The Toronto-Dominion Bank v. Long Xiang
Claim Number: FA1811001817214
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Long Xiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ustdbank.app> and <usdtbank.app>, registered with West263 International 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2018; the Forum received payment on November 20, 2018.
On November 20, 2018, Dec 4, 2018, West263 International Limited confirmed by e-mail to the Forum that the <ustdbank.app> and <usdtbank.app> domain names are registered with West263 International Limited and that Respondent is the current registrant of the names. West263 International Limited has verified that Respondent is bound by the West263 International 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 December 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@ustdbank.app, postmaster@usdtbank.app. Also on December 5, 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.
A timely Response was received and determined to be complete on December 7, 2018.
On December 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
Complainant, The Toronto-Dominion Bank, uses the TD and TD BANK marks to provide and market its financial products and services. Complainant has rights in the TD and TD BANK marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., TD—Reg. No. 1,649,009, registered June 25, 1991; TD BANK—Reg. No. 3,788,055, registered May 11, 2010). See Amend. Compl. Ex. A. Respondent’s <ustdbank.app> and <usdtbank.app> are confusingly similar as they contain Complainant’s TD BANK mark in its entirety, merely adding the geographic term “us” along with the generic top level domain (“gTLD”) “.app.”. In addition, the <usdtbank.app> domain name misspells the mark by transposing the letters “t” and “d.”
Respondent does not have rights or legitimate interests in the <ustdbank.app> and <usdtbank.app> domain names. Respondent is not commonly known by the disputed domain names and Complainant has not granted respondent permission or license to use the TD BANK mark for any purpose. Respondent is not using the disputed domain names to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent fails to make an active use of the disputed domain names. See Amend. Compl. Ex. F.
Respondent has registered and used the <ustdbank.app> and <usdtbank.app> domain names in bad faith. Respondent is attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s inactive website. See Amend. Compl. Ex. F. Further, Respondent has failed to make an active use of the disputed domain names. Id. Additionally, Respondent has engaged in typosquatting with the <usdtbank.app> domain name. Moreover, Respondent failed to respond to Complainant’s cease-and-desist letters. See Amend. Compl. Ex. J. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the TD and TD BANK marks.
B. Respondent
Respondent made the following contentions:
“I feel very uncomfortable about your company's arbitration against usdt.app. I had never heard of tdbank before I signed up for usdt.app. Usdt is a token currency tether USD (usdt) launched by tether company based on the stable value currency USD (USD). It has nothing to do with the tdbank of your company, and there is no traffic loss caused by users' writing errors.”
1. Complainant is a Canadian company engaged in the banking and related industries.
2. Complainant has established its trademark rights rights in the TD and TD BANK marks based upon registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., TD—Reg. No. 1,649,009, registered June 25, 1991; TD BANK—Reg. No. 3,788,055, registered May 11, 2010).
3. Respondent registered the disputed domain names on June 8, 2018.
4. Respondent fails to make an active use of the disputed 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.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the presumptive language of the proceedings to be Chinese. However, Complainant has submitted that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent is conversant in English based upon the response provided by Respondent in this proceeding. See Resp. Further, the term TD BANK, which is the dominant portion of one of the two disputed domain names at issue, does not carry any specific meaning in the Chinese language. Finally, Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter. 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 all the circumstance of the present case, the Panel decides that the proceeding should be in the English language.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the TD and TD BANK marks based upon its registration with the USPTO (e.g., TD—Reg. No. 1,649,009; TD BANK—Reg. No. 3,788,055, registered May 11, 2010). See Amend. Compl. Ex. A. Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the TD and TD BANK marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s TD and/or TD BANK marks. Complainant submits that the <ustdbank.app> and <usdtbank.app> domain names are confusingly similar to the TD BANK mark as they contain the mark in its entirety, less the space and add the geographic term “us”, as well as the gTLD “.com.” Additionally, Complainant notes that the <usdtbank.app> domain name misspells the mark by transposing the letters “t” and “d”. Additions of geographic terms and misspelling of a complainant’s mark by transposing letters may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain names are confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <ustdbank.app> and <usdtbank.app> domain names do not contain changes to the trademark that would sufficiently distinguish it from the TD BANK mark for the purposes of the Policy.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TD BANK trademark and to use it in its domain names, adding the geographic term “us” that does not negate the confusing similarity with Complainant’s trademark and in one case transposing the letters “t” and “d”;
(b) Respondent registered the disputed domain names on June 8, 2018;
(c) Respondent fails to make an active use of the disputed domain names;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <ustdbank.app> and <usdtbank.app> domain names. Specifically Complainant argues Respondent is not licensed or authorized to use the TD or TD BANK marks and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed 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 WHOIS information of record identifies Respondent as “Long Xiang” and there is no information that Respondent was authorized to use the TD or TD BANK marks for any purpose. See Amend. Compl. Ex. E. The Panel therefore finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <ustdbank.app> and <usdtbank.app> domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the disputed domain names. Failure to make active use of a domain name generally fails to constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) & (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant provides screenshots of the disputed domain names which resolve to an inactive website which currently features a “This site can’t be reached” notice. See Amend. Compl. Annex F. The Panel agrees with Complainant that this use does not amount to a bona fide offering of good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
All of these matters go to make out the prima facie case against Respondent. It is clear that the statements made by Respondent in the Response do not give rise to a right or legitimate interest in the domain names and appear to be irrelevant to the issues in this proceeding. The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and uses the <ustdbank.app> and <usdtbank.app> domain names in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent fails to display any substantive content on the resolving webpage of a confusingly similar domain name. 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 pursuant to Policy ¶ 4(b)(iv)”). Here, Complainant avers that Respondent creates a likelihood of confusion with Complainant and its trademarks by registering a domain name that incorporates—in its entirety—Complainant’s famous TD and/or TD BANK marks, and merely adds the geographic term “us”. Respondent is presumed to be commercially benefiting from redirecting users from Complainant’s website to Respondent’s, even though Respondent does not use the resolving domain names for any substantive purpose. See Amend. Compl. Ex. F. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent fails to make an active use and is passively holding the domain names. Failure to make an active use a domain name can provide evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) As noted previously, Complainant provides screenshots of the disputed domain names which resolve to an inactive website which currently features a “This site can’t be reached” notice. See Amend. Compl. Annex F. Therefore, Panel finds that Respondent’s inactive use of the disputed domain names indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to benefit commercially from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). The Panel notes that Complainant submits Respondent transposes the letters “t” and “d” in the TD BANK mark. The Panel also notes that the domain names add the geographic term “us.” Thus, the Panel finds that Respondent’s transposing of letters in Complainant’s mark constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent failed to respond to Complainant’s cease-and-desist letters. Failure to respond to cease and desist letters may contribute towards a finding of bad faith for the purposes of the Policy. See Garrison Keillor, Minnesota Public Radio, Inc. v. Paul Stanton, FA 98422 (Forum Aug. 28, 2001) (Respondent’s failure to respond to Complainant's June 12, 2001, letter further demonstrates Respondent's lack of good faith intent in registration and use of the domain name.). Complainant provides copies of the letters it sent to Respondent, and nothing in the record shows that Respondent replied to these letters. See Amend. Compl. Ex. J. As such, the Panel finds that Respondent’s failure to respond to Complainant’s attempts to resolve the matter amicably are further evidence of bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s TD BANK mark. The Panel notes that while constructive notice of a complainant’s mark is usually insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant submits that it is the second largest bank in Canada and sixth largest bank in North America. Complainant’s marks are famous to countless customers around the world. See Amend. Compl. Exs. B–D. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the TD and TD BANK marks, constituting bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the TD BANK mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ustdbank.app> and <usdtbank.app> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 11, 2018
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