The Toronto-Dominion Bank v. ICS INC.
Claim Number: FA1409001579222
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ctdbank.com>, registered with TUCOWS, INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2014; the National Arbitration Forum received payment on September 11, 2014.
On September 11, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <ctdbank.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@ctdbank.com. Also on September 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has registered the TD BANK mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 3,788,055 registered May 11, 2010, filed July 23, 2008) and with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 549,396 registered August 7, 2001, filed July 8, 1999) as well as other related trademarks. Complainant uses the TD BANK mark in connection with banking and financial services.
The <ctdbank.com> domain name is confusingly similar to the TD BANK mark as the name bookends the mark with a letter “c” and the generic top-level domain “.com.”
Respondent lacks rights in the <ctdbank.com> domain name and TD BANK mark. Respondent is not authorized to the use Complainant’s mark, and the WHOIS record identifies a registrant with no apparent association to the name at issue. Further, Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent uses the <ctdbank.com> domain name to redirect users to various websites that offer services related to the banking or financial industries. Presumably, Respondent generates click-through revenue from the scheme. The fact that Respondent has offered to sell the <ctdbank.com> domain name on SEDO further demonstrates a lack of rights or legitimate interests.
Respondent has acted in bad faith. Respondent is in violation of Policy ¶ 4(b)(i) as Respondent has listed the domain name for sale on the bidding site Sedo.com, with the minimum bid set at $4,999, far in excess of out-of-pocket costs. Respondent has suffered several adverse UDRP decisions regarding personal names or trademarks suggesting bad faith under Policy ¶4(b)(ii) in this case. A finding is also justified under Policy ¶ 4(b)(iii) as Respondent is using the disputed domain name to promote services in competition with Complainant, which disrupts Complainant’s own operations. Because these promoted links are also tied to click-through revenue, Policy ¶ 4(b)(iv) is also implicated. As to circumstances beyond those specifically articulated in Policy ¶ 4(b), Respondent had knowledge of Complainant’s rights in the TD BANK mark at the time the disputed domain name was registered. Additionally, Respondent’s use and registration of the name constitutes typosquatting, which is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TD BANK mark as well as in TD and CT through its registration of such mark with the CIPO and the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent is currently offering to sell the at-issue domain name in an amount in excess of its related out-of-pocket expenses.
Respondent uses the at-issue domain name to address a website displaying pay-per-click links to third-parties some of which compete with 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.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a national trademark registration for the TD BANK trademark demonstrates its rights in the TD BANK mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
In forming the at-issue domain name Respondent prefixes a “c” to Complainant’s TD BANK trademark less its space and then appends the top-level domain name “.com” to the resulting string. Complainant also has trademark rights in CT and in TB. Thus the at-issue domain name may be seen as conflating Complainant’s CT and TD marks and rendering CTD. These alterations to Complainant’s TD BANK trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <ctdbank.com> domain name is confusingly similar to Complainant’s TD BANK mark. See e.g., The Gap, Inc. v. Transure Enterprise Ltd c/o Host Master, FA 1330887 (Nat. Arb. Forum July 23, 2010) (“The Panel finds that Respondent’s <oldnacvy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark under Policy ¶ 4(a)(i) because spaces are not allowed in domain names, adding the letter ‘c,’ . . . is not sufficient to distinguish the disputed domain name from the mark, and the gTLD ‘.com’ is not relevant to Policy ¶ 4(a)(i) because it is a required element of a domain name.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “ICS INC.” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <ctdbank.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to usTLD Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply).
Further, Respondent uses the <ctdbank.com> domain name to redirect users to various websites that offer services related to the banking or financial industries. It is reasonable to assume that Respondent generates click-through revenue, and is possibly phishing personal information through this scheme. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Respondent’s offer to sell the <ctdbank.com> domain name further demonstrates Respondent’s lack of rights or legitimate interests in respect of the domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent offered to sell the at-issue domain name to Complainant for an amount in excess of its reasonable out-of pocket expenses incurred in connection with the at-issue domain name. Respondent’s offer to sell suggests bad faith pursuant to Policy 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Second, the real Respondent in interest has repeatedly registered domain names containing names of famous persons or third party trademarks. See Comerica Bank v. Contact Privacy Inc. Customer 0133903206/ICS INC . D2014-0617 (WIPO June 19, 2014); see also, OneWest Bank, FSB v. ICS INC. FA 1515044 (NAF Sept. 18, 2013); see also, Amegy Bank National Association v. ICS Inc. / Contact Privacy Inc. Customer 0133763249 D2013-0799 (WIPO June 27, 2013). Such evidence of at least three adverse UDRP decisions against Respondent suggests Respondent’s bad faith in the instant case pursuant to Policy ¶4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 0814312 (NAF Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶4(b)(ii) where the respondent had been subject to numerous UDRP proceedings and where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it and taking notice of another UDRP proceeding against the respondent to find that this is part of a pattern of such registrations).
Third, Respondent uses the at-issue domain name to ultimately address a website that displays links to some of Complainant’s competitors. Doing so disrupts Complainant’s business. Thereby, Respondent demonstrates bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii)).”
Forth, Respondent’s use of the confusingly similar at-issue domain name creates a likelihood that Internet users will be fooled into assuming Complainant is somehow associated with or sponsors Respondent’s <ctdbank.com> website. Additionally, the website associated with the at-issue domain name displays what are likely pay-per-click links. Such use of the confusingly similar domain name demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Fifth, Respondent’s <ctdbank.com> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with a targeted trademark and thereby be directed to a web presence controlled by the domain name’s registrant. Here Respondent simply inserts a letter “c” in front of Complainant’s trademark to form the typosquatted domain name. The “ct” in the resulting at-issue domain name is also reminiscent of Complainant’s CT trademark. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <ctdbank.com> domain name knowing that Complainant had trademark rights in the TD BANK mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s overt use of the TD BANK trademark in forming the at-issue domain name. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign purpose. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <ctdbank.com> domain name in bad faith pursuant to 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ctdbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 13, 2014
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