The Toronto-Dominion Bank v. Yanli Li / Yanli
Claim Number: FA1809001808698
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Yanli Li / Yanli (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdpersonalbank.com>, <tdpersonabanking.com>, and <tdpersonalbankin.com>, registered with 1API GmbH.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2018; the Forum received payment on September 25, 2018.
On September 26, 2018, 1API GmbH confirmed by e-mail to the Forum that the <tdpersonalbank.com>, <tdpersonabanking.com>, and <tdpersonalbankin.com> domain names are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 October 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@tdpersonalbank.com, postmaster@tdpersonabanking.com, postmaster@tdpersonalbankin.com. Also on October 1, 2018, 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 October 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant has over 86,000 employees and over 25 million clients worldwide. Complainant registered its TD and TD BANK marks in the United States in, respectively, 1991 and 2009; and in Canada in 2005 and 2001. Complainant uses those marks to market its products and services, including personal banking services.
Complainant alleges that the disputed domain names are confusingly similar to Complainant’s TD and TD BANK marks as they incorporate the marks in their entirety, merely adding the descriptive term “personal” or “persona,” adding the suffix “ing” or “in,” and adding a “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s TD or TD BANK marks and is not commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain names redirect users to a website featuring links to third-party websites, some of which directly compete with Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has engaged in a pattern of bad faith registration and use of domain names and has registered many domain names containing third party marks. Respondent also attempts to attract, for commercial gain, users to the disputed domain name where it generates revenue via competing, pay-per-click links. Furthermore, Respondent failed to respond to Complainant’s cease and desist letters. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the TD and TD BANK marks prior to registering the disputed domain names. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks TD and TD BANK and uses it to provide banking and financial services, including personal banking.
Complainant’s rights in its mark date back to, respectively, 1991 and 2001.
The disputed domain names were all registered on October 6, 2017.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain names resolve to a website which displays links to third-party websites, some of which compete with Complainant’s business. Respondent has engaged in a pattern of bad faith registration and use of 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.”).
The disputed domain names are confusingly similar to the TD and TD BANK marks, as the names incorporate a descriptive term “personal” or “persona”, attaching a suffix (“ing” or “in”) to complainant’s mark, and appending a “.com” gTLD. The cited terms describe Complainant’s personal banking business. Adding a generic or descriptive term and a gTLD to a complainant’s mark may not sufficiently mitigate any confusing similarity between the disputed domain name and mark in a Policy ¶ 4(a)(i) analysis. 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 Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). The Panel may therefore finds that the <tdpersonalbank.com>, <tdpersonabanking.com>, and <tdpersonalbankin.com> domain names are confusingly similar to the TD and TD BANK marks per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the TD and TD BANK marks in any way. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies the registrant as “Yanli Li / Yanli”. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names.
Further, Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the domain names resolves to a website which is being used to obtain click-through revenue by linking to third-party websites, some of which compete with Complainant’s business. Use of a domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel therefore finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving websites feature links to third party websites, some of which compete with Complainant’s business. Use of a domain name to resolve to a page of third-party links, including competitive links, can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, 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 therefore finds that Respondent has registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Further, Respondent’s registration of the disputed domain names is part of a pattern of bad faith registration and use of domain names. Complainant provides a list of prior UDRP cases where Respondent has been ordered to transfer ownership of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP precedent, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). The Panel therefore finds that the registration and use of the disputed domain names is part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdpersonalbank.com>, <tdpersonabanking.com>, and <tdpersonalbankin.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 26, 2018
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