The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administrator / Fundacion Private Whois / Domain Admin / Whois Privacy Corp.
Claim Number: FA1408001576648
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administrator / Fundacion Private Whois / Domain Admin / Whois Privacy Corp. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdautofinancing.com>, <tdbankcardservices.com>, <tdbankcreditcard.com>, <tdbankvisa.com>, <tdonlinebanking.com>, <tdcomercialbanking.com>, <tdbankgarden.com>, <tdbenkgarden.com>, <tdcanadatrustonline.com>, <tdcanadartust.com>, <tdcanadastrust.com>, <tdcanadatrurst.com>, <tdcanadatrut.com>, <tdcanadatust.com>, <tdtrust.com>, <wwtdcanadatrust.com>, <tdbnkonline-us.com>, <tdwater.com>, <tdwaterhoouse.com>, <tfbank.com> and <tdvank.com>, registered with Internet.Bs Corp.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2014; the National Arbitration Forum received payment on October 20, 2014.
On October 1, 2014, and October 9, 2014, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <tdautofinancing.com>, <tdbankcardservices.com>, <tdbankcreditcard.com>, <tdbankvisa.com>, <tdonlinebanking.com>, <tdcomercialbanking.com>, <tdbankgarden.com>, <tdbenkgarden.com>, <tdcanadatrustonline.com>, <tdcanadartust.com>, <tdcanadastrust.com>, <tdcanadatrurst.com>, <tdcanadatrut.com>, <tdcanadatust.com>, <tdtrust.com>, <wwtdcanadatrust.com>, <tdbnkonline-us.com>, <tdwater.com>, <tdwaterhoouse.com>, <tfbank.com> and <tdvank.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2014 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@tdautofinancing.com, postmaster@tdbankcardservices.com, postmaster@tdbankcreditcard.com, postmaster@tdbankvisa.com, postmaster@tdonlinebanking.com, postmaster@tdcomercialbanking.com, postmaster@tdbankgarden.com, postmaster@tdbenkgarden.com, postmaster@tdcanadatrustonline.com, postmaster@tdcanadartust.com, postmaster@tdcanadastrust.com, postmaster@tdcanadatrurst.com, postmaster@tdcanadatrut.com, postmaster@tdcanadatust.com, postmaster@tdtrust.com, postmaster@wwtdcanadatrust.com, postmaster@tdbnkonline-us.com, postmaster@tdwater.com, postmaster@tdwaterhoouse.com, postmaster@tfbank.com, and postmaster@tdvank.com. Also on December 2, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
i) Complainant has registered the TD BANK mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 3,788,055 registered May 11, 2010, filed July 23, 2008) and with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA549396 registered August 7, 2001, filed July 8, 1999). Complainant has also registered the TD mark with the USPTO (e.g., Reg. No. 1,649,009, registered June 25, 1991), as well as the TD GARDEN mark (Reg. No. 3,929,160, registered Mar. 18, 2010). Complainant has registered TD AUTO FINANCE with the CIPO (Reg. No. TMA826012, registered June 11, 2012). Complainant also owns TD WATERHOUSE and CANADA TRUST through CIPO registrations (Reg. No. TMA600414, registered Jan. 1, 2004; and Reg. No. TMA409300, registered March 12, 1993, respectively). Complainant uses the marks in connection with banking and financial services. The disputed domain names are confusingly similar to Complainant’s marks.
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names as demonstrated by the WHOIS information. Further, Respondent is using the <tdbankgarden.com>, <tdbankcardservices.com>, <tdautofinancing.com>, <tfbank.com>, <tdbnkonline-us.com>, <tdtrust.com>, <tdcanadartust.com>, <tdcanadatrut.com>, and <wwtdcanadatrust.com> domain names to direct users to websites featuring generic links to third-parties, some of which directly compete with Complainant. Respondent presumably receives click-through revenue from the links. In addition, Respondent uses the <tdonlinebanking.com>, <tdcomercialbanking.com>,<tdcanadatrustonline.com>, <tdcanadatust.com>, <tdwater.com>,<tdbankcreditcard.com>, and <tdbankvisa.com> domain names to redirect users to websites offering the opportunity to obtain such rewards as a “Free Credit Check” or “Cash Advance Loans up to $1000.” Respondent is likely phishing for personal information through these opportunities, as an individual’s name and social security number would be required to obtain a credit score. To further demonstrate a lack of Policy ¶ 4(a)(ii) rights, Respondent is using the <tdbenkgarden.com>, <tdcanadatrurst.com>, <tdvank.com> domain names in connection with malicious software. Respondent has also listed four of the disputed domain names for sale in amounts beyond out-of-pocket costs.
iii) Respondent has registered and used the disputed domain names in bad faith. In violation of Policy ¶ 4(b)(i) Respondent has offered to sell the <tdbankcardservices.com>, <tdautofinancing.com>, <tdcomercialbanking.com>, and <tdcanadatust.com> domain names for consideration in excess of out-of-pocket expenses. Further, Respondent has a history of bad faith as demonstrated by prior UDRP decisions. Respondent’s documented bad faith evinces bad faith at present pursuant to Policy ¶ 4(b)(ii). Moving to Policy ¶ 4(b)(iii), Respondent’s use of the disputed domain names constitutes a disruption of Complainant’s business as the disputed domain names resolve to promote links in competition with Complainant. In addition, Respondent has attempted to mislead users as to Complainant’s affiliation with the disputed domain names in order for Respondent to capitalize on such confusion at the resolving website. Such use is emblematic of Policy ¶ 4(b)(iv). Respondent is also using <tdbenkgarden.com>, <tdcanadatrurst.com>, <tdvank.com> domain names in connection with malicious software, which has been deemed bad faith under Policy ¶ 4(a)(iii). Finally, at the time of registration, Respondent had constructive knowledge, if not actual knowledge of Complainants trademarks, and therefore registered the names in bad faith.
B. Respondent
Respondent did not submit a response. The disputed domain names were registered between May 8, 2003 and March 18, 2014.
Complainant established that it had rights in the marks contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed 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(e), 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 (Nat. Arb. 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.”).
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that Respondent on all but seven domain names uses the aliases “Domain Administrator/Fundacion Private Whois” and “Ryan G Foo/PPA Media Services.” Prior decisions have determined that these two Respondents are operating as a single entity. See Time Warner Inc. v. Domain Administrator / Fundacion Private Whois aka Ryan G Foo/PPA Media Services, FA 1543555 (Nat. Arb. Forum Apr. 3, 2014. From this basis, Complainant links the remaining domain names to one another. Complainant notes that of the remaining seven domain names, Respondent uses the alias “Jinesh Shah/Fundacion Private Whois” on one domain name, which shares the same address, address format, and organization name as “Domain Administrator/Fundacion Private Whois.” On two other of the remaining domain names, Respondent uses the alias “Jinesh Shah/Whois Privacy Corp.,” and this alias shares the same “Jinesh Shah/Fundacion Private Whois” name discussed above. For the remaining four domain names, Respondent uses the alias “Domain Admin/Whois Privacy Corp.,” which again shares the same address, address format, and organization name as “Jinesh Shah/Whois Privacy Corp.”
Given the circumstances above, the Panel finds that the domain names are commonly controlled by a single Respondent who is using multiple aliases.
Complainant argues that its trademark registration with the USPTO and CIPO serve to adequately show Policy ¶ 4(a)(i) rights. Complainant notes that it has registered the TD BANK mark with the USPTO (e.g. Reg. No. 3,788,055 registered May 11, 2010, filed July 23, 2008) and with the CIPO (Reg. No. TMA549396 registered August 7, 2001, filed July 8, 1999). Complainant claims that it has also registered the TD mark with the USPTO (e.g., Reg. No. 1,649,009, registered June 25, 1991). Complainant also cites registration of TD AUTO FINANCE with the CIPO (Reg. No. TMA826012, registered June 11, 2012). Complainant also avers USPTO registration of the TD GARDEN mark (Reg. No. 3,929,160, registered Mar. 18, 2010). Complainant further claims to own TD WATERHOUSE and CANADA TRUST through CIPO registrations (Reg. No. TMA600414, registered Jan. 1, 2004; and Reg. No. TMA409300, registered March 12, 1993, respectively). Complainant uses these marks in connection with banking and financial services. The Panel agrees that Complainant’s registrations with the USPTO and CIPO for the aforementioned marks satisfy the rights requirement of Policy ¶ 4(a)(i).
Complainant argues the disputed domain names are confusingly similar to Complainant’s marks. Complainant first argues that the addition of the generic top-level domain (“gTLD”) is irrelevant to the confusing similarity analysis. The Panel agrees that the addition of the gTLD “.com” to these disputed domain names adds no distinguishing value here, and also notes that the removal of spacing is also irrelevant to the Policy ¶ 4(a)(i) analysis as spacing is not replicable in domain names. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. 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)).
Moving to relevant alterations, Complainant argues that the <tdautofinancing.com>, <tdbankcardservices.com>, <tdbankcreditcard.com>, <tdbankvisa.com>, <tdonlinebanking.com> and <tdcomercialbanking.com> domain names contain at least one of Complainant’s marks and add generic or descriptive terms such as “credit,” “card,” and “banking.” The Panel also notes that the domain names <tdcanadatrustonline.com>, <tdtrust.com>, and <tdwater.com> fall within this argument, albeit not expressly argued by Complainant. Prior panels have found confusing similarity dispite the additions of generic or descriptive terms. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”).
Complainant further argues that confusing similarity exists where the domain name is comprised of a combination of Complainant’s mark. Accordingly, Complainant argues that the <tdbankgarden.com> domain name is confusingly similar to its TD BANK and BANK GARDEN marks. In McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008), the panel found the <glencoemcgrawhill.com> domain name confusingly similar to the complainant’s GLENCOE and MCGRAW-HILL marks under Policy ¶ 4(a)(i). The Panel agrees that the <tdbankgarden.com> domain name is confusingly similar to its TD BANK and BANK GARDEN marks given the overlap of the two in forming the name.
Complainant argues that the remaining domain names, namely <tdbenkgarden.com>, <tdcanadartust.com>, <tdcanadastrust.com>, <tdcanadatrurst.com>, <tdcanadatrut.com>, <tdcanadatust.com>, <wwtdcanadatrust.com>, <tdbnkonline-us.com>, <tdwaterhoouse.com>, <tfbank.com>, and <tdvank.com> incorporate a misspelling of at least one of Complainant’s marks. Prior panels have found confusing similarity where the disputed domain name incorporates a common misspelling, or deviates from the mark by a substituted, omitted, or added letter. See e.g., Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited, FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”). Accordingly, the Panel finds the disputed domain names are confusingly similar to the associated marks pursuant to Policy ¶ 4(a)(i) despite minor spelling alterations.
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), 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 (Nat. Arb. 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 (Nat. Arb. 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 argues that Respondent has no rights or legitimate interests in the disputed domain names. Regarding Policy ¶ 4(c)(ii), Complainant claims that Respondent is not commonly known by the disputed domain names, and points to the WHOIS information for support. The Panel notes that the WHOIS information lists a variety of sources, namely “Ryan G Foo,” “PPA Media Services,” “Jinesh Shah,” “Whois Privacy Corp.” “Domain Administrator” “Fundacion Private Whois,” and “Domain Admin.” In light of the available evidence, which is noticeably absent a response from Respondent to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names or any variant thereof pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant next argues that Respondent is using the <tdbankgarden.com>, <tdbankcardservices.com>, <tdautofinancing.com>, <tfbank.com>, <tdbnkonline-us.com>, <tdtrust.com>, <tdcanadartust.com>, <tdcanadatrut.com>, and <wwtdcanadatrust.com> domain names to direct users to websites featuring generic links to third-parties, some of which directly compete with Complainant. Complainant adds that Respondent presumably receives click-through revenue from the links. The Panel notes that Complainant has included screen grabs of the resolving pages, which are available for review at Complainant’s Exhibit F. The Panel sees that these disputed domain names resolve to promote links including, “Auto Loan Payment,” “Visa Rewards Credit Card,” and “Getting a Small Business Loan.” See Compl., at Attached Ex. F. The Panel recalls that Complainant operates in the banking and financial services field, and therefore deems such links competitive. The Panel finds Respondent has made no Policy ¶ 4(c)(i) bona fide offering of goods or services, nor Policy ¶ 4(c)(iii) legitimate noncommercial or fair use as Respondent is likely generating click-through revenue from the promoted links. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
While not expressly discussed in the Complaint, the Panel notes that the submitted screen grabs show the <tdcanadastrust.com> domain name resolves to a restaurants blog site, and <tdwaterhoouse.com> resolves to a “MojoPages” search website featuring a link to an Inn on Lake Michigan. See Compl., at Attached Ex. F. Prior panel have found the respondent has made no bona fide offering or a legitimate noncommercial or fair use where the disputed domain name resolves to an unrelated website and the respondent likely generates revenue from the misdirection. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel determines that Respondent’s use of the <tdcanadastrust.com> and <tdwaterhoouse.com> domain name to redirect users to real estate and restaurant postings unrelated to Complainant provides little indication that Respondent is using the domain names in furtherance of a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
In addition, Complainant argues that Respondent uses the <tdonlinebanking.com>, <tdcomercialbanking.com>, <tdcanadatrustonline.com>, <tdcanadatust.com>, <tdwater.com>, <tdbankcreditcard.com>, and <tdbankvisa.com> domain names to redirect users to websites offering the opportunity to obtain such rewards as a “Free Credit Check” or “Cash Advance Loans up to $1000.” See Compl., at Attached Ex. F. Complainant claims that Respondent is likely phishing for personal information through these opportunity-links, as an individual’s name and social security number would be required to obtain a credit score. At the very least, Complainant urges that the resolving websites demonstrate Respondent’s intention of misdirecting users away from Complainant for Respondent’s own gain. Prior panels have determined that the use of domain names in connection with phishing activity is demonstrative of no Policy ¶ 4(a)(ii) rights or protections. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). The Panel agrees that Respondent’s efforts to misdirect users and potentially phish for personal information demonstrates that Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).
To further demonstrate a lack of Policy ¶ 4(a)(ii) rights, Complainant argues that Respondent is using the <tdbenkgarden.com>, <tdcanadatrurst.com>, <tdvank.com> domain names in connection with malicious software. The Panel notes that these domain names resolve to warning pages indicating the threat of viruses associated with the website. See Compl., at Attached Ex. F. The Panel agrees that Respondent’s use of the <tdbenkgarden.com>, <tdcanadatrurst.com>, <tdvank.com> domain names in furtherance of malicious software does not fall within the protections of Policy ¶ 4(a)(ii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Finally, Complainant urges that Respondent has also listed four of the disputed domain names for sale in amounts beyond out-of-pocket costs. Prior panels have determined that a respondent’s willingness to sell disputed domain names for more than out-of-pocket costs suggests that the respondent lacks any rights or legitimate interests in the names. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Here, the Panel notes that the Respondent has listed <tdautofinancing.com>, <tdbankcardservices.com>, <tdcomercialbanking.com>, and <tdcanadatust.com> for sale in the amounts of 500 USD, 500 EUR, 500 USD and 500 USD, respectively. See Compl., at Attached Ex. H. The Panel finds that such offers provide further indication and that Respondent lacks rights or legitimate interests in these domain names.
Complainant argues that Respondent is in violation of Policy ¶ 4(b)(i) as Respondent has offered to sell the <tdbankcardservices.com>, <tdautofinancing.com>, <tdcomercialbanking.com>, and <tdcanadatust.com> domain names for consideration in excess of out-of-pocket expenses. The Panel recalls that the domain names were offered for consideration ranging from $500 to €500. See Compl., at Attached Ex. H. The Panel agrees that Respondent’s willingness to sell the disputed domain names for such inflated prices is indicative of bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Further, Complainant asserts that Respondent has a history of bad faith as demonstrated by prior UDRP decisions, and argues that Respondent’s documented bad faith evinces bad faith at present pursuant to Policy ¶ 4(b)(ii). The Panel notes that Complainant has listed numerous decisions involving the named Respondent where previous panels found Respondent had engaged in bad faith registration and use. See Legend Pictures, LLC v. Domain Administrator, Fundacion Private Whois / Ryan G Foo, D2014-1114 (WIPO Aug. 26, 2014); Time Warner Inc. v. Domain Administrator / Fundacion Private Whois aka Ryan G Foo / PPA Media Services, FA 1543555 (Nat. Arb. Forum April 3, 2014). The Panel also notes that 21 domain names are involved in this present matter with alleged infringement on Complainant’s marks. Prior panels have found bad faith under Policy ¶ 4(b)(ii) where the respondent has a history of bad faith, or where the multiple domain names are involved in the case. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”); EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.
Moving to Policy ¶ 4(b)(iii), Complainant argues that Respondent’s use of the disputed domain names constitutes a disruption of Complainant’s business as the disputed domain names resolve to promote links in competition with Complainant. The Panel notes that the <tdbankgarden.com>, <tdbankcardservices.com>, <tdautofinancing.com>, <tfbank.com>, <tdbnkonline-us.com>, <tdtrust.com>, <tdcanadartust.com>, <tdcanadatrut.com>, and <wwtdcanadatrust.com> domain names resolve to promote such links as “Auto Loan Payment,” “Visa Rewards Credit Card,” and “Getting a Small Business Loan.” See Compl., at Attached Ex. F. As Complainant operates in the banking and financial services field, the Panel determines that such links are competitive to Complainant’s own offerings, and therefore finds evidence of bad faith disruption pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
In addition, Complainant argues that Respondent has attempted to mislead users as to Complainant’s affiliation with the disputed domain names in order for Respondent to capitalize on such confusion at the resolving website. Specifically, Complainant alleges that Respondent is using the disputed domain names in connection with click-through links and advertisements. See Compl., at Attached Ex. F. Prior panels have found evidence of bad faith where the respondent has profited via a likelihood of user confusion. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). As the Panel agrees that Respondent has gleaned commercial gain from the confusingly similar domain names and likelihood of user confusion generated therein, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further reiterates that Respondent is using the <tdbenkgarden.com>, <tdcanadatrurst.com>, <tdvank.com> domain names in connection with malicious software, which has been deemed bad faith under Policy ¶ 4(a)(iii). The Panel recalls that these domain names resolve to warning messages and error screens. See Compl., at Attached Ex. F. Consistent with prior decisions, the Panel finds that Respondent’s use of these domain names to distribute malware to users’ computers is demonstrative of bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Finally, at the time of registration, Complainant argues that Respondent had constructive if not actual knowledge of Complainants trademarks, and therefore registered the names in bad faith. While previous panels have been reluctant to find evidence of bad faith based on merely on constructive knowledge, panels have inferred actual knowledge where the circumstances warrant. See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the panel here finds actual knowledge through the name used for the domain and the use made of it.”); Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). The Panel infers the Respondent’s actual knowledge based on Respondent’s apparent familiarity with Complainant’s marks and associated use, and finds additional evidence of bad faith pursuant to 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 <tdautofinancing.com>, <tdbankcardservices.com>, <tdbankcreditcard.com>, <tdbankvisa.com>, <tdonlinebanking.com>, <tdcomercialbanking.com>, <tdbankgarden.com>, <tdbenkgarden.com>, <tdcanadatrustonline.com>, <tdcanadartust.com>, <tdcanadastrust.com>, <tdcanadatrurst.com>, <tdcanadatrut.com>, <tdcanadatust.com>, <tdtrust.com>, <wwtdcanadatrust.com>, <tdbnkonline-us.com>, <tdwater.com>, <tdwaterhoouse.com>, <tfbank.com> and <tdvank.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 12, 2015
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