The Toronto-Dominion Bank v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2109001963337
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdcerdservices.com>, <tdcardsevies.com>, <tdcardsetvice.com>, <tdcardsercvices.com>, <tdcardservicves.com>, <tdcardesrvices.com>, <tdcardserivice.com>, <tdcardsevrveces.com>, <tdcardservicesx.com>, <tdcardsrvics.com>, <tdrcardservices.com>, <tdcardeervices.com>, <tdcardservicew.com>, <tdcardcervises.com>, <tdcardsaervices.com>, <tdcardserviaes.com>, <tdcardsertvices.com>, <tdcafdservices.com>, <tdcardfservices.com>, <tdcartddservices.com>, and <tdcreditcardserviceslogin.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 known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 13, 2021; the Forum received payment on September 13, 2021.
On September 14, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdcerdservices.com>, <tdcardsevies.com>, <tdcardsetvice.com>, <tdcardsercvices.com>, <tdcardservicves.com>, <tdcardesrvices.com>, <tdcardserivice.com>, <tdcardsevrveces.com>, <tdcardservicesx.com>, <tdcardsrvics.com>, <tdrcardservices.com>, <tdcardeervices.com>, <tdcardservicew.com>, <tdcardcervises.com>, <tdcardsaervices.com>, <tdcardserviaes.com>, <tdcardsertvices.com>, <tdcafdservices.com>, <tdcardfservices.com>, <tdcartddservices.com>, and <tdcreditcardserviceslogin.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 September 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2021 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@tdcerdservices.com, postmaster@tdcardsevies.com, postmaster@tdcardsetvice.com, postmaster@tdcardsercvices.com, postmaster@tdcardservicves.com, postmaster@tdcardesrvices.com, postmaster@tdcardserivice.com, postmaster@tdcardsevrveces.com, postmaster@tdcardservicesx.com, postmaster@tdcardsrvics.com, postmaster@tdrcardservices.com, postmaster@tdcardeervices.com, postmaster@tdcardservicew.com, postmaster@tdcardcervises.com, postmaster@tdcardsaervices.com, postmaster@tdcardserviaes.com, postmaster@tdcardsertvices.com, postmaster@tdcafdservices.com, postmaster@tdcardfservices.com, postmaster@tdcartddservices.com, postmaster@tdcreditcardserviceslogin.com. Also on September 20, 2021, 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 October 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, The Toronto-Dominion Bank, is the second largest bank in Canada and the sixth largest bank in North America. Complainant has rights in the TD mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,649,009, registered June 25, 1991). Respondent’s <tdcerdservices.com>, <tdcardsevies.com>, <tdcardsetvice.com>, <tdcardsercvices.com>, <tdcardservicves.com>, <tdcardesrvices.com>, <tdcardserivice.com>, <tdcardsevrveces.com>, <tdcardservicesx.com>, <tdcardsrvics.com>, <tdrcardservices.com>, <tdcardeervices.com>, <tdcardservicew.com>, <tdcardcervises.com>, <tdcardsaervices.com>, <tdcardserviaes.com>, <tdcardsertvices.com>, <tdcafdservices.com>, <tdcardfservices.com>, <tdcartddservices.com>, and <tdcreditcardserviceslogin.com> domain names are confusingly similar to Complainant’s mark since they each merely add a misspelling of the generic term “card services” and a generic top-level domain (“gTLD”) to the TD mark.
Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent hosts competing and unrelated hyperlinks at some of the disputed domains, while others resolve to webpages advertising the domain names for sale.
Respondent registered and uses the disputed domain names in bad faith. Respondent offers the disputed domain names for sale in excess of out-of-pocket costs. Additionally, Respondent displays a pattern of bad faith by registering multiple domains that incorporate the TD mark. Respondent also attracts users for commercial gain by displaying related third-party hyperlinks at some of the disputed domains. Further, Respondent’s typosquatting behavior is evidence of bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the TD mark when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the Toronto-Dominion Bank (“Complainant”), of Toronto, Ontario, Canada. Complainant is the owner of domestic and international registrations for the marks TD and TD BANK, as well as numerous related marks constituting the family of TD Bank marks. Complainant has continuously used its marks in connection with its provision of financial and business goods and services since at least as early as 1955. Complainant also owns and operates numerous websites incorporating its marks including <td.com> and <tdbank.com>.
Respondent is Carolina Rodrigues / Fundacion Comercio Electronico of (“Respondent”), Panama City, Panama and Scottsdale, AZ, USA. The Respondents’ registrars’ address is indicated as Tempe, AZ, USA. The Panel notes that the disputed domain names were all registered sometime between August 24, 2020, and May 7, 2021.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the TD mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 1,649,009, registered June 25, 1991). The Panel here finds that Complainant has rights in the TD mark per Policy ¶ 4(a)(i).
Respondent’s domain names are confusingly similar to Complainant’s TD mark since they each merely add a misspelling of the generic term “card services” and a gTLD to the TD mark. Addition of generic or descriptive terms and a gTLD is generally insufficient to distinguish a domain name from a mark it incorporates per Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Complainant notes that one of the disputed domain names, <tdcreditcardserviceslogin.com>, also adds the terms “credit” and “login.” The Panel here finds the disputed domain names to be identical and/or confusingly similar to Complainant’s TD mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico” and no other available information suggests that Respondent is commonly known by the disputed domain names. As Respondent has failed to provide any evidence contrary to Complainant’s assertions the Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead hosts competing and unrelated hyperlinks at the <tdcardsevrveces.com>, <tdcardservicesx.com>, <tdcardsrvics.com>, <tdrcardservices.com>, <tdcardeervices.com>, <tdcardservicew.com>, <tdcardcervises.com>, <tdcardsaervices.com>, <tdcardserviaes.com>, <tdcardsertvices.com>, and <tdcardfservices.com> domains. Use of a disputed domain name to host commercial hyperlinks is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii), especially where the links are in competition with the complainant’s business. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the webpages resolving at the relevant domains, noting that they feature links for “payment services” and “payment systems online,” which compete with Complainant’s own offerings. The Panel here finds that Respondents’ use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues that Respondent’s offer to sell the disputed domain names suggests a lack of rights and legitimate interests. Offering to sell a disputed domain name may evidence a lack of rights and legitimate interests in a 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 notes that the <tdcerdservices.com>, <tdcardsevies.com>, <tdcardsetvice.com>, <tdcardsercvices.com>, <tdcardservicves.com>, <tdcardesrvices.com>, <tdcardserivice.com>, <tdcafdservices.com>, <tdcartddservices.com>, and <tdcreditcardserviceslogin.com> domains resolve to domain marketplaces listing the disputed domain names for sale. Complainant further notes that the remaining disputed domain names are also being offered for sale even though they do not resolve to domain marketplace webpages. The Panel here finds that Respondent lacks rights and legitimate interests in the disputed domain names per Policy ¶ 4(a)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent offers the disputed domain names for sale in excess of out-of-pocket costs. Offering a disputed domain name for sale for significantly more than the costs associated with registration and maintenance may suggest bad faith pursuant to Policy ¶ 4(b)(i). See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”). Complainant provides screenshots of the domain marketplace pages resolving at the <tdcerdservices.com>, <tdcardsevies.com>, <tdcardsetvice.com>, <tdcardsercvices.com>, <tdcardservicves.com>, <tdcardesrvices.com>, <tdcardserivice.com>, <tdcafdservices.com>, <tdcartddservices.com>, and <tdcreditcardserviceslogin.com> domains, as well as evidence that the remainder of the disputed domain names are being offered for sale. The Panel here finds bad faith registration and use under Policy ¶ 4(b)(i).
Complainant also argues that Respondents attract users for commercial gain by displaying related third-party hyperlinks at the <tdcardsevrveces.com>, <tdcardservicesx.com>, <tdcardsrvics.com>, <tdrcardservices.com>, <tdcardeervices.com>, <tdcardservicew.com>, <tdcardcervises.com>, <tdcardsaervices.com>, <tdcardserviaes.com>, <tdcardsertvices.com>, and <tdcardfservices.com> domains. Use of a confusingly similar domain name to display competing and/or unrelated third-party commercial hyperlinks is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also 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 provides screenshots of the webpages resolving at the relevant domains, indicating that they feature links for “payment services” and “payment systems online,” which compete with Complainant’s own offerings. The Panel here finds bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the TD mark when it registered the disputed domain names. Actual knowledge of a complainant’s rights in a mark evinces bad faith per Policy ¶ 4(a)(iii) and may be shown by the entirety of circumstances surrounding registration and use of a disputed domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Complainant argues that Respondent’s knowledge is clear from its registration of 21 domain names incorporating the TD mark and its use of the domain names to display links related to Complainant. Complainant also notes that Respondent has previously lost a UDRP case against Complainant. See The Toronto Dominion Bank v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1894062 (Forum May 24, 2020). The Panel here finds that the evidence supports a conclusion that Respondent had actual knowledge and thus acted in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcerdservices.com>, <tdcardsevies.com>, <tdcardsetvice.com>, <tdcardsercvices.com>, <tdcardservicves.com>, <tdcardesrvices.com>, <tdcardserivice.com>, <tdcardsevrveces.com>, <tdcardservicesx.com>, <tdcardsrvics.com>, <tdrcardservices.com>, <tdcardeervices.com>, <tdcardservicew.com>, <tdcardcervises.com>, <tdcardsaervices.com>, <tdcardserviaes.com>, <tdcardsertvices.com>, <tdcafdservices.com>, <tdcardfservices.com>, <tdcartddservices.com>, and <tdcreditcardserviceslogin.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 29, 2021
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