The Toronto-Dominion Bank v. Yee Chenxiao
Claim Number: FA1708001744935
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Yee Chenxiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com>, registered with Domain.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2017; the Forum received payment on August 16, 2017.
On Aug 16, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@tdcanadatrusttdcanadatrust.com, postmaster@tdbanktdbank.com, postmaster@tdbanmk.com, postmaster@tdbznk.com. Also on August 17, 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 September 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. The Toronto-Dominion Bank, is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. In Connection with this business, Complainant uses the TD mark, the TD BANK mark, and the CANADA TRUST mark in association with its financial, banking and related goods and services.
2. Complainant has rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”), as well as various other trademark agencies (e.g. TD: USPTO—Reg. No. 3,041,792, registered Jan. 10, 2006; CIPO—Reg. No. TMA396087, registered Mar. 20, 1992. TD BANK: USPTO—Reg. No. 3,788,055, registered May 11, 2010; CIPO—Reg. No. TMA549396, registered Aug. 7, 2001. CANADA TRUST: CIPO—Reg. No. TMA409300, registered March 12, 1993).
3. Respondent’s <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> domain names[1] are confusingly similar to Complainant’s marks, as they each consist completely of one or more of Complainant’s marks—less the spaces—and append the generic top-level domain (“gTLD”) “.com.” Respondent’s <tdbanmk.com>, and <tdbznk.com> domain names also introduce typographical errors by adding or replacing a letter in the TD BANK mark.
4. Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed Respondent to use any of its marks for any reason.
5. Respondent’s use of the domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather the domain names resolve to webpages listing third-party links, some of which link to competitors of Complainant’s business.
6. Respondent has registered and used the domain names in bad faith. Respondent currently holds registrations for other domain names that misappropriate the trademarks of well-known brands and businesses, indicating a pattern of cybersquatting behavior. Respondent is also creating a likelihood of confusion with Complainant’s marks for pecuniary gain. Further, Respondent’s typosquatting behavior with regards to the <tdbanmk.com> and <tdbznk.com> domain names indicates bad faith. Finally, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business, indicating it has registered and used the domain names with actual and/or constructive knowledge of Complainant’s rights in the infringed-upon marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TD, TD BANK and CANADA TRUST marks. Respondent’s domain names are confusingly similar to Complainant’s TD, TD BANK and CANADA TRUST marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> domain names and that Respondent registered and uses the domain names 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 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. 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 has rights in the TD mark, the TD BANK mark, and the CANADA TRUST mark based upon registration of the marks with the USPTO and/or CIPO (e.g. TD: USPTO—Reg. No. 3,041,792, registered Jan. 10, 2006; CIPO—Reg. No. TMA396087, registered Mar. 20, 1992. TD BANK: USPTO—Reg. No. 3,788,055, registered May 11, 2010; CIPO—Reg. No. TMA549396, registered Aug. 7, 2001. CANADA TRUST: CIPO—Reg. No. TMA409300, registered March 12, 1993). Registration of a mark with trademark authorities is sufficient to establish rights in that mark. See THE TORONTO-DOMINION BANK v. Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho, FA 1724017 (Forum May 17, 2017) (finding registrations with the USPTO and CIPO are satisfactory demonstrations of Policy ¶ 4(a)(i) rights); see also The Toronto-Dominion Bank v. Chris Minor, FA 1710082 (Forum Feb. 13, 2017) (“Previous [p]anels have routinely held, and this Panel holds as well, that Complainant has rights in a mark based on registration of the mark with the CIPO.”). The Panel therefore holds that Complainant’s registration of the TD, TD BANK, and CANADA TRUST marks with the USPTO and/or CIPO is sufficient to establish rights in the marks under Policy ¶ 4(a)(i).
Complainant claims Respondent’s <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> domain names are confusingly similar to Complainant’s mark, as they each consist completely of one or more of Complainant’s marks, less the spaces, and append the generic top-level domain (“gTLD”) “.com.” Omission of spaces and addition of gTLDs are irrelevant in a Policy ¶ 4(a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces.
Respondent’s <tdcanadatrusttdcanadatrust.com> combines the TD and the CANADA TRUST marks, and repeats the resulting phrase to form a domain name. Similarly, the <tdbanktdbank.com> domain name simply repeats the TD BANK mark. The combination of a complainant’s marks to form a domain name does not remove the resultant domain name from confusing similarity under Policy ¶ 4(a)(i). See Textron Innovations Inc. v. Sheng Liang / Sarawina, FA 1622906 (Forum July 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) where Respondent’s <greenleetextron.com> domain name merely combined Complainant’s TEXTRON and GREENLEE marks and added the “.com” generic top-level domain suffix.).
Respondent’s <tdbanmk.com> and <tdbznk.com> domain names consist wholly of the TD BANK mark and differ only by the introduction of typographical errors. The <tdbanmk.com> domain name adds the letter “m” immediately after the letter “n” in the mark; and the <tdbznk.com> domain name replaces the letter “a” with a “z.” The introduced letter is immediately adjacent to either the preceding letter or replaced letter on a common QWERTY keyboard. Introduction of minor typographical errors to a mark in order to form a domain name does not distinguish that domain name from the mark for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). The Panel therefore finds the <tdbanmk.com> and <tdbznk.com> domain names to be confusingly similar to the TD BANK mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> domain names, as Respondent is not commonly known by the names, nor has Complainant authorized Respondent to use the TD, TD BANK, or CANADA TRUST marks in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Yee Chenxiao.” Additionally, lack of evidence in the record to indicate that the Respondent had been authorized to register a domain name using the Complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> domain names.
Complainant further argues Respondent’s lack of rights or legitimate interests in the domain names is shown by Respondent’s failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant has provided evidence that the domain names redirect Internet users to a landing page comprising a directory of third-party links, some of which link to Complainant’s competitors. Use of a domain name containing a mark of another party to resolve to a website hosting competing links amounts to neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel agrees that Respondent’s use of <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> is evidence of its lack or rights or legitimate interests in the domain names and failure to make a bona fide offer of goods or services or a legitimate non-commercial or fair use.
Complainant also contends that the <tdbanmk.com> and <tdbznk.com> domain names are typosquatted versions of the TD BANK mark. Typosquatting of a mark can be evidence that a respondent lacks rights and legitimate interests in the resultant domain name per Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). The Panel agrees and therefore finds Respondent engaged in typosquatting with respect to the <tdbanmk.com> and <tdbznk.com> domain names, and that Respondent therefore lacks rights and legitimate interests in the same.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has shown that Respondent holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses, indicating a pattern of bad faith registration and use of domain names. Where a respondent has registered multiple infringing domain names that are unrelated to its business, bad faith per Policy ¶ 4(b)(ii) may be found. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites). The fact that there are multiple domain names in the current case, also indicates Policy ¶ 4(b)(ii) bad faith. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). The Panel therefore finds Respondent registered and used the <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> domain names in bad faith per Policy ¶ 4(b)(ii).
Complainant also contends that Respondent’s bad faith is exhibited through its use of the domain names to resolve to pages of third-party links which link to competitors of Complainant’s business. Bad faith has been found when a respondent is using a domain name to resolve to a website which links to services competing with a complainant. See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel agrees that Respondent’s registration and use of the website shows bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant next argues that Respondent’s typosquatting behavior with regard to the <tdbanmk.com> and <tdbznk.com> domain names demonstrates its bad faith. Introduction of typographical errors to a mark in order to form a domain name can amount to typosquatting and is evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). The Panel agrees this amounts to typosquatting and holds it to be independent evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the TD mark, the TD BANK mark, and the CANADA TRUST mark. Complainant argues that Respondent’s use of Complainant’s multiple marks indicates that Respondent is familiar with Complainant’s business and demonstrates that Respondent had actual knowledge of Complainant's marks and rights. The Panel agrees and finds Respondent had actual knowledge of Complainant's marks and rights and therefore determines that Respondent registered the <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanadatrusttdcanadatrust.com>, <tdbanktdbank.com>, <tdbanmk.com>, and <tdbznk.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 15, 2017
[1]The <tdcanadatrusttdcanadatrust.com> and <tdbanktdbank.com> domain names were registered on January 16, 2017; and <tdbanmk.com> and <tdbznk.com> were registered on January 14, 2017.
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