The Toronto-Dominion Bank v. Zhichao Yang
Claim Number: FA1402001543156
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdautofinanance.com>, <tdautofinanca.com>, <tdfinanceauto.com>, and <tduatofinance.com>, registered with eName Technology Co., Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2014; the National Arbitration Forum received payment on February 24, 2014. The Complaint was submitted in both Chinese and English.
On February 11, 2014, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <tdautofinanance.com>, <tdautofinanca.com>, <tdfinanceauto.com>, and <tduatofinance.com> domain names are registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the names. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 13, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 2, 2014 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@tdautofinanance.com, postmaster@tdautofinanca.com, postmaster@tdfinanceauto.com, postmaster@tduatofinance.com. Also on March 13, 2014, the Chinese language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tdautofinanance.com>, <tdautofinanca.com>, <tdfinanceauto.com>, and <tduatofinance.com> domain names, the domain names at issue, are confusingly similar to Complainant’s TD AUTO FINANCE mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the TD AUTO FINANCE (Reg. No. 4,259,945, registered December 18, 2012). The disputed domain names are a purposeful misspelling of Complainant’s TD AUTO FINANCE marks.
Respondent is not commonly known by the disputed domain names, and is using the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent registered the disputed domain names with the intent to disrupt the business of Complainant by diverting Internet users to a website that offers services that compete with those offered by Complainant. The disputed domain names redirect unsuspecting Internet users to a website featuring advertising links to third-party websites, many of which are competitors of Complainant. Respondent is presumably receiving pay-per-click fees in the process and has demonstrated a thorough knowledge of Complainant’s business.
Respondent registered the disputed domain names on February 4, 2013.
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(e), 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 (Nat. Arb. 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.”).
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant is the owner of a trademark registration with the USPTO for the TD AUTO FINANCE (Reg. No. 4,259,945, registered December 18, 2012). The Panel notes that, although Respondent appears to reside in China, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the jurisdiction in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, Complainant’s registration of the TD AUTO FINANCE mark with the USPTO sufficiently proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
It appears to the Panel that Respondent’s <tdautofinanance.com>, <tdautofinanca.com>, <tdfinanceauto.com>, and <tduatofinance.com> domain names are purposeful misspellings of Complainant’s TD AUTO FINANCE marks. Respondent’s <tdautofinanance.com> domain name contains the duplication of the letters “an.” Respondent’s inclusion of additional letters is irrelevant to a Policy 4(a)(i) analysis. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Respondent replaces the letter “a” instead of the letter “e” in its <tdautofinanca.com> domain name. However, Respondent’s substitution of letters in a mark does not distinguish the domain name from Complainant’s mark according to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Further, Respondent transposes the words “finance” and “auto” in its <tdfinanceauto.com> domain name. Respondent’s swapping of words in such manner in a mark is inconsequential pursuant to Policy ¶ 4(a)(i). See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”). Respondent misspells Complainant’s TD AUTO FINANCE mark in the <tduatofinance.com> domain name by swapping the letters “a” and “u.” This misspelling of Complainant’s mark does not differentiate the domain name from Complainant’s mark according to Policy ¶ 4(a)(i). See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). Respondent also removes the spaces in Complainant’s TD AUTO FINANCE mark and adds the generic top-level domain (“gTLD”) “.com” to the disputed domain names. The Panel finds that Respondent’s elimination of spaces and inclusion of a gTLD does not distinguish the domain names from Complainant’s TD AUTO FINANCE mark pursuant to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Respondent’s <tdautofinanance.com>, <tdautofinanca.com>, <tdfinanceauto.com>, and <tduatofinance.com> domain names are confusingly similar to Complainant’s TD FINANCE AUTO mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
It appears to the Panel that Respondent is not commonly known by the <tdautofinanance.com>, <tdautofinanca.com>, <tdfinanceauto.com>, and <tduatofinance.com> domain names. Respondent is not sponsored by or affiliated with Complainant in any way, and Complainant has not given Respondent permission to use Complainant’s marks in a domain name. The Panel notes that “Zhichao Yang” is identified as the registrant of the disputed domain name according to the WHOIS record. Thus, Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the <tdautofinanance.com>, <tdautofinanca.com>, <tdfinanceauto.com>, and <tduatofinance.com> domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s disputed domain names lead to competing hyperlink directories, featuring links such as “Credit Auto,” “Auto Title Loan,” “Auto Used Car,” and more. Respondent presumably receives pay-per-click fees from these linked websites. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Consequently, the Panel finds that Respondent is not using the <tdautofinanance.com>, <tdautofinanca.com>, <tdfinanceauto.com>, and <tduatofinance.com> domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
It appears to the Panel that Respondent registered the <tdautofinanance.com>, <tdautofinanca.com>, <tdfinanceauto.com>, and <tduatofinance.com> domain names with the intent to disrupt the business of Complainant by diverting Internet users to a website that offers services that compete with those offered by Complainant. Respondent’s disputed domain names divert users to a website hosting competing links titled “Car Finance Rates,” “Auto Refinance,” “Finance Auto,” and others. The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business and concludes that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent has demonstrated a thorough knowledge of Complainant’s business by virtue of the format of the websites resolving at each of the disputed domain names, and the TD brand is known internationally. Complainant has marketed and sold services using Complainant’s TD AUTO FINANCE mark since 2011. Accordingly, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdautofinanance.com>, <tdautofinanca.com>, <tdfinanceauto.com>, and <tduatofinance.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 25, 2014
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