The Toronto-Dominion Bank v. Yen Leen / cmec
Claim Number: FA1702001715571
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Yen Leen / cmec (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbankeasywebonlinebanking.com> and <tdbankloginonlinebanking.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2017; the Forum received payment on February 2, 2017.
On February 3, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <tdbankeasywebonlinebanking.com> and <tdbankloginonlinebanking.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@tdbankeasywebonlinebanking.com, and postmaster@tdbankloginonlinebanking.com. Also on February 3, 2017, 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 March 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
The Toronto-Dominion Bank is the owner of hundreds of trademark registrations in Canada, the United States and elsewhere that consist of, or include, the elements TD (abbreviation of TORONTO- DOMINION) and TD BANK, as well as the trade names and unregistered trademarks TD and TD BANK in association with financial, banking and related businesses, goods, and services. Complainant’s marks are registered with the Canadian Intellectual Property Office (CIPO) and the U.S. Patent and Trademark Office’s (USPTO), the European Union Intellectual Property Office (EUIPO) and United Kingdom Intellectual Property Office (UKIPO), which demonstrate that Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as “Complainant’s Marks.” The trademarks relevant to this instant matter are TD, TDBANK, TD BANK GROUP, and EASYWEB.
Complainant, The Toronto-Dominion Bank (publicly listed NYSE: TD, TSX: TD, TYO: 8640), is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Commonly known as TD and operating as TD Bank Group, the bank was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively.
Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, the retail bank operates as TD Canada Trust and serves more than 12 million customers at over 1,100 branches. In the United States, the company operates as TD Bank (the initials are used officially for all U.S. operations). The U.S. subsidiary was created through Complainant’s acquisition of Banknorth and Commerce Bank, and for many years was known as TD Banknorth. TD Bank now serves more than 8 million customers with a network of more than 1,300 branches, primarily located in the eastern United States. TD also ranks among the world’s leading online financial services firms.
Complainant operates numerous websites, chief among them http://www.tdbank.com/ and http://www.td.com/. According to Compete.com, <tdbank.com> attracts over 2.61 million unique visitors per month, making it the 404th most popular website in the United States. Alexa.com ranks <td.com> as the 21st most popular website in Canada, 5,282nd most popular website in the United States, and 1,202nd most popular website globally.
Complainant is ranked number 71 on the 2013 Forbes Global 2000 listing. Brand Finance® Brand Directory, which ranks the world’s most valuable brands, ranks TD as number 89 on its 2013 Global 500 list. The Toronto-Dominion Bank is one of a few banks in the world rated AAA by Moody’s.
In addition, in 2013, brandZ ranked Complainant as number 46 on its list of the Top 100 most valuable global brands and as number 6 on its list of Top 10 Regional Banks in the world. Furthermore, TD has also been named one of Canada’s Top 100 Employers for the fifth year in a row. This recognition followed announcements of inclusion on the lists of Financial Post’s Ten Best Companies to Work For (2011), and as one of the Great Place to Work Institute’s Best Workplaces in Canada (2011).
The inaugural 2012 Ipsos Influence Index Study recently asked Canadians to rate 100 leading global brands on a wide variety of attributes, and TD ranked #17 on the list.
Interbrand’s Best Canadian Brands, published every two years, ranks the top 25 Canadian brands according to value and provides insight into their ability to manage brands effectively as a contributor to business performance. TD was ranked as the number 1 overall Canadian brand in the 2012 and 2014 editions of the publication.
In summary, Complainant’s brand is well recognized by consumers, industry peers, and the broader global community.
Complainant owns the Marks above for which it has obtained numerous trademark registrations. None of the listed registrations have been abandoned, cancelled, or revoked. Complainant has made significant investments over the years to advertise, promote, and protect Complainant’s Marks through various forms of media, including the Internet. Based on its extensive use and trademark registrations, Complainant owns the exclusive right to use the TD, TD BANK and EASYWEB marks for banking and related financial services.
A. The Disputed Domain Names are Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights
(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
By virtue of its federal trademark and service mark registrations, Complainant is the owner of Complainant’s trademarks. See United Way of America v. Alex Zingaus, FA 1036202 (Forum Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”). Furthermore, a complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum April 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); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 0622122 (Forum Apr. 14, 2006).
When comparing the Disputed Domain Names to Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Names and Complainant’s trademarks. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 0153545 (Forum May 27, 2003) (“[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
In creating the Disputed Domain Names, Respondent has added the generic, descriptive phrase “online banking” or “login online banking” to Complainant’s TD BANK and EASYWEB trademarks thereby making the Disputed Domain Names confusingly similar to Complainant’s trademark. The fact that such phrase is closely linked and associated with Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the Disputed Domain Names and Complainant’s trademark. More specifically:
“online banking” – Complainant offers online banking and financial services, as well as related assistance for these services, to its customers through its website found at <td.com>.
“login online banking” – Complainant is one of the largest financial institutions in North America and the world and is widely known for providing online banking services through a secure login page.
Past Panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks. See Exxon Mobil Corporation v. mga enterprises limited, FA 1273445 (Forum Aug. 26, 2009) (finding that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark). See also Allianz of Am. Corp. v. Bond, FA 0680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business…did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark). See also Kohler Co. v. Curley, FA 0890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business”).
Additionally, Respondent’s use of the Disputed Domain Name <tdbankloginonlinebanking.com> contributes to the confusion. Respondent is using the Disputed Domain Name <tdbankloginonlinebanking.com> to resolve to a website that imitates Complainant’s website at <td.com> in an attempt to obtain personal and financial information from Complainant’s customers, which suggests that Respondent intended the Disputed Domain Names to be confusingly similar to Complainant’s trademark as a means of furthering consumer confusion. In a previous case involving a domain name that resolved to a website that sought to imitate complainant’s website, a panelist found that such use was evidence that the domain name was confusingly similar to the mark in question. See The Gaming Board for Great Britain v. Gaming Board, D2004-0739 (WIPO Oct. 18, 2004) (“the way in which the Respondent has used the domain name [<gbgamingboard.org>] suggests that the Respondent intended users of the Respondent’s website to believe that the website at the disputed domain name was associated with Complainant”). As a result, Respondent’s use of the Disputed Domain Name <tdbankloginonlinebanking.com> to resolve to websites that imitate Complainant’s website is further evidence that the Disputed Domain Names are confusingly similar to Complainant’s trademark.
B. The Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Names
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The granting of registrations by the Canadian Intellectual Property Office (CIPO) Trade-marks Database and the U.S. Patent ,Trademark Office’s (USPTO), the European Union Intellectual Property Office (EUIPO) and the United Kingdom Intellectual Property Office (UKIPO) to Complainant for the TD, TD BANK and EASYWEB trademark is prima facie evidence of the validity of the term “TD,” “TD BANK” and “EASYWEB” as a trademark, of Complainant’s ownership of this trademark, and of Complainant’s exclusive right to use the TD, TD BANK and EASYWEB trademark in commerce on or in connection with the goods and/or services specified in the registration certificates.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is not commonly known by the Disputed Domain Names, which evinces a lack of rights or legitimate interests. See Policy, ¶4(c)(ii). Where “the Whois information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s…mark,” a Panel should find that Respondent is not commonly known by the Disputed Domain Names. See United Way of America v. Alex Zingaus, FA 1036202 (Forum Aug. 30, 2007). In the instant case, the pertinent Whois information identifies the Registrant as “Yen Leen” and “Yen Leen / cmec,” which does not resemble the Disputed Domain Names in any manner – thus, where no evidence, including the Whois record for the Disputed Domain Names, suggests that Respondent is commonly known by the Disputed Domain Names, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Names within the meaning of ¶4(c)(ii). See Instron Corp. v. Kaner, FA 0768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the Whois information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). See also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 0715089 (Forum July 17, 2006) (respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶4(c)(ii), where there was no evidence in the record, including the relevant Whois information, suggesting that respondent was commonly known by the disputed domain name).
In creating the impression that Respondent’s website at <tdbankloginonlinebanking.com> is one that is authorized and administered by Complainant, Respondent’s purpose is to fool unsuspecting visitors into divulging their personal information by imitating Complainant’s website, including using Complainant’s logo, and requested sensitive personal information, such as username, password and credit card numbers. Thus, the website at which Respondent’s domain name resolves seeks to take advantage of the fame of Complainant’s trademarks and the trust and goodwill that Complainant has fostered among consumers to, at minimum, illegitimately increase traffic to Respondent’s website for personal gain, and at worst, ‘phish’ personal information from Complainant’s customers (in the event that Respondent seeks to obtain visitors’ personal information as part of a larger scheme to perpetrate fraud by exploiting the fraudulently acquired personal information to, perhaps, acquire sensitive financial information). This use of the Disputed Domain Names, presumably for commercial gain, and with devious, nefarious motives, clearly fails to constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See HOPE worldwide, Ltd. v. Jin, FA 0320379 (Forum Nov. 11, 2004) (defining “phishing” as fooling “Internet users into sharing personal financial data so that identities can be stolen, fraudulent bills are run up, and spam e-mail is sent”). See also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (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)”). Accordingly, Respondent’s attempt to capitalize on Complainant’s well-known trademarks by luring unsuspecting internet users to its website in order to obtain personal information, perhaps in conjunction with some further fraudulent activity, does not constitute a use in connection with a bona fide offering of goods and services, or any other legitimate use or interest in the domain names. See Edible Communities, Inc. v. Patrick Thoreau, FA1158554 (Forum Apr. 16, 2008) (“Respondent’s use of the disputed domain name to collect personal information from Complainant’s consumers and advertisers is not a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”). See also Emaar Properties PJSC v. Castillos / Hector Castillos, FA 1472933 (Forum Jan. 10, 2013) (Panel finds that Respondent’s use of the disputed domain name to attempt to pass itself off as Complainant is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)).
Respondent is using the Disputed Domain Name <tdbankeasywebonlinebanking.com> to redirect internet users to a website that resolves to a blank page and lacks content. Respondent has failed to make use of this Disputed Domain Names’ websites and has not demonstrated any attempt to make legitimate use of the domain names and websites, which evinces a lack of rights or legitimate interests in the Disputed Domain Names, as confirmed by numerous past Panels. See Nenê f/k/a Maybyner Rodney Hilario v. Master, Host, FA 0924563 (Forum Apr. 10, 2007) (Holding that absence of content at website evinced a lack of rights or legitimate interests in the disputed domain name). See also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (Forum Sept. 2, 2004) (Respondent is using the Disputed Domain Name to resolve to an empty page featuring no substantive content or links is further evidence that Respondent's failure to actively use the Disputed Domain Name(s) suggests a lack of rights and legitimate interests in the Disputed Domain Name(s) as blank pages are 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)).
Respondent registered the Disputed Domain Names on September 15, 2016 and September 27, 2016, which is significantly after Complainant filed for registration of its relevant trademarks with CIPO and the USPTO, and also significantly after Complainant’s first use in commerce of the TD trademark in 1969.
Respondent registered the Disputed Domain Names on September 15, 2016 and September 27, 2016, which is significantly after Complainant’s registration of its TD.COM on April 15, 1998 and TDBANK.COM on April 14, 1995.
C. The Disputed Domain Names were Registered and are Being Used in Bad Faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Complainant and its TD, TD BANK and EASYWEB trademarks are known internationally. Complainant has marketed and sold its goods and services using this trademark since 1969, which is well before Respondent’s registration of the Disputed Domain Names on September 15, 2016 and September 27, 2016.
By registering domain names that add the generic, descriptive phrase “online banking” or “login online banking” to Complainant’s TD BANK and EASYWEB trademarks Respondent has created domain names that are confusingly similar to Complainant’s trademark. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. Further, Respondent has used the Disputed Domain Name <tdbankloginonlinebanking.com> to imitate Complainant’s website in an attempt to obtain sensitive personal information, such as usernames, passwords and credit card numbers from Complainant’s customers. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which Respondent would have been unaware of” Complainant’s brands at the time the Disputed Domain Names were registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, TD, TD BANK, CANADA TRUST and EASYWEB trademarks are so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Further, where the Disputed Domain Names add the generic, descriptive phrase “online banking” or “login online banking” to Complainant’s TD BANK and EASYWEB trademarks, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415 (WIPO Dec. 10, 2007)
At the time of registration of the Disputed Domain Names, Respondent knew, or at least should have known, of the existence of Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the Disputed Domain Names on September 15, 2016 and September 27, 2016, Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, Complainant’s retail bank, TD Canada Trust, serves more than 12 million customers at over 1,100 branches, which demonstrates Complainant’s fame. Further, performing searches across a number of internet search engines for “td bank easyweb online banking” and “td bank login online banking” returns multiple links referencing Complainant and its business. See Caesar World, Inc. v. Forum LLC, D2005- 0517 (WIPO Aug. 1, 2005) (“given the Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”). See also Victoria's Secret v. Hardin, FA 096694 (Forum Mar. 31, 2001) (Finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith). Further, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past Panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain in bad faith, where Complainant’s mark is well-known and the circumstances support such a finding, as is the case here. See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Forum Mar. 13, 2012) (“a finding of bad faith hinges squarely on the probability that it was more likely than not that respondent knew of, and targeted, complainant’s trade mark”). See also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (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”). See also Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., D2014-0878 (WIPO Aug. 5, 2014) (“Knowledge and targeting [of a trademark] may be proven inferentially”).
Respondent is using the Disputed Domain Names’ websites to fraudulently pose as Complainant for purposes of launching a phishing attack, which is evidence of bad faith use. Respondent has used the Disputed Domain Name <tdbankloginonlinebanking.com> to resolve to websites that imitate Complainant’s website and any internet user with the misfortune of mistakenly landing at the Disputed Domain Name could easily be deceived and misled into believing that the Disputed Domain Name is officially associated with Complainant. Having been deceived into believing that Complainant was the source of the website, such internet user could unsuspectingly supply Respondent with personal or financial information as part of Respondent’s phishing scheme, which includes usernames, passwords and customer credit card numbers. Such actions indicate that Respondent intentionally attempts to pass off the website as belonging to Complainant as part of Respondent’s phishing scheme, thus demonstrating bad faith registration and use under Policy ¶4(a)(iii). See H-D Michigan, LLC v. Private Whois Service, FA1328876 (Forum July 12, 2010) (Panel finds that efforts to pass Respondent off as Complainant represent bad faith registration and use for the purposes of Policy ¶4(a)(iii)). See also Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (Finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website so that it might fraudulently acquire personal information from the complainant’s clients). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (Finding that Respondent’s attempt to pass itself off as Complainant online was evidence that Respondent has no rights or legitimate interests in the disputed domain name). See also Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (Finding that use of the domain name <billing- juno.com> in a phishing scam demonstrated bad faith use and registration).
The Disputed Domain Name <tdbankeasywebonlinebanking.com> currently resolves to inactive sites and is not being used, though past Panels have noted that the word bad faith "use" in the context of ¶4(a)(iii) does not require a positive act on the part of Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy ¶4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"). See also Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose). See also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names”). In this case, the Disputed Domain Name is confusingly similar to Complainant’s trademarks, and Respondent has made no use of the Disputed Domain Name, factors which should be duly considered in assessing bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy). See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). See also Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
The Disputed Domain Names can only be taken as intending to cause confusion among internet users as to the source of the Disputed Domain Names, and thus, the Disputed Domain Names must be considered as having been registered and used in bad faith pursuant to Policy ¶4(b)(iv), with no good faith use possible. More specifically, where the Disputed Domain Names add the generic, descriptive phrase “online banking” or “login online banking” to Complainant’s TD BANK and EASYWEB trademarks, and attempts to obtain sensitive information from Complainant’s customers by imitating Complainant’s website, there is no plausible good-faith reason or logic for Respondent to have registered the Disputed Domain Names, and “…the only feasible explanation for Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith.” See Vevo LLC v. Ming Tuff, FA 1440981 (Forum May 29, 2012). Further, considering these circumstances, any use of the Disputed Domain Names whatsoever, whether actual or theoretical, would have to be in bad faith. See Indymac Bank v. Ebeyer, FA 0175292 (Forum Sept. 19, 2003) (Panel holding “there is no conceivable way [r]espondent could use the disputed domain names such that they would not infringe on [c]omplainant’s INDYMAC mark, and therefore it is illogical to await [r]espondent’s use of the domain names to find bad faith use”).
Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past Panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., D2003-0230 (WIPO May 16, 2003). See also T-Mobile USA, Inc. v. Utahhealth, FA 0697819 (Forum June 7, 2006) (finding that “Respondent’s efforts to hide its true identity through the use of a “proxy” domain registrar are evidence of bad faith registration”). See Yahoo! Inc. v. cancelyahoo.org Private Registrant/ A Happy DreamHost Customer, FA 1503412 (Forum July 29, 2013) (“Respondent used a privacy service to register the disputed domain name…which raised the rebuttable presumption of bad faith registration and use of the disputed domain name”).
Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”). See also RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
Finally, on balance of the facts set forth above, it is more likely than not that Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Disputed Domain Names in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., FA D2014-1754 (WIPO Jan 12, 2014) (“the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.”)
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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. 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 (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 provides banking and financial services throughout North America. Complainant uses the TD BANK and EasyWeb marks in conjunction with its business. Complainant registered the TD BANK mark with Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA549396, registered Aug. 7, 2001); as well as the EASYWEB mark (e.g., CIPO, Reg. No. TMA493469, registered, Apr. 22, 1998). Complainant also registered the TD BANK mark with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,788,055, registered May 11, 2010). Further registrations occurred in the United Kingdom and the European Union. The EasyWeb mark was registered by the CIPO on April 22, 21998. Registration with the CIPO and the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even though Respondent is in another country (in this case it is unclear if Respondent is located in the United Kingdom or the United Arab Emirates, but that doesn’t matter for the purposes of this analysis). See Dixie Consumer Prods. LLC v. Private Whois dixiecup.com, FA 1419529 (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 . . .”). Complainant has sufficiently proved its rights to the TD Bank and EasyWeb marks under Policy ¶4(a)(i).
Complainant claims Respondent’s <tdbankeasywebonlinebanking.com> and <tdbankloginonlinebanking.com> are confusingly similar to Complainant’s TD BANK and EasyWeb marks because they incorporate the TD Bank mark in its entirety (and in one case the EasyWeb mark in its entirety), omitting spaces, while adding the generic descriptive phrases “online banking” or “login” and the “.com” gTLD. A disputed domain name is confusingly similar to a mark when a disputed domain name contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). A space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007). The generic descriptive phrases are representative of the online banking and financial services Complainant provides through its websites. The addition of descriptive terms, particularly terms pertaining to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶4(a)(i). Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015). The differences between the domain names and their contained trademarks are insufficient to differentiate one from the other for the purposes of the Policy ¶4(a)(i) in this case.
Complainant claims <tdbankeasywebonlinebanking.com> combines the TD BANK mark with Complainant’s registered EASYWEB mark. “The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).” Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015). See also Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Respondent’s <tdbankeasywebonlinebanking.com> and <tdbankloginonlinebanking.com> are confusingly similar to Complainant’s TD BANK marks and EASYWEB mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant claims Respondent does not have rights or legitimate interests in <tdbankeasywebonlinebanking.com> and <tdbankloginonlinebanking.com>. Respondent is not commonly known by the disputed domain names. The WHOIS information shows Respondent initially used the privacy service “Privacy Protection Service INC d/b/a/ PrivacyProtect.org” to shield its identity from the public. Absent a response, “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name.” Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003). The Panel may conclude that “[g]iven the WHOIS contact information for the disputed domain [name], one can infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant claims it didn’t authorize or license Respondent to use the TD BANK mark in any regard, nor is Respondent affiliated with Complainant. The same can be said about the EasyWeb mark. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. Respondent’s <tdbankeasywebonlinebanking.com> resolves to a blank page with no demonstrated intent to make legitimate use of the website (in short, the domain name is held inactively). The <tdbankloginonlinebanking.com> resolves to a replica webpage imitating Complainant’s website. “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute.’” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). A respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005). Using a domain name to redirect Internet users to a replicate website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004). Respondent does not have rights or legitimate interests in <tdbankeasywebonlinebanking.com> and <tdbankloginonlinebanking.com> pursuant to Policy ¶4(c)(i) or ¶4(c)(iii).
Respondent registered the domain names using a privacy service. This means Respondent has done nothing to publicly associate itself with the disputed domain names. Therefore, Respondent acquired no rights simply by registering and using the disputed domain names.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using <tdbankeasywebonlinebanking.com> and <tdbankloginonlinebanking.com> in bad faith. The <tdbankeasywebonlinebanking.com> domain resolves to an inactive webpage. The <tdbankloginonlinebanking.com> domain resolves to a replica website identical to Complainant’s website (although it appears to be non-functional). The <tdbankeasywebonlinebanking.com> domain name is intended to confuse internet users by resolving to an inactive website. The <tdbankloginonlinebanking.com> domain name is likely some kind of a phishing website, attempting to pass itself off as Complainant to obtain users’ personal and financial information. The “[f]ailure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).” VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015). Using a domain name that “is confusingly similar to [c]omplainant’s mark, redirecting Internet users to a website that imitates [c]omplainant’s . . . website, and is used to fraudulently acquire personal information from [c]omplainant’s clients” is evidence of bad faith registration and use under both Policy ¶¶4(b)(iv) and (a)(iii). See generally Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). “Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii)” and Respondent’s phishing expedition, Respondent has engaged in bad faith registration and use under Policy ¶¶4(b)(iv) and (a)(iii). Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014); McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA1409001580883 (Forum Oct. 25, 2014).
Complainant claims Respondent registered <tdbankeasywebonlinebanking.com> and <tdbankloginonlinebanking.com> with actual knowledge of Complainant and its rights to the TD BANK mark. This is certainly true regarding the <tdbankloginonlinebanking.com> domain name because it is a replica of Complainant’s real web site. The Panel notes Respondent chose <tdbankeasywebonlinebanking.com > rather than something completely out of context (such as <tdbankandTilt>). The TD BANK mark has certainly existed a long time and has been famous a long time. Complainant’s EasyWeb mark is incorporated into this domain name. It would seem very improbable Respondent picked the descriptive words it did unless Respondent knew of Complainant’s mark. This Panel is convinced Respondent clearly knew about Complainant’s rights to the marks. Respondent "must have known about Complainant's mark when it registered the subject domain name" because the link between Complainant's mark and the content advertised on Respondent's <tdbankloginonlinebanking.com> website seems obvious. Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).
Finally, Respondent registered and used the disputed domain names using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. Therefore, this Panel is comfortable finding bad faith on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tdbankeasywebonlinebanking.com> and <tdbankloginonlinebanking.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, March 13, 2017
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