The Toronto-Dominion Bank v. Ugo King
Claim Number: FA1606001680782
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Ugo King (“Respondent”), Benin.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbankgroup.org>, registered with Ligne Web Services SARL dba LWS.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2016; the Forum received payment on June 23, 2016.
On June 24, 2016, Ligne Web Services SARL dba LWS confirmed by e-mail to the Forum that the <tdbankgroup.org> domain name is registered with Ligne Web Services SARL dba LWS and that Respondent is the current registrant of the name. Ligne Web Services SARL dba LWS has verified that Respondent is bound by the Ligne Web Services SARL dba LWS 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 June 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2016 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@tdbankgroup.org. Also on June 29, 2016, 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 July 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the French language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the requested language, filing of a trademark registration with an entity which evinces an understanding of the requested language, and any evidence (or lack thereof) evincing Respondent’s understanding of the language in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
Further, the Panel may weigh the relative time and expense in enforcing the French language agreement, which would result in prejudice toward either party (bearing in mind Complainant starts a Proceeding and Respondent merely responds to it). Complainant claims it is unable to communicate in French, which this Panel does not consider to be a persuasive argument for a multinational corporation’s representative. However, Respondent has shown an ability to communicate in English by responding to a Cease-and-desist eletter in English. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds sufficient persuasive evidence has been produced by Complainant that Respondent is sufficiently conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides the proceeding shall be in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Toronto-Dominion Bank is the owner of hundreds of trademark registrations in Canada, the United States and elsewhere that consists of or includes the elements TD BANK GROUP, TD (abbreviation of TORONTO-DOMINION) and TD BANK, as well as the trade names and unregistered trademarks TD, TD BANK and TD BANK GROUP in association with financial, banking and related businesses, goods, and services. These trademarks are registered in the European Union Intellectual Property Office (EUIPO), the Canadian Intellectual Property Office (CIPO) Trade-marks Database and the U.S. Patent and Trademark Office’s (USPTO) Trademark Electronic Search System for these registrations, which demonstrate that the Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as the “Complainant’s Marks.” The trademarks relevant to this instant matter are included in the case file.
The Complainant, The Toronto-Dominion Bank (publicly listed NYSE: TD, TSX: TD, TYO: 8640), is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Commonly known as TD and operating as TD Bank Group, the bank was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively.
The Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, the retail bank operates as TD Canada Trust and serves more than 12 million customers at over 1,100 branches. In the United States, the company operates as TD Bank (the initials are used officially for all U.S. operations). The U.S. subsidiary was created through the Complainant’s acquisition of Banknorth and Commerce Bank, and for many years was known as TD Banknorth. TD Bank now serves more than 8 million customers with a network of more than 1,300 branches, primarily located in the eastern United States. TD also ranks among the world’s leading online financial services firms.
The Complainant operates numerous websites, chief among them http://www.tdbank.com/ and http://www.td.com/. According to Compete.com, <tdbank.com> attracts over 2.6 million unique visitors per month, making it the 404th most popular website in the United States. Alexa.com ranks <td.com> as the 21st most popular website in Canada, 5,282nd most popular website in the United States, and 1,262nd most popular website globally.
The Complainant is ranked number 71 on the 2013 Forbes Global 2000 listing. Brand Finance® Brand Directory, which ranks the world’s most valuable brands, ranks TD as number 89 on its 2013 Global 500 list. The Toronto-Dominion Bank is one of a few banks in the world rated AAA by Moody’s.
In addition, in 2013, brandZ ranked the Complainant as number 46 on its list of the Top 100 most valuable global brands and as number 6 on its list of Top 10 Regional Banks in the world. Furthermore, TD has also been named one of Canada’s Top 100 Employers for the fifth year in a row. This recognition followed announcements of inclusion on the lists of Financial Post’s Ten Best Companies to Work For (2011), and as one of the Great Place to Work Institute’s Best Workplaces in Canada (2011).
The inaugural 2012 Ipsos Influence Index Study recently asked Canadians to rate 100 leading global brands on a wide variety of attributes, and TD ranked #17 on the list.
Interbrand’s Best Canadian Brands, published every two years, ranks the top 25 Canadian brands according to value and provides insight into their ability to manage brands effectively as a contributor to business performance. TD was ranked as the number 1 overall Canadian brand in the 2012 and 2014 editions of the publication.
In summary, the Complainant’s brand is well recognized by consumers, industry peers, and the broader global community.
The Complainant owns the Marks cited in Section 6(c) above for which it has obtained numerous trademark registrations. None of the listed registrations have been abandoned, cancelled, or revoked. The Complainant has made significant investments over the years to advertise, promote, and protect Complainant’s Marks through various forms of media, including the Internet. Based on its extensive use and trademark registrations, Complainant owns the exclusive right to use the TD, TD BANK and TD BANK GROUP marks for banking and related financial services.
A. The Disputed Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights
(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
By virtue of its federal trademark and service mark registrations, Complainant is the owner of Complainant’s trademarks. See United Way of America v. Alex Zingaus, FA 1036202 (NAF Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”). Furthermore, a complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (NAF April 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 0622122 (NAF Apr. 14, 2006).
When comparing the Disputed Domain Name to Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and the Complainant’s trademarks. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). See also Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 0153545 (NAF May 27, 2003) (“[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top- level domains are a required element of every domain name”).
The Disputed Domain Name contains Complainant’s TD BANK GROUP trademark in its entirety, thus resulting in a domain name that is identical to the Complainant’s TD BANK GROUP trademark. Where, as here, a disputed domain name encompasses and captures a complainant’s trademark in its entirety, past Panels have established that the disputed domain name should be found confusingly similar to that trademark. Thus, the Disputed Domain Name should be considered identical and confusingly similar to the Complainant’s TD BANK GROUP trademark. See The American Red Cross v. Leonard Habersham, FA 0103926 (NAF Mar. 6, 2002). See also Uniroyal Engineered Products, Inc. v. Nauga Network Services, D2000-0503 (WIPO July 18, 2000) (Panel finding the disputed domain <nauga.net> confusingly similar to complainant’s NAUGA trademark).
B. The Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Name
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The granting of registrations by the European Union Intellectual Property Office (EUIPO), the Canadian Intellectual Property Office (CIPO) and the U.S. Patent and Trademark Office (USPTO) to Complainant for the TD BANK GROUP trademark is prima facie evidence of the validity of the term “TD BANK GROUP” as a trademark, of Complainant’s ownership of this trademark, and of Complainant’s exclusive right to use the TD BANK GROUP trademark in commerce on or in connection with the goods and/or services specified in the registration certificates.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests. See Policy, ¶4(c)(ii); see Whois data for the Disputed Domain Name. Where “the Whois information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s…mark,” a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, FA 1036202 (NAF Aug. 30, 2007). In the instant case, the pertinent Whois information identifies the Registrant as “Ugo King,” which does not resemble the Disputed Domain Name in any manner – thus, where no evidence, including the Whois record for the Disputed Domain Name, suggests that Respondent is commonly known by the Disputed Domain Name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name within the meaning of ¶4(c)(ii). See Instron Corp. v. Kaner, FA 0768859 (NAF Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the Whois information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). See also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 0715089 (NAF July 17, 2006) (respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶4(c)(ii), where there was no evidence in the record, including the relevant Whois information, suggesting that respondent was commonly known by the disputed domain name).
Further to the above point, Respondent has provided false Whois information; the registrant address on the public Whois record lists “Good, Benin, 00229, BJ.” According to Google Maps the address, “Good, Benin, 00229, BJ” does not exist. “Benin” is not a city within the country of the Republic of Benin nor is “00229” a valid postal code for that country. In addition, upon sending a cease-and-desist letter Complainant received the following response, “Please i want you to stop the site to work because someone hacked my email and my credit card but now i have gotten my email back stop the site.”
Currently the website found at the Disputed Domain Name has been blocked by Google Safe Browsing, an online advisory service that alerts Internet users whenever suspicious content such as phishing activity or malware, is present which might infect the website user’s computer. Rather than resolving to an actual website, the domain name leads the user to a red page that reads, in part, “Deceptive site ahead,” and due to obvious security reasons Complainant did not proceed to the website in question. Considering the fact that Google has blocked the website found at the Disputed Domain Name due to its connection with a phishing scam and possibly malware, Complainant contends that Respondent is not making a bona fide offering of goods or services, noncommercial fair use of the Disputed Domain Name. See Intesa Sanpaolo S.p.a. v. Sally R. Fosbrink, Shivasdf Ltd.co, D2012-0586 (WIPO May 10, 2012).
Respondent registered the Disputed Domain Name on March 26, 2016, which is significantly after Complainant filed for registration of its relevant trademarks with CIPO and the USPTO, and also significantly after Complainant’s first use in commerce of the TD trademark in 1969.
Respondent registered the Disputed Domain Name on March 26, 2016, which is significantly after the Complainant’s registration of its TD.COM on April 15, 1998 and TDBANK.COM on April 14, 1995.
C. The Disputed Domain Name was Registered and is Being Used in Bad Faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Complainant and its TD BANK GROUP trademarks are known internationally. The Complainant has marketed and sold its goods and services using this trademark since 1969, which is well before Respondent’s registration of the Disputed Domain Name on March 26, 2016.
By registering a domain name that is identical to the Complainant’s TD BANK GROUP trademark, Respondent has created a domain name that is confusingly similar to Complainant’s trademark, as well as its <tdbank.com> and <td.com> domains. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Disputed Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, TD BANK GROUP is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Further, where the Disputed Domain Name is identical to the Complainant’s TD BANK GROUP trademark, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415 (WIPO Dec. 10, 2007)
At the time of registration of the Disputed Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the Disputed Domain Name, Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Further, Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, the retail bank operates as TD Canada Trust and serves more than 12 million customers at over 1,100 branches in the United States, where Complainant operates as TD BANK, Complainant serves more than 8 million customers with a network of more than 1,300 branches, and in Europe where Complainant operates as TD Securities, it has over 18 offices worldwide and employs over 3,000 people, which demonstrates Complainant’s fame. Further, performing searches across a number of internet search engines for “td bank group” returns multiple links referencing Complainant and its business. See Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“given the Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”). See also Victoria's Secret v. Hardin, FA 096694 (NAF Mar. 31, 2001) (Finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith). Further, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past Panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding, as is the case here. See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (NAF Mar. 13, 2012) (“a finding of bad faith hinges squarely on the probability that it was more likely than not that respondent knew of, and targeted, complainant’s trade mark”). See also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (NAF 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”). See also Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., D2014-0878 (WIPO Aug. 5, 2014) (“Knowledge and targeting [of a trademark] may be proven inferentially”).
Respondent has registered and used the Disputed Domain Name for purposes of launching a phishing attack, which is clear evidence of bad faith registration and use. Currently the website found at the Disputed Domain Name has been blocked by Google Safe Browsing, an online advisory service that alerts Internet users whenever suspicious content such as phishing activity or malware, is present which might infect the website user’s computer. Respondent’s efforts to attempt to solicit sensitive information from unsuspecting people certainly constitute fraud, which must be considered bad faith registration and use of the Disputed Domain Name. See Juno Online Servs., Inc. v. Nelson, FA 0241972 (NAF Mar. 29, 2004) (Defining “phishing” as using various methods to “trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes”) (Finding that use of the domain name <billing-juno.com> in a phishing scam demonstrated bad faith use and registration). See also Wells Fargo & Co. v. Maniac State, FA 608239 (NAF Jan. 19, 2006) (Finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). See also The Coca-Cola Company v. PrivacyProtect.org/ N/A, Stephan Chukwumaobim, D2012-1088 (WIPO July 9, 2012) (finding that the disputed domain name was registered in bad faith as an attempt to attract Internet users to Respondent’s site or on-line location for commercial gain by creating a likelihood of confusion with Complainant’s mark with a phishing scam conducted via text message).
Complainant first tried to contact Respondent on April 19, 2016 through a cease-and-desist letter sent by email. In the letter Complainant advised Respondent of the unauthorized registration and use of Complainant’s marks in the Disputed Domain Name and requested a voluntary transfer of the same. On May 10, 2016, Complainant received the following response, “Please i want you to stop the site to work because someone hacked my email and my credit card but now i have gotten my email back stop the site. Thanks for the information.” When Complainant advised that Respondent conduct a “forgot password” procedure Complainant received the same response. This, combined with the invalid address as outlined above, clearly indicates that the Respondent, at the time of filing, submitted false Whois information to the registrar. The nature of the Respondent’s Whois information is further evidence of its bad faith use and registration of the Disputed Domain Names. See Enterprise Holdings v. Enterprise Online Serv., Ltd., FA 1444232 (NAF June 14, 2012) (“Respondent provided false WHOIS information. That alone is sufficient grounds to find bad faith registration and use of the domain name.”). See also Choice Hotels International, Inc. v. windermere, FA 1364454 (NAF Feb. 28, 2011) (“Use of false contact information constitutes further evidence of bad faith”).
Finally, on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Disputed Domain Names in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., FA D2014-1754 (WIPO Jan 12, 2014) (“the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.”)
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent responded to the cease and desist letter as described by Complainant.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 uses the TD BANK GROUP mark in connection with its banking services. Complainant registered the TD BANK GROUP mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,133,949, registered Nov. 30, 2010), European Union Intellectual Property Office (“EUIPO”), and the Canadian Intellectual Property Office (“CIPO”). Registration of a mark with a governmental authority (such as the USPTO, EUIPO and the CIPO) constitutes satisfactory evidence of ownership of a mark under Policy ¶ 4(a)(i). Complainant need only show Complainant has some rights somewhere, not that it has rights in Respondent’s home country or even superior rights to Respondent. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant has satisfactorily established its rights in the TD BANK mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <tdbankgroup.org> is identical to the TD BANK GROUP mark because the “.org” gTLD and elimination of the space between words in the mark are irrelevant to a Policy ¶ 4(a)(i) analysis. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits them. See Black Hills Ammunition, Inc. v. ICS INC., FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶4(a)(i).); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)); see Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The <tdbankgroup.org> domain is identical to the TD BANK mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the disputed domain name. Respondent’s name from the WHOIS has no obvious relationship to the <tdbankgroup.org> domain name. Complainant has not given Respondent authorization or permission to use its marks in the registration of domain name. Respondent has contradicted none of this. In light of the available evidence on the record, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims Respondent’s disputed domain name distributes malware. Complainant’s computer security software blocked Respondent’s resolving webpage, labeling it as “deceptive,” which Complainant states is proof that it is engaged in malware distribution or a phishing scheme. Using a domain to attempt to download malicious software onto Internet users’ computers is evidence the respondent does not have rights or legitimate interests in a disputed domain name. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Surreptitiously depositing malware on an innocent person’s computer clearly isn’t “bona fide”. Applying this analysis to “phishing” leads to the same conclusion. There is an inherent conflict between doing something deceptively and doing something “sincerely and without intention to deceive.” Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent uses the disputed domain name in furtherance of a “phishing” scheme. This isn’t entirely clear because Complainant’s security software initially blocked the site. However, whether the goal was “phishing” or surreptitiously installing malware, the conclusion remains the same: Respondent registered and used the domain name in bad faith. Using a domain name to perpetrate fraudulent schemes (whether “phishing” or surreptitiously installing malware) is adequate evidence of bad faith. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Respondent registered and uses the domain name in bad faith pursuant to Policy ¶4(a)(iii).
Complainant claims Respondent knew about Complainant's rights in the TD BANK mark prior to registration of the domain name because of Complainant's widespread use of the mark and its widespread trademark registrations. Since Respondent has not denied this claim, the Panel accepts it as true. This means Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (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); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Finally, Respondent failed to provide accurate WHOIS information when Respondent registered the domain name. In the commercial context, that raises the rebuttable presumption of bad faith. Respondent claimed someone hijacked its domain name. Complainant gave password recovery information to Respondent. Then Respondent sent out the same message that someone hijacked its domain name (suggesting this response was sent out by an autoresponder and not a real person). This Panel is willing to find bad faith on this ground alone.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tdbankgroup.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, August 11, 2016
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