TD Ameritrade IP Company, Inc. v. Ronald Russell
Claim Number: FA1311001531789
Complainant is TD Ameritrade IP Company, Inc. (“Complainant”), Nebraska, USA. Respondent is Ronald Russell (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tradetdameritrade.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Eduardo Machado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2013; the National Arbitration Forum received payment on November 26, 2013.
On November 26, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tradetdameritrade.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 November 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 2013 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@tradetdameritrade.com. Also on November 26, 2013, 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 December 16, 2013.
On December 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Eduardo Machado as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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
a) Complainant has been in business for over thirty-five years. Complainant is an online brokerage firm that provides investing and trading services for nearly six million client accounts with more than $500 billion in assets. Complainant operates its business through its primary domain name, <tdameritrade.com>.
b) Complainant has rights in the TD AMERITRADE mark, used in connection with financial and related services. Complainant owns registrations for the TD AMERITRADE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,808,580 registered June 22, 2010).
c) Respondent’s <tradetdameritrade.com> domain name is confusingly similar to Complainant’s TD AMERITRADE mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “trade” and the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <tradetdameritrade.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its TD AMERITRADE mark in any way.
b. Respondent is using the <tradetdameritrade.com> domain name to redirect Internet users to a website featuring third-party links, some of which directly compete with Complainant’s business. Complainant presumes Respondent receives click-through revenue from these links.
e) Respondent registered and is using the <tradetdameritrade.com> domain name in bad faith.
a. Respondent is attempting to attract and mislead Internet users to the confusingly similar domain name, which features third-party links to many of Complainant’s competitors, for Respondent’s own commercial gain. Complainant presumes Respondent is receiving click-through revenue from these links.
b. Respondent had knowledge of Complainant’s TD AMERITRADE mark prior to registering the <tradetdameritrade.com> domain name because Complainant’s mark is internationally known.
f) Respondent registered the <tradetdameritrade.com> domain name on September 14, 2013.
B. Respondent
Respondent alleges that:
a. He did not know tradetdameritrade.com was trademarked.
b. He has deleted tradetdameritrade.com from all his accounts.
c. He will not renew the domain when it expires.
The Panel verified on December 24, 2013 that the disputed domain name redirects internet users to a website featuring generic links to third-party websites, some of which compete with Complainant`s business.
The Panel also verified that Complainant is, indeed, the owner of a valid United States Federal registration for the TD AMERITRADE mark with the USPTO.
Despite the fact that Respondent has apparently agreed with Complainant`s request, the Panel decided to analyze the case under the elements of the UDRP.
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.
The Panel finds that Complainant has rights in the TD AMERITRADE mark pursuant to Policy ¶ 4(a)(i) via a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The Panel also finds that Respondent’s <tradetdameritrade.com> domain name is confusingly similar to Complainant’s TD AMERITRADE mark. As well, the Panel notes that the disputed domain name incorporates Complainant’s mark in its entirety with the mere addition of the generic term “trade” and the gTLD “.com.” The Panel finds that the addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Likewise, the Panel finds that the mere addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Therefore, the Panel finds that Respondent’s <tradetdameritrade.com> domain name is confusingly similar to Complainant’s TD AMERITRADE mark pursuant to Policy ¶ 4(a)(i). The Panel decided to analyze the other two elements of the Policy.
The Panel finds that Respondent does not seem to have any rights or legitimate interests in the <tradetdameritrade.com> domain name. Because Respondent was not authorized by Complainant to use the TD AMERITRADE mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <tradetdameritrade.com> domain name under Policy ¶ 4(c)(ii).
The Panel verifies that Respondent is using the <tradetdameritrade.com> domain name to redirect Internet users to a website featuring third-party links, some of which directly compete with Complainant’s business. The Panel notes that disputed domain name contains links such as “Merrill Edge Trading” and “Day Trading for Beginners.” The Panel finds that using a confusingly similar domain name to display links to Complainant’s competitors does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
In view of the above, the Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel notes that disputed domain name contain links such as “Merrill Edge Trading” and “Day Trading for Beginners.” The Panel finds that Respondent is possibly receiving click-through revenue from these links. The Panel notes that previous panels have found that using a confusingly similar domain name to display links to a complainant’s competitors from which a respondent is presumed to receive click-through revenue demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
In light of this, the Panel concludes that Respondent registered and is using the <tradetdameritrade.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tradetdameritrade.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Machado, Panelist
Dated: December 24, 2013
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