The Toronto-Dominion Bank v. Zhang Xiao Min / Ba Wei Chuang Shen Zhen Ke Ji You Xian Gong Si
Claim Number: FA1708001744936
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Zhang Xiao Min / Ba Wei Chuang Shen Zhen Ke Ji You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <tdzbank.com>, <tdybank.com>, <tdxbank.com>, <tdubank.com>, <tdqbank.com>, <tdpbank.com>, <tdobank.com>, <tdmbank.com>, <tdjbank.com>, <tdhbank.com>, <tdrbank.com>, <tdtbank.com>, and <tdvbank.com>, registered with Hichina Zhicheng Technology Limited.
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 August 16, 2017; the Forum received payment on August 16, 2017.
On August 21, 2017, Hichina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <tdzbank.com>, <tdybank.com>, <tdxbank.com>, <tdubank.com>, <tdqbank.com>, <tdpbank.com>, <tdobank.com>, <tdmbank.com>, <tdjbank.com>, <tdhbank.com>, <tdrbank.com>, <tdtbank.com>, and <tdvbank.com> domain names are registered with Hichina Zhicheng Technology Limited and that Respondent is the current registrant of the names. Hichina Zhicheng Technology Limited has verified that Respondent is bound by the Hichina Zhicheng Technology Limited 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 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@tdzbank.com, postmaster@tdybank.com, postmaster@tdxbank.com, postmaster@tdubank.com, postmaster@tdqbank.com, postmaster@tdpbank.com, postmaster@tdobank.com, postmaster@tdmbank.com, postmaster@tdjbank.com, postmaster@tdhbank.com, postmaster@tdrbank.com, postmaster@tdtbank.com, postmaster@tdvbank.com. Also on August 24, 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 18, 2017, 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
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant uses the TD BANK mark to promote its business and has rights in the mark through registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA549396). Respondent’s domain names are confusingly similar to Complainant’s mark because each fully incorporate the mark while merely replacing the space between the terms with an alphabetical letter and appending the generic top-level domain (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has not authorized or licensed Respondent to use the TD BANK mark in any fashion, and Respondent is not commonly known by any of the disputed domain names. Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Instead, the domain names resolve to inactive webpages.
Respondent has registered and is using the infringing domain names in bad faith. Respondent’s registration of multiple infringing domain names in the present case, and history of prior UDRP decisions, suggest that Respondent has engaged in a pattern of bad faith registration. Respondent registered the domain names with actual knowledge of Complainant’s rights in the mark due to the fame of Complainant’s mark. Respondent’s use of the domain names to resolve to inactive webpages, use of typosquatting, and use of a privacy service indicate bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the Toronto-Dominion Bank, of Toronto, Ontario, Canada. Complainant is the owner of domestic and international registrations for the marks TD, TD BANK, and numerous related marks constituting the family of TD Bank marks. Complainant has continuously used its marks in connection with its provision of financial and business, goods and services, since at least as early as 1955. Complainant also owns and operates numerous websites incorporating its marks including <tdbank.com> and <td.com>.
Respondent is Zhang Xiao Min / Ba Wei Chuang Shen Zhen Ke Ji You Xian Gong Si of Guangdong, China. Respondent’s registrar’s address is listed as Beijing, China. The Panel notes that the disputed domain names were each registered on or about April 4, 2017.
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.”).
Panel Note: Language of the Proceedings
Complainant contends it is not conversant in Chinese, and that translation of the Complaint would unfairly disadvantage and burden the Complainant as well as delay these proceedings. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
Complainant registered its TD BANK mark with the CIPO (Reg. No. TMA549396) and therefore contends it has rights in the mark. Registration of a mark with a trademark authority, such as the CIPO, confers rights in a mark. See X-SCREAM VIDEO PRODUCTIONS INC. v. IT Manager, FA 1619522 (Forum June 25, 2015) (finding that that Complainant’s registration with the CIPO appropriately confers rights in the VIDEOPAGES mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has rights in the TD BANK mark.
Complainant alleges that Respondent’s domain names are confusingly similar to Complainant’s mark because each fully incorporates the mark while merely replacing the space between the terms with a different alphabetical letter, and appending the gTLD “.com.” The elimination of space, addition of a letter, and appendage of a gTLD to a fully incorporated mark do not negate confusing similarity. See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel here finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
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), 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 (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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by any of the names. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding, thereby revealing “Nexperian Holding Limited” as the registrant name. The Panel further notes that the WHOIS information of record identifies Respondent as “Zhang Xaio Min / Ba Wei Chuang Shen Zhen Ke Ji You Xian Gong Si.” Based on the WHOIS information, and Respondent’s failure to address this issue, the Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain names because the resolving webpages are inactive. Such use cannot be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant has provided screenshots of the disputed domain names’ resolving websites, which lead to error pages displaying text that reads, “This site can’t be reached.” The Panel here finds that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant contends that Respondent has registered and is using the disputed domain names in bad faith due to Respondent’s established pattern of bad faith registrations. A respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). In the present case, Respondent has registered 13 infringing domain names. Furthermore, Respondent has been party to a number of prior UDRP cases holding that it engaged in bad faith registration. Prior adverse UDRP decisions may be used to prove a Respondent’s bad faith in a present case. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Complainant alleges that Respondent was the respondent in the following UDRP decisions:
· Tyro Payments Limited ACN 103 575 042 v. Du Zheng Min / Nexperian Holding Limited, D2017-0965 (WIPO July 10, 2017)
· Aviva Brands Limited v. Deng Guo Sen / Nexperian Holding Limited, D2017-0730 (WIPO May 30, 2017)
· SUUNTO OY v. duan xiaosong, duan xiao song / Nexperian Holding Limited, D2017-0670 (WIPO May 22, 2017)
· Van Cleef & Arpels, S.A. v. Nexperian Holding Limited, D2017-0441 (WIPO May 8, 2017)
· NXP B.V. v. Shen Zhen Shi Nan Huang Dian Zi You Xian Gong Si / Shenzhen nanhuang electronics co.ltd / Nexperian Holding Limited, D2017-0296 (WIPO Apr. 26, 2017)
The Panel finds the above evidence supports a finding of bad faith in the present case per Policy ¶ 4(b)(ii).
Complainant asserts that due to the fame of its TD BANK mark and its connection to Complainant’s well-known services, Respondent’s use of the entire mark suggests opportunistic bad faith registration and leads to confusion as to the domain names’ connection with Complainant and demonstrates opportunistic bad faith registration. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with the complainant and its products that the use of the domain names by the respondent, who has no connection with the complainant, suggests opportunistic bad faith); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). In the instant proceeding Complainant has provided evidence of its world-wide recognition as a valuable brand. The Panel here finds that evidence supports a conclusion that Respondent registered and used the disputed domain names in bad faith.
Complainant contends that each of the disputed domain names resolve to inactive websites that do not contain content. Use of a disputed domain name to resolve to an inactive website is evidence of bad faith. See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant has provided screenshot evidence of the disputed domain names inactive resolving webpages. Based on that evidence, the Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent’s typosquatting behavior is evidence of bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel notes that each of the disputed domain names differs from Complainant’s mark only by replacing the space in the mark with a letter. As such, the Panel finds that Respondent has engaged in typosquatting reflective of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As 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 <tdzbank.com>, <tdybank.com>, <tdxbank.com>, <tdubank.com>, <tdqbank.com>, <tdpbank.com>, <tdobank.com>, <tdmbank.com>, <tdjbank.com>, <tdhbank.com>, <tdrbank.com>, <tdtbank.com>, and <tdvbank.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 2, 2017
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