The Toronto-Dominion Bank v. john jones / joh jones / batti picka / Jonathan Thomas / Jt inc.
Claim Number: FA1504001615346
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is john jones / joh jones / batti picka / Jonathan Thomas / Jt inc. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdcanadatrustwallet.com>, <tdcanadatrust0nlinesupport.com>, <tdcanadatrustoffice.com> and <tdcanadatrustsecurity.com>, registered with Bizcn.com,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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2015; the Forum received payment on April 20, 2015. The Complaint was submitted in both English and Chinese.
On May 12, 2015, Bizcn.com,Inc. confirmed by e-mail to the Forum that the <tdcanadatrustwallet.com>, <tdcanadatrust0nlinesupport.com>, <tdcanadatrustoffice.com> and <tdcanadatrustsecurity.com> domain names are registered with Bizcn.com,Inc. and that Respondent is the current registrant of the names. Bizcn.com,Inc. has verified that Respondent is bound by the Bizcn.com,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 May 15, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 4, 2015 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@tdcanadatrustwallet.com, postmaster@tdcanadatrust0nlinesupport.com, postmaster@tdcanadatrustoffice.com, postmaster@tdcanadatrustsecurity.com. Also on May 15, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant, Toronto-Dominion Bank, uses the TD and CANADA TRUST mark in associating with its leading business providing financial and banking services.
i. Complainant has rights in the TD and CANADA TRUST marks through registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”).
1. TD for banking and related financial services. (USPTO Reg. No. 1,649,009, registered June 25, 1991).
2. CANADA TRUST for operation of a financial institution comprising of a trust company and operation of a loan company. (CIPO Reg. No. TMA409300, registered March, 12 1993).
b. Respondent’s disputed domain names are confusingly similar to Complainant’s TD and CANADA TRUST marks. The four domain names are combinations of Complainant’s marks with the mere addition of generic terms such as “office,” “wallet,” “0nline support,” “security.” These generic terms and the generic top-level domain (“gTLD”) “.com” do not diminish the confusing similarity between the domains and Complainant’s marks.
2. Policy ¶ 4(a)(ii)
a. Respondent has not been commonly known by the disputed domain names based on WHOIS information indicating that Respondent identified as:
i. Batti Picka for <tdcanadatrustoffice.com>.
ii. John Jones for <tdcanadatrustwallet.com>.
iii. Jonathan Thomas for <tdcanadatrust0nlinesupport.com>.
iv. John Jones for <tdcanadatrustsecurity.com>.
b. Respondent’s use of the disputed domain names as phishing webpages or blank pages indicates a lack of rights or legitimate interests in the disputed domain names.
3. Policy ¶ 4(a)(iii)
a. Respondent is a serial cybersquatter as shown by previous WIPO decisions involving WUXI YILIAN LLC.
b. Respondent’s previous use of <tdcanadatrustwallet.com> in connection with phishing activities demonstrates bad faith registration and use.
c. Respondent’s demonstrated bad faith through the current inactive use of two of the disputed domain names.
d. Respondent had actual or constructive knowledge of Complainant’s rights in the TD and CANADA TRUST marks at the time of registration as evidenced by the use of generic terms in the disputed domain that relate to Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the WHOIS information associated with the domain names is falsified. WHOIS information previously indicated that all the disputed domains were registered to a WUXI YILIAN LLC, and that the similarity in composition and registration date of the disputed domain names is evidence that all of the registrants are the same person.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled and were registered by the same domain name holder.
Complainant is the Toronto-Dominion Bank, of Toronto, Ontario, Canada. Complainant is the owner of domestic and international registrations for the marks CANADA TRUST and TD, both alone as well as in connection with goods or services, such as TD BANK, with all such marks relating to its provision of financial and business goods and services. Complainant also owns and operates numerous websites incorporating its marks such as <tdbank.com> and <td.com>.
Respondent(s) is/are John Jones / Joh Jones / Batti Picka / Jonathan Thomas / Jt inc. (“Respondent”), whose addresses reflect locations in China, India, and the Arab Emirates. The Panel notes that the disputed domain names were created on or about;
Panel Note: Language of the Proceedings
The Panel notes the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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.
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 first argues that it has rights in the TD and CANADA TRUST marks through registrations with the USPTO and the CIPO. (Reg. No. 1,649,009, registered June 25, 1991); (Reg. No. TMA409300, registered March, 12 1993). Previous panels have held that registration of a mark with the USPTO or the CIPO is sufficient to establish a complainant’s rights in a mark. 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 Dixie Consumer Prods. LLC v. Private Whois dixiecup.com, FA 1419529 (Nat. Arb. Forum Jan. 27, 2012) (finding that complainant’s trademark registrations with a number of trademark authorities around the world, including with the CIPO and USPTO, “successfully proves a complainant has rights in a mark . . .”). The Panel here finds that Complainant has established its rights in the TD and CANADA TRUST marks pursuant to Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s disputed domain names are confusingly similar or identical to Complainant’s marks. The disputed domain names at issue are <tdcanadatrustwallet.com>, <tdcanadatrust0nlinesupport.com>, <tdcanadatrustoffice.com>, and <tdcanadatrustsecurity.com>. The Panel notes that all the domain names begin with “tdcanadatrust” and then include a generic term related to the services that Complainant provides. Prior panels have held that the addition of generic terms does not distinguish a disputed domain name from a mark, especially when the generic term relates to a complainant’s business. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). The presence of the gTLD “.com” has also been held insufficient to distinguish a disputed domain name from a complainant’s mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.). The Panel here finds that Respondent’s disputed domain names are confusingly similar to Complainant’s TD and CANADA TRUST marks under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant first argues that Respondent is not commonly known by the disputed domain names. Complainant indicates that the WHOIS information indicates that Respondent has been identified as, Batti Picka, John Jones, and Jonathon Thomas, Joh Jones, and JT Inc.. The Panel notes that these names do not resemble any of the disputed domain names registered by Respondent. The Panel further notes that Complainant claims that all of Respondent’s disputed domain names were registered by WUXI YILIAN LLC according to WHOIS information before verification. Past panels have found that a respondent is not commonly known by the disputed domain names when the WHOIS and other information reflects the contrary. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). Based on the WHOIS information, and the failure of the Respondent to address the issue the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the disputed domain names to resolve to webpages that are blank demonstrates a lack of rights or legitimate interests in the disputed domain names. Complainant notes that the domain names <tdcanadatrust0nlinesupport.com> and <tdcanadatrustoffice.com> resolving to blank pages. Previous panels have held that inactive holding of a domain name can indicate a lack of rights or legitimate interests. See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely inactively held the domain name). The Panel here finds that Respondent’s use of the disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant also argues that Respondent’s use of <tdcanadatrustwallet.com> and <tdcanadatrustsecurity.com> demonstrates a lack of rights and legitimate interests because, when resolved, the domain names display Google Safe Browsing messages warning about potential phishing attacks from the two domain names. Prior panels have found that phishing is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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 here finds that Respondent’s use of <tdcanadatrustwallet.com> and <tdcanadatrustsecurity.com> to resolve to webpages that presumably are used for phishing does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant first argues that Respondent has shown a pattern of bad faith registration. Complainant claims that Respondent’s WHOIS information previously listed WUXI YILIAN LLC as the creator of the disputed domain names. Further, WUXI YILIAN LLC has been the respondent in multiple World Intellectual Property Organization disputes that have resulted in the transfer of multiple infringing domain names. See eBay Inc., PayPal, Inc. v. Rene Rene/Wuxi Yilian LLC, D2015-0010 (WIPO March 4, 2015); see also ALDI GmbH & Co. KG v. Marius Mueller / Wuxi Yilian LLC, D2014-1391 (WIPO October 13, 2014); see also Swarovski Aktiengesellschaft v. ailong c, ailong xiong/Wuxi Yilian LLC, D2014-1353 (WIPO October 3, 2014). Prior panels have held that a history of cybersquatting can demonstrate a pattern of bad faith registration. See Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”). The Panel here finds that Respondent’s current actions and the past decisions against Respondent indicate that Respondent has exhibited bad faith under Policy ¶ 4(b)(ii).
Complainant also contends that Respondent’s previous use of <tdcanadatrustwallet.com> in connection with phishing activities demonstrates bad faith registration and use. Complainant’s exhibits show that customers and noncustomers of Complainant received text messages telling them that their account was suspended and that they should go to the <tdcanadatrustwallet.com> domain name to unlock their account. Complainant believes that this message was sent for the purposes of tricking internet users into divulging personal information. Further, Complainant provided evidence showing that the <tdcanadatrustwallet.com> webpage previously resolved to Complainant. The Panel notes that the webpage uses Complainant’s logo and color scheme while requesting that users enter their access card or username and password. Past panels have held that evidence of phishing activity can demonstrate bad faith. See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel here finds that Respondent has acted in bad faith pursuant to Policy ¶¶ 4(a)(iii).
Complainant also argues that Respondent’s inactive holding of the <tdcanadatrust0nlinesupport.com> and <tdcanadatrustoffice.com> domain names shows bad faith. The Panel again notes Complainant’s evidence indicating the disputed domain names resolving to unavailable webpages. Past panels have held that inactive holding of a domain name can constitute bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel here finds that Respondent’s inactive holding of the disputed <tdcanadatrust0nlinesupport.com> and <tdcanadatrustoffice.com> domain names demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanadatrustwallet.com>, <tdcanadatrust0nlinesupport.com>, <tdcanadatrustoffice.com> and <tdcanadatrustsecurity.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 25, 2015
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