The Toronto-Dominion Bank v. 胡啸
Claim Number: FA1612001707007
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is 胡啸 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdautofinancee.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2016; the Forum received payment on December 12, 2016.
On December 12, 2016, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <tdautofinancee.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. 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 December 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017 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@tdautofinancee.com. Also on December 14, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 a formal response from Respondent.
The Panel notes that the Registration Agreement is in the Chinese language making Chinese the language of the proceedings. Nonetheless, Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to Rule 11(a).
It is established practice to take Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceedings to ensure fairness and justice to both parties. In that regard, the Panel notes correspondence from Respondent to the Forum stating (in English):
“… I can transfer this domain to you whitout (sic) any arbitration. You said I better contact complainant’s representation, but they never reply my email. Now if you want filed the case, that is OK, I will play your game. But still, I can transfer this domain to you or complainant’s representation, for just $1500 reasonable transfer fee.”
The Panel notes that Complainant had in fact responded to Respondent as follows:
“I did not receive a response to my first email sent to you on December 19, 2016. Please find attached the FORUM Stay Request for Case No. FA1612001707007. Please sign, date and send the completed form back no later than January 9, 2017. Once received I will submit to FORUM.
Please note that if the form is not received by that date, the stay request will be removed and the case will proceed as filed.”
The Panel further notes that Complainant wrote to the Forum stating that:
“Because we never received a response to our request that the Respondent sign the Stay Request form, we would now like to remove that request and proceed with the case as filed.”
Following the case of The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) the Panel finds that there is good evidence that Respondent has command of the English language and so, pursuant to UDRP Rule 11(a), the Panel decides that the proceedings should be in English. The Panel further finds that there was no mutual request for stay of these Administrative Proceedings and that Respondent’s offer to transfer the domain name was conditional upon payment of USD1500.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in TD AUTO FINANCE and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides banking and financial services;
2. Complainant is the owner of the trademark TD AUTO FINANCE which is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,259,945, registered from January 13, 2011;
3. the disputed domain name was created on July 10, 2016;
4. the domain name redirects internet users to a website at www.tdautofinance.cm, which competes with Complainant by purporting to offer auto financing; and
5. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for TD AUTO FINANCE, the Panel is satisfied that it has trademark rights in that expression.[i]
The disputed domain name makes small additions to the trademark. It adds the non-distinctive general top-level domain,“.com”, which can be ignored for the purposes of comparison. It further adds an additional letter “e” to the end of the word “finance”. Finally, it removes the spaces between the elements of the trademark.
Those additions and alterations do not affect the identity of the trademark which remains the recognizable element of the domain name.[ii] The Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iii]
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name.
There is no evidence that Respondent has relevant trademark rights and Complainant has not permitted Respondent to use the trademark.
Complainant provides evidence that the disputed domain name redirects Internet users to a website at www.tdautofinance.cm which competes with Complainant’s business under the trademark by purporting to offer auto financing. The Panel finds that such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Panel finds that Complainant has established a prima facie case[iv] and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
In the absence of a Response there is nothing on which a claim to rights or interests in the domain name can rest and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
In this case Panel finds registration and use in bad faith pursuant to paragraph 4(b)(iv) above. The resolving website exists for commercial gain. Panel has already found the domain name to be confusingly similar to the trademark. In terms of paragraph 4(b)(iv), Panel finds that Respondent has intentionally attempted to attract, for gain, internet users to its website or other online location by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of that website.[v]
Panel finds registration and use in bad faith and the third limb of the Policy 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 <tdautofinancee.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: January 25, 2017
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[ii] See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)) both finding that the addition of a gTLD and the omission of spacing between words were generally trivial; see also Priceline.com, Inc. v. Above.com Legal, FA 1547289 (FORUM Apr. 11, 2014) finding <pricelinee.com> confusingly similar to PRICELINE.COM.
[iii] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[iv] See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (FORUM Feb. 3, 2016) finding that complainant provided freelance talent services, and that respondent competed with complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use.
[v] See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (FORUM May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
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