a dynamic monetization scheme, called “zero-click monetization,” by which that host and Respondent share in the fees generated each time an Internet user is directed to a site determined without regard to the intentions of the Internet user.
Respondent’s monetization scheme redirects unsuspecting Internet users to websites which surreptitiously install malware on their computers.
Respondent has no rights to or legitimate interests in the domain name.
Respondent offers the disputed domain name for sale.
Respondent has engaged in a pattern of bad faith registration and use of domain names.
Respondent’s use of the domain name tends to confuse Internet users as to the possibility of Complainant’s affiliation with it and its resolving website.
Respondent knew of Complainant and its rights in the TD BANK mark when it registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
In its Response and Additional Submission, Respondent asserts, among other things, the following:
Respondent is a domain name investor-reseller, with hundreds of domain names in its inventory.
Respondent invests in and offers for sale domain names built around generic or common dictionary terms.
Domain name investment-reselling is a legitimate business.
Respondent is not trading on Complainant’s trademarks.
The website resolving from Respondent’s domain name carries no links to the websites of Complainant’s commercial competitors.
Respondent has not offered to sell the disputed <tdbhome.com> domain name to Complainant.
The domain name is made up merely of three letters of the alphabet plus the generic term “home.”
It is a usual and customary business practice for a domain name investor-reseller like Respondent to park domain names from its inventory with legitimate monetization companies, such as that which hosts the subject domain name, while they are being offered for sale.
In filing its Complaint against Respondent, Complainant is guilty of Reverse Domain Name Hijacking.
(1) the domain name registered by Respondent is confusingly
similar to a service mark in which Complainant
has rights; and
(2) Respondent has no rights to or legitimate interests in respect of
the domain name; and
(3) the same domain name was registered and is being used by
Respondent in bad faith; and
(4) the Complaint filed in this proceeding is not an instance of
Reverse Domain Name Hijacking.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name was registered and is being used by Respondent in bad faith.
Complainant has rights in the TD BANK service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017), finding, under Policy ¶ 4(a)(i), that registration of a mark with the USPTO was sufficient to show a UDRP complainant’s rights in that mark for purposes of establishing standing to pursue its complaint.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <tdbhome.com> domain name is confusingly similar to Complainant’s TD BANK service mark. The domain name incorporates the first two letters of the mark plus a single letter abbreviation of the word “bank” in sequence with those two letters, with only the deletion of the space between the terms of the mark and the addition of the generic term “home,” which can be taken to relate to the home page of any of Complainant’s official websites, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
As to Respondent’s employment of an abbreviation for the word “bank” in Complainant’s mark, see, for example, Express Messenger Sys., Inc. v. Golden Overnight, D2001-0063 (WIPO March 26, 2001), finding that a UDRP respondent’s use of a common abbreviation for California in a domain name did not avoid a finding of confusing similarity under Policy ¶ (a)(i).
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
As to Respondent’s deletion of the space between the terms of Complainant’s TD BANK mark in forming the <tdbhome.com> domain name, this omission is without consequence to our analysis because domain name syntax does not permit the use of blank spaces.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the contested <tdbhome.com> domain name, 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.
In assessing whether Complainant has made a sufficient showing under this head of the Policy, we must 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 Respondent has not been commonly known by the challenged <tdbhome.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the TD BANK mark in any manner. Moreover, the pertinent WHOIS information identifies the registrant of the domain name as “Domain Protection,” while Respondent asserts that the registrant is actually “Mira Holdings, Inc.” Neither of these names resembles the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record there showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner. See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015), finding, under Policy ¶ 4(c)(ii), 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 alleges that:
a. Respondent uses the <tdbhome.com> domain name to redirect to its own resolving website Internet users seeking one of Complainant’s official websites;
b. Respondent’s resolving website redirects Internet users to various third-party websites unrelated to Complainant’s business;
c. Respondent’s domain name host functions in such a way that each time an Internet user visits Respondent’s site s/he is redirected to a new and different website; and
d. the arrangement between Respondent and its domain name parking host involves a “dynamic monetization” scheme, called “zero-click monetization,” by which that host and Respondent share in the fees generated each time an Internet user is directed to a site determined without regard to the intentions of the Internet user.
Respondent answers that:
i. Respondent is a domain name investor-reseller, with hundreds of domain names in its inventory.
ii. Respondent invests in and offers for sale domain names built around generic or common dictionary terms.
iii. Domain name investment-reselling is a legitimate business.
iv. Respondent is not trading on Complainant’s trademarks.
v. The website resolving from Respondent’s domain name carries no links to the websites of Complainant’s competitors.
vi. Respondent has not offered to sell the <tdbhome.com> domain name to Complainant.
vii. It is a normal business practice for a domain name investor-reseller like Respondent to park domain names with legitimate monetization companies, such as that which hosts the subject domain name, while they are being offered for sale.
Complainant concedes, in its Additional Submission, that investing in domain names and reselling them can be a legitimate commercial activity not condemned by the Policy. Complainant’s concession on this point is supported by the decisions of UDRP panels. See, for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 2.1:
[G]enerally speaking, panels have accepted that aggregating and holding domain names (usually for resale) … can be bona fide and is not per se illegitimate under the UDRP.
It is also true, however, that domain name reselling is, under the Policy, subject to the same constraints as are imposed upon others who register and use domain names. For purposes of this proceeding, these constraints can be summarized thus: a domain name reseller will not likely succeed in defending against a claim that it has no rights to or legitimate interests in a challenged domain name that is confusingly similar to the mark of a UDRP complainant where it is shown that the reseller has employed its domain name either to compete with the business of that complainant or that it has employed the domain name to work mischief in the online marketplace at the expense of Internet users or that complainant. See, for example, Vivid Seats LLC v. Carolina Rodrigues, D2019-1115 (WIPO July 15, 2019):
The Domain Name through dynamic redirections either directs Internet users to a direct competitor of the Complainant or sends them to a website that is associated with malware. Neither is an acceptable use of the Complainant’s trade marks.
Here Respondent contends that the website resolving from the disputed domain name carries no links to the websites of Complainant’s commercial competitors. Complainant does not contest this assertion. However, Complainant also alleges that Respondent’s monetization arrangement with its domain name parking host, from which Respondent receives fee income related to each visit by an Internet user to the resolving website, redirects unsuspecting users to other websites which surreptitiously install malware on their computers. Despite having opportunities to refute this assertion, Respondent has not done so. We therefore find the facts as alleged and that Respondent’s employment of the domain name, as described in the Complaint and Complainant’s Additional Submission, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Spoke Media Holdings, Inc. v. Volkov, D2010-1303 (WIPO October 10, 2010):
Having used the Domain Name to perpetrate a malware attack[,] it is clear that the Domain Name has not been used for any bona fide offering of services. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
Respondent, in its pleadings, seems to imply that, because its domain name host selects, evidently via a highest bidder algorithm, the websites to which Internet users are redirected, Respondent cannot be held responsible for the mischief done by that redirection process. If this is indeed Respondent’s belief, it is mistaken. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 3.5:
Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name….
For all of these reasons, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The facts found above serve not only to demonstrate that Respondent has no rights to or legitimate interests in the <tdbhome.com> domain name but also that Respondent has both registered and now uses that domain name in bad faith. See, for example, Spoke Media Holdings, Inc. v. Volkov, cited supra, the panel there finding that a respondent had employed a domain name that was confusingly similar to the mark of a UDRP complainant and that the domain name was used to distribute malware to unsuspecting Internet users, and further finding that the domain name was registered and used in bad faith. To the same effect, see also Vivid Seats LLC v. Carolina Rodrigues, likewise cited supra, where a panel found bad faith in a respondent’s registration and use of a domain name that was confusingly similar to the mark of a UDRP complainant on facts showing the domain name was used to deploy malware via a “dynamic redirection” scheme like the “dynamic monetization” system we address here.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Final Consideration: Reverse Domain Name Hijacking
Respondent contends that, in filing and prosecuting its Complaint in this proceeding, Complainant is guilty of “Reverse Domain Name Hijacking,” defined in the UDRP Rules as: “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Inasmuch as Complainant has prevailed on all points required by the Policy to be proven in support of its case, the Panel finds that Complainant has not been guilty of Reverse Domain Name Hijacking in pursuing its Complaint.
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 domain name <tdbhome.com> be TRANSFERRED forthwith from Respondent to Complainant.
Atty. Terry F. Peppard,
Panelist and Chair
Dated: October 30, 2020
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