The Toronto-Dominion Bank v. I S / ICS INC
Claim Number: FA1712001761347
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is I S / ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwtdbanklogin.com>, <wwwtdbankcardservices.com>, <tdcardsservice.com>, and <tdcradservices.com>, registered with Godaddy.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 5, 2017; the Forum received payment on December 5, 2017.
On December 6, 2017, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <wwwtdbanklogin.com>, <wwwtdbankcardservices.com>, <tdcardsservice.com>, and <tdcradservices.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.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 December 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2018 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@wwwtdbanklogin.com, postmaster@wwwtdbankcardservices.com, postmaster@tdcardsservice.com, and postmaster@tdcradservices.com. Also on December 18, 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 January 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 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 registered the TD (e.g., Reg. No. TMA396087, registered Mar. 20, 1992) and TD BANK (e.g., Reg. No. TMA549396, registered Aug. 7, 2001) marks with the Canadian Intellectual Property Office (“CIPO”). Respondent’s <wwwtdbanklogin.com>, <wwwtdbankcardservices.com>, <tdcardsservice.com>, and <tdcradservices.com> domain names are confusingly similar as they fully incorporate one of the marks and add generic or descriptive terms such as “www,” “login,” “card services,” “card service,” or “crad services,” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its marks in any manner. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the <wwwtdbanklogin.com>, <tdcardsservice.com> and <tdcradservices.com> domain names to redirect Internet users to websites featuring links to third-party websites, some of which directly compete with Complainant's business. Further, the <wwwtdbankcardservices.com> domain name redirects Internet users to a third party website unrelated to Complainant and requires users to download a privacy app not associated with Complainant. Additionally, Respondent offers the <wwwtdbanklogin.com> and <tdcardsservice.com> domain names for sale in amounts that exceed the out-of-pocket expenses in registering the names.
Respondent registered and uses the disputed domain names in bad faith. Respondent is currently offering to sell the <wwwtdbanklogin.com> and <tdcardsservice.com> domain names in excess of its out-of-pocket expenses. Further, Respondent has engaged in a pattern of registering confusingly similar domain names, including the four at issue in this proceeding, and has prior adverse UDRP decisions against it. Additionally, Respondent registered the <wwwtdbanklogin.com>, <tdcardsservice.com> and <tdcradservices.com> domain names as an attempt to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark to offer competing hyperlinks to third-party, or Complainant’s own, websites. The <wwwtdbankcardservices.com> domain name also causes confusion in Internet users by redirecting users to a third-party website wholly unrelated to Complainant. Finally, Respondent, by registering domain names so closely resembling Complainant’s TD and TD BANK marks, must have been aware, or should have been aware, of Complainant’s rights in the mark prior to registering the domain names at issue.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <wwwtdbanklogin.com>, <wwwtdbankcardservices.com>, <tdcardsservice.com>, and <tdcradservices.com> domain names.
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 registered the TD (e.g., Reg. No. TMA396087, registered Mar. 20, 1992) and TD BANK (e.g., Reg. No. TMA549396, registered Aug. 7, 2001) marks with the CIPO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”). Accordingly, the Panel finds that Complainant has established rights in the TD and TD BANK marks under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <wwwtdbanklogin.com>, <wwwtdbankcardservices.com>, <tdcardsservice.com>, and <tdcradservices.com> domain names are confusingly similar as they fully incorporate one of the marks and add generic or descriptive terms such as “www,” “login,” “card services,” “card service,” or “crad services,” along with the gTLD “.com.” The addition of generic or descriptive terms have been found to not sufficiently distinguish domain names. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).) Similarly, Panels have held that adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel finds that Respondent has not included elements in the domain names that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 contends that Respondent has no rights or legitimate interests in the disputed domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “I S / ICS INC” as the registrant for all of the domain names. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TD or TD BANK marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use its marks in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by any of the domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the <wwwtdbanklogin.com>, <tdcardsservice.com> and <tdcradservices.com> domain names to resolve in websites that contain hyperlinks redirecting users to services that directly compete with Complainant, presumably to commercially benefit from pay-per-click fees. Using confusingly similar domain names to offer links to services in direct competition with a complainant generally does not qualify as making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the resolving webpages for the three domain names mentioned at the beginning of this paragraph, which display links such as “TD Bank Login,” “TDC,” and “Credit Card Points Redemption.” Accordingly, the Panel finds that Respondent displays competing hyperlinks on the resolving webpages for the <wwwtdbanklogin.com>, <tdcardsservice.com> and <tdcradservices.com> domain names and fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Further, Complainant argues that Respondent doesn’t use the <wwwtdbankcardservices.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as it redirects Internet users to a third party website unrelated to Complainant and requires users to download a privacy app not associated with Complainant. Using a confusingly similar domain to promote unrelated services can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). The screenshot provided by Complainant shows that the resolving webpage for the <wwwtdbankcardservices.com> domain name displays the message “You’re one click from your destination. Check our offer before you continue to your destination” and contains a button for users to click. The Panel finds that Respondent fails to use the <wwwtdbankcardservices.com> domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant claims that Respondent offers the <wwwtdbanklogin.com> and <tdcardsservice.com> domain names for sale in amounts that exceed the out-of-pocket expenses in registering the names. Offering confusingly similar domain names for sale can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). On the <afternic.com> webpage provided by Complainant, it shows that both of the above-referenced domain names are for sale for $799.00. Accordingly, the Panel agrees and finds that Respondent offers the <wwwtdbanklogin.com> and <tdcardsservice.com> domain names for sale, indicative of possessing no rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant claims that Respondent registered the <wwwtdbanklogin.com> and <tdcardsservice.com> domain names in bad faith as Respondent currently offers the domain names for sale in excess of its out-of-pocket expenses. Offering confusingly similar domain names for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). On the <afternic.com> webpage provided by Complainant, it shows that both of the above-referenced domain names are for sale for $799.00. Respondent’s offering of the domain names for sale to the general public is evidence of bad faith registration under Policy ¶ 4(b)(i).
Complainant further argues that Respondent registered the domain names in bad faith as Respondent has a propensity for registering confusingly similar domain names, including the four at issue in this proceeding, and has prior adverse UDRP decisions against it. A complainant may use the registration of multiple confusingly similar domain names and prior adverse UDRP decisions against a respondent in the current proceeding to evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”); see also Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum November 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 provides a list of prior UDRP cases involving Respondent, including 3 filed and won by Complainant. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith based on Respondent’s prior history of registering confusingly similar domain names along with the four domain names it registered at-issue in the current proceeding.
Additionally, Complainant argues that Respondent registered and uses the disputed domain names in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering either competing hyperlinks or services unrelated to Complainant. Using domain names that trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). The screenshots provided by Complainant for the resolving webpages shows that the <wwwtdbanklogin.com>, <tdcardsservice.com> and <tdcradservices.com> domain names all contain hyperlinks to services related to those of Complainant, while the remaining <wwwtdbankcardservices.com> domain name appears to offer a generic link for users to download a privacy server. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s TD and TD BANK marks at the time of registering the domain names at issue. However, the Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain names and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent, by registering domain names so closely resembling Complainant’s TD and TD BANK marks, has demonstrated a knowledge of Complainant’s rights in the two marks prior to registering the domain names at issue. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s marks, demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <wwwtdbanklogin.com>, <wwwtdbankcardservices.com>, <tdcardsservice.com>, and <tdcradservices.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 16, 2018
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