The Toronto-Dominion Bank v. Will Lush
Claim Number: FA1407001569668
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Will Lush (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadadonotturst.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2014; the National Arbitration Forum received payment on July 15, 2014.
On July 15, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <tdcanadadonotturst.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 July 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@tdcanadadonotturst.com. Also on July 16, 2014, 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 5, 2014.
Complainant submitted and Additional Submission which was received and found to be compliant on August 8, 2014.
On August 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Also on August 11, 2014, the Respondent submitted an Additional Submission which was found to be timely.
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
The Complainant states that it is a well-known bank, and that it owns numerous registered trademarks around the world that consist of the brands TD, TD BANK, and CANADA TRUST, either alone or in combination. These marks are well known. The Complainant operates numerous web sites with domain names related to its marks.
According to the Complainant, the disputed domain name is confusingly similar to its trademarks, because it incorporates the trademarks (with the slight misspelling of “trust” as “turst”) and merely adds the common expression “do not”. The Complainant cites UDRP precedents to support its position.
The Complainant alleges that the Respondent is not commonly known by the disputed domain name, and that it has not granted permission to the Respondent to use the disputed domain names in any way.
Further, says the Complainant, the disputed domain name redirects internet users to a website featuring generic links to third-party websites, some of which directly compete with the Complainant's business. For instance, the website to which the disputed domain name resolves features multiple links for loans, which is one of the Complainant’s primary services. Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name.
Thus, says the Complainant, the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services. The Complainant cites UDRP precedents to support its position.
The Complainant alleges that, by using the Complainant’s mark, the Respondent creates the distinct possibility that internet users will be confused by the source, sponsorship, and endorsement of the disputed domain name. By doing so, the Respondent has demonstrated an intent to capitalize on the fame of the Complainant’s marks in order to increase traffic to the website listed at the disputed domain name for the Respondent’s own pecuniary gain, as evidenced by the presence of the multiple pay-per-click links posted on the Respondent’s website. This constitutes bad faith registration and use under the Policy. The Complainant cites UDRP precedents to support its position.
The Complainant states that the Respondent registered the disputed domain name with the registrar, GoDaddy.com, LLC. Section 9 of GoDaddy’s registration agreement dealing with “Default Settings; Parked Page”, which the Respondent expressly acknowledged and agreed to when registering the disputed domain name, states that if a registrant does not proactively take action to “direct the domain name away from GoDaddy’s name servers, GoDaddy will direct the domain name to a ‘Parked Page’ (Default Setting).” Section 9 goes on to state that the use of pay-per-click advertising links on parked pages such as the disputed domain name are part of an “online domain monetization system designed to generate revenue from domain names that are not actively being used as websites”.
Thus, says the Complainant, the Respondent knew, or should have known, that the disputed domain name would be used to generate click-through advertising revenue.
B. Respondent
The Respondent states that the purpose of acquiring the disputed domain name was to set up a public forum for the open discussion of ideas and concepts related to how the Complainant interacts with its customers, and this outside of the Complainant’s censorship and control.
According to the Respondent, freedom of speech and the ability to express one’s views should not be silenced through allowing large corporations to carry out large forced wholesale domain acquisitions. It appears that the Complainant is doing a blanket internet search in attempt locate any site or domain that has its marks associated with it in attempt to locate and control these sites. The Respondent feels that it is unfair that the Complainant is able to corral all domains with the letters “TD” in them.
In reference to the pay-for-click advertising displayed on the web site associated with the disputed domain name, the Respondent states that the Complainant brought to his attention that Go-Daddy has parked this site and shows competitors’ ads; when so informed, the Respondent requested that Go-Daddy cease and desist. The Respondent states that he has never collected revenue from this site and that was not the purpose of this domain.
C. Additional Submissions
Complainant
In its Additional Submission the Complainant states that the Respondent’s claim to have registered the disputed domain name to “set up a public forum” does not hold water. The Respondent has owned the disputed domain name for almost two years and has never established a public forum or anything resembling one on the website. Instead, the Respondent has posted, or allowed to be posted, a pay-per-click website on the disputed domain name. Whether or not the Respondent himself posted the pay-per-click website is irrelevant – as the owner of the disputed domain name, the Respondent is responsible for the content that appears on the website. The Complainant cites UDRP precedents to support its position.
The Complainant makes additional submissions but, for the reasons set forth below, the Panel finds that it not necessary to summarize them.
Respondent
In his Additional Submission, the Respondent reiterates the arguments made in the Response, but does not provide any evidence to support those arguments.
In addition, the Respondent goes into some detail regarding a dispute that he and his family have with the Complainant, alleging that the extensive correspondence concerning that dispute provides evidence that he does intend to use the disputed domain name to set up a forum concerning the Complainant.
The Respondent states that he is still collecting material and did not wish to make the matter public on the web until the Complainant had more time to deal with the issue.
The Respondent goes on to contest the additional issues raised by the Complainant that are not summarized above. For the reasons set forth below, the Panel finds that it is not necessary to summarize those submissions.
The Complainant has not licensed or otherwise authorized the Respondent to use its well-known mark.
The Respondent is using the disputed domain name to resolve to a web site offering services that compete with those of the Complainant.
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 Respondent alleges that the Complainant is attempting to gain control of domain names that incorporate the letters TD. But such is not the case in the instant proceeding. Indeed, the disputed domain name in this case incorporates a misspelled version of the Complainant’s mark CANADA TRUST.
As the Complainant rights notes, registering a misspelling of that trademark by inserting “turst” instead of “trust” is an example of typosquatting – a practice in which “a registrant deliberately introduces slight deviations into famous marks” for commercial gain. See Marriott Int’l, Inc. v. Seocho, FA 149187 (NAF Apr. 28, 2003) (finding marriottt.com confusingly similar to marriott.com). A slight misspelling of the Complainant’s trademark, as found with the disputed domain name, constitutes typosquatting and thus makes the domain name confusingly similar to the Complainant’s mark. See Victoria’s Secret v. Zuccarini, FA0095762 (NAF Nov. 18, 2000) (finding that by misspelling words or adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). See also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes does not render respondent’s domain name less confusingly similar to the core trademark held by the complainant).
Further, in considering the addition of the terms “do not”, numerous Panels have established that the mere addition of generic terms, or even generic negative terms, does not sufficiently differentiate the disputed domain name from the trademark. Thus the Panel finds that the mere addition of the term “do not” does not adequately distinguish the disputed domain name from Complainant’s marks. See Disney Enters. Inc. v. McSherry, FA 154589 (NAF June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Homer TLC, Inc. v. Whois Guard, FA 619597 (NAF Feb. 14, 2006) (Finding that the addition of common words to Complainant’s registered mark did not negate the confusing similarity). If the added terms are considered generic negative words, the outcome of confusing similarity remains the same. See Yahoo! Inc. v. Fato, FA 286410 (NAF July 26, 2004) (finding the <fuckyahoo.com> domain name confusingly similar to the complainant’s YAHOO! mark); see also State Farm Mutual Automobile Insurance Company v. Sean Dada, FA 1521298 (NAF Oct. 25, 2013) (Panel finds the term “sue” is a generic negative term and <suestatefarm.info> is confusingly similar to complainant’s trademark).
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Respondent states that he intended to use the disputed domain name to set up a public forum for the open discussion of ideas and concepts related to how the Complainant interacts with its customers. However, he presents no evidence to support that statement. As the Complainant notes, the Respondent has held the disputed domain name for two years, and, during that time, has not made any visible attempt to set up the public form in question.
On the contrary, the disputed domain name is used to link to pay-per-click advertising for services that directly compete with the Complainant’s services. The Panel is not convinced by the Respondent’s argument to the effect that he has so far refrained from posting material on the web because he is allowing more time for the Complainant to address the issues, and this in particular because the Respondent does not provide any evidence to support this assertion (e.g. examples of what he would post on the web, an outline design of the web site, etc.).
On the basis of the evidence presented to it, the Panel finds that the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (NAF Sept. 26, 2003) (holding that Respondent's use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also American Century Proprietary Holdings, Inc. v. Travis Martin, FA 1262486 (NAF Jun. 23, 2009) (Holding no rights or legitimate interests where domain name resolves to a parked website and Respondent presumably generates click-through fees from such use); see also Genzyme Corp. v. Keyword Marketing, Inc., FA 1007979 (NAF Jul. 17, 2007) (Holding that Respondent has no rights or legitimate interests where domain name resolves to a pay-per-click website featuring sponsored links to various commercial websites).
The Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name.
As noted above, the disputed domain name resolves to a web site containing sponsored links to the Complainant’s competitors. As the Complainant rightly notes, previous panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links that compete with a complainant and create revenue for the respondent. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (NAF Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”);PRL USA Holdings, Inc. v. LucasCobb, D2006-0162 (WIPO Mar. 30, 2006) (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith”).
The Respondent states that he was unaware of the links in question and that he has not derived any revenue from them.
But, as the Complainant rightly states, whether or not Respondent himself posted the pay-per-click website is irrelevant—as the owner of the disputed domain name, the Respondent is responsible for the content that appears on the website. See Southpaw Enterprises, Inc. v. HB, FA 1564451 (NAF Aug. 3, 2014) (“Panelists have generally found that a domain name registrant will be responsible for content appearing on a website at its domain name, even if the registrant does not exercise direct control over that content”); see also Canyon Bicycles GmbH v. Domains by Proxy, LLC / Rob van Eck, D2014-0206 (WIPO March 14, 2014) (past Panels have established that a registrant will “be deemed responsible for content appearing on a website at its domain name even if [the registrant] does not exercise direct control over such content.” Where pay-per-click links appear at the website of a domain name, bad faith must be assumed and attributed to the registrant “unless it can show some good faith attempt toward preventing inclusion of [such] links”). Further, previous Panels have found that “it may not be necessary for the registrant itself to have profited directly under such arrangement if profit or ‘commercial gain’ was made by a third party.” See Canyon Bicycles GmbH v. Domains by Proxy, LLC / Rob van Eck, D2014-0206 (WIPO March 14, 2014).
In response to the instant Complaint, the Respondent did write to GoDaddy to request removal of the links. The Panel finds that this tardy response is not sufficient. Indeed, as the Complainant rightly points out, the Respondent knew, or should have known, that the disputed domain name would be used to generate click-through advertising revenue. Thus the Respondent must bear the consequences of having registered, and used, the disputed domain name in bad faith in the sense of the policy.
For these reasons, the Panel finds that the Complainant prevails also on this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanadadonotturst.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 13, 2014
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