The Toronto-Dominion Bank v. RAKSHITA MERCANTILE PRIVATE LIMITED
Claim Number: FA1408001573873
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Rakshita Mercantile Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdwatherhouse.com>, registered with Tirupati Domains and Hosting Pvt 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 August 7, 2014; the National Arbitration Forum received payment on August 7, 2014.
On August 9, 2014, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <tdwatherhouse.com> domain name is registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt 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 August 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@tdwatherhouse.com. Also on August 15, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 10, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tdwatherhouse.com> domain name, the domain name at issue, is confusingly similar to Complainant’s TD WATERHOUSE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the second largest bank in Canada as measured by market capitalization and deposits. Complainant uses the TD WATERHOUSE mark for securities brokerage and financial advisory services. Complainant owns the TD WATERHOUSE mark through registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 600,414 registered September 10, 2003). The <tdwatherhouse.com> domain name is confusingly similar to the TD WATERHOUSE mark. The disputed domain name varies from the mark by a single letter, namely, the letter “h” is inserted between the “t” and “e” or WATERHOUSE.
Policy ¶ 4(a)(ii)
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not known by the disputed domain name. The registrant of record is “RAKSHITA MERCANTILE PRIVATE LIMITED,” shows no association with the disputed domain name. Respondent is using the disputed domain name to feature generic links to third-party websites, some of which compete with Complainant’s business. Respondent likely generates click-through revenue from the linked pages. The domain name occasionally resolves to a website offering visitors: “Get [a] Chance at Winning Millions,” which may be used to phish personal information, and certainly demonstrates Respondent’s aspiration to profit from the disputed domain name. Such use does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Policy ¶ 4(a)(iii)
Respondent’s bad faith use and registration is apparent on four grounds. First, Respondent has a history of cybersquatting as demonstrated by prior UDRP decisions. Second, in violation of Policy ¶ 4(b)(iv), Respondent is using the disputed domain name to redirect users to a website featuring links to third-party websites, and presumably generating pay-per-click fees. Third, Respondent had constructive, if not actual, knowledge of Complainant’s rights in the mark at the time of registration. Fourth, Respondent is attempting to capitalize on typing errors committed by Internet users seeking Complainant’s services online.
The <tdwatherhouse.com> domain name was registered on October 3, 2005.
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 as measured by market capitalization and deposits. Complainant uses the TD WATERHOUSE mark for securities brokerage and financial advisory services. Complainant owns the TD WATERHOUSE mark through registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 600,414 registered September 10, 2003). Despite the fact that Respondent appears to reside in India, such residence beyond the jurisdiction of the registering trademark agency is immaterial under Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, Complainant’s CIPO registration establishes Complainant’s rights in the TD WATERHOUSE mark for purposes of Policy ¶ 4(a)(i). See Seiko Epson Corp. v. Citizens News Network, FA 1389991 (Nat. Arb. Forum June 30, 2011) (finding that complainant had established Policy ¶ 4(a)(i) rights in its mark through its trademark registrations with the USPTO and CIPO).
The <tdwatherhouse.com> domain name is confusingly similar to the TD WATERHOUSE mark. The disputed domain name varies from the mark by a single letter, namely, the letter “h” is inserted between the “t” and “e” or WATERHOUSE. The domain name eliminates the spacing from the mark and adds the generic top-level domain “gTLD” “.com.” The elimination of spacing and inclusion of a gTLD are irrelevant in the confusing similarity analysis, and the alteration by a single letter to the otherwise incorporated TD WATERHOUSE mark does not sufficiently distinguish the <tdwatherhouse.com> domain name from the mark. See, e.g., Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD). Accordingly, the <tdwatherhouse.com> domain name is confusingly similar to the TD WATERHOUSE mark, and Complainant has satisfied 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.”).
Respondent is not known by the disputed domain name. The WHOIS record reflects that the registrant of record is “RAKSHITA MERCANTILE PRIVATE LIMITED,” which shows no association to the disputed domain name. Based on the available evidence which is unenlightened by a Response from Respondent, Respondent is not commonly known by the disputed domain name pursuant to 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).
Further, Respondent is using the disputed domain name to feature generic links to third-party websites, some of which compete with Complainant’s business. Presumably, Respondent generates click-through revenue from the linked pages. Such use does not amount to a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The web page promotes such links as “RIA Brokerage Services,” “Mason Financial Services,” and “Scottrade Brokerage.” See id. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel wrote, “The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).” The case at hand is comparable. Respondent’s use of the disputed domain name to promote competing links does not amount to a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
The domain name occasionally resolves to a website offering visitors the opportunity: “Get [a] Chance at Winning Millions.” This page may be used to phish personal information, but certainly it demonstrates Respondent’s aspiration to profit from the disputed domain name. This suggests that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has a history of cybersquatting as demonstrated by prior UDRP decisions, and such a record evidences bad faith in the present matter. Complainant cites to four previous cases against Respondent where the domain name at issue was transferred from Respondent: John Hancock Life Ins. Co. (U.S.A.) v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1491155 (Nat. Arb. Forum May 7, 2013); Vanguard Trademark Holdings USA LLC v. Rakshita Mercantile Private Limited, FA 1349805 (Nat. Arb. Forum Nov. 18, 2010); Travelocity.com LP v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1305139 (Nat. Arb. Forum March 15, 2010); Allianz SE v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1277743 (Nat. Arb. Forum Sept. 22, 2009). Prior panels have consistently held that previous findings of bad faith can inform the instant panel of historical bad faith determinations. Notably, in Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), the panel found bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants. Accordingly, Respondent’s history of bad faith registration and use strongly suggests bad faith in the current proceeding pursuant to Policy ¶4(b)(ii).
Further, Respondent has acted in violation of Policy ¶ 4(b)(iv) by using the disputed domain name to redirect users to a website featuring links to third-party websites and presumably generating pay-per-click fees. The featured links appear to include competitors of Complainant in the brokerage and financial services sector, such as “RIA Brokerage Services,” “Mason Financial Services,” and “Scottrade Brokerage.” Accordingly, Respondent has intentionally attempted to confuse users as to Complainant’s affiliation with the disputed domain name in hopes of profiting from the goodwill association with Complainant, and this is evidence of bad faith pursuant to 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.’”).
Respondent had constructive, if not actual, knowledge of Complainant’s rights in the mark at the time of registration. Prior panels have found evidence of bad faith where actual knowledge is present or can be inferred based on the totality of the circumstances, but are hesitant to base a finding of bad faith on mere constructive knowledge. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, this Panel finds that Respondent had actual knowledge of Complainant’s rights in the TD WATERHOUSE mark at the time Respondent registered the <tdwatherhouse.com> domain name, and this is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Respondent is attempting to capitalize on typing errors committed by Internet users seeking Complainant’s services online. Such behavior is referred to as typosquatting, and constitutes as bad faith. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”). Here, the disputed domain name deviates from the mark by a single letter, specifically, the letter “h” is added between the “t” and “e” or WATERHOUSE. Respondent’s registration of the <tdwatherhouse.com> domain name amounts to typosquatting of the TD WATERHOUSE mark, and the Panel finds this to be additional evidence of bad faith per Policy ¶ 4(a)(iii).
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 <tdwatherhouse.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq.,, Panelist
Dated: September 11, 2014
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