The Toronto-Dominion Bank v. Milen Radumilo
Claim Number: FA1610001698758
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcancadatrust.com> (‘the Domain Name’) registered with Domain.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 18, 2016; the Forum received payment on October 18, 2016.
On October 19, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <tdcancadatrust.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@tdcancadatrust.com. Also on October 20, 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 November 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarized as follows:
Complainant is the owner of many trade mark registrations in Europe and elsewhere that consist of or include the elements TD and CANADA TRUST in association with financial services.
In Canada the bank operates as TD Canada Trust and serves more than 12 million customers at over 1100 branches.
Complainant operates numerous web sites including TDCanadatrust.com which attract over 100,000 unique visitors per month.
When comparing the Domain Name to Complainant’s trade marks the relevant comparison is only with the second level portion of the domain name.
The Domain Name is merely a combination of Complainant’s TD and CANADA TRUST trade marks albeit that CANADA TRUST is misspelled with an extra ‘c’. Combining two of Complainant’s marks and adding an extra letter is not sufficient to distinguish the Domain Name which is confusingly similar to these trade marks.
Respondent is not sponsored by or affiliated with Complainant in any way. Respondent does not have permission from Complainant to use Complainant’s marks. Respondent is not commonly known by the Domain Name.
Respondent is using the Domain Name to redirect users to a web site featuring links to third party web sites some of which compete with Complainant’s business. This is not a bona fide offering of goods or services, nor a legitimate non-commercial or fair use under the Policy.
The Domain Name is being offered for sale in an amount that far exceeds Respondent’s out of pocket expenses.
The Domain Name was registered on April 26, 2016, significantly after Complainant filed for registration of its relevant trade marks and its first use in commerce of its TD mark in 1969, and of its CANADA TRUST mark in 1993.
By registering a domain name which is a one letter typographical error of Complainant’s longstanding official website address, Respondent is demonstrating knowledge and familiarity with Complainant’s brand and business. Registration of domain names containing well-known marks in full knowledge of them is bad faith per se.
Respondent has intentionally sought to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s web site.
Respondent has previously been involved in several UDRP cases which provide evidence of a pattern of cybersquatting.
Respondent is currently offering to sell the Domain Name for valuable consideration in excess of its out of pocket expenses.
Respondent has ignored Complainant’s efforts to resolve the dispute.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trade mark registrations in Europe and elsewhere that consist of or include the elements TD or CANADA TRUST in association with financial services which have been used since, at least, the 1990s.
The Domain Name registered in 2016 appears to be a typosquatted version of Complainant’s web site address TDcanadatrust.com and has been used as a link farm and offered for sale for a sum significantly more than the expected out of pocket expenses.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical and/or Confusingly Similar
The Domain Name consists of signs equivalent to Complainant's registered trade marks TD and CANADA TRUST, an extra letter ‘c’ and the gTLD .com, it being noted that Complainant uses the domain name tdcanadatrust.com. Accordingly, the Domain Name appears to be a typosquatted version of a combination of Complainant’s registered marks and its web site address.
Panels have held that a respondent combining multiples of the respondent’s trade marks does not negate confusing similarity. See Fitness Anywhere Inc. v Mode Athletics, FA 1320667 (Forum May 20, 2010).
Panels have also commonly held that the addition of one letter to a mark does not distinguish a domain name from a Complainant’s mark. See Amazon.com, Inc. v Ikhizamah, D2002-1168 (WIPO Mar, 17, 2003)(holding that the zamazon.com domain name was confusingly similar to the complainant's amazon.com mark).
The gTLD .com does not serve to distinguish the Domain Name from Complainant’s marks which are the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with marks in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not given Respondent permission to use the Domain Name. Respondent does not appear to be commonly known by the Domain Name, is not using it to offer bona fide goods and services and is not making a legitimate noncommercial or fair use of the name. The site appears to be set up for commercial benefit to compete with Complainant using the latter's intellectual property rights to make a profit by pointing to third party links competing with the complainant's goods. See ALPITOUR SpA v Albloushi FA 888651 (Nat. Arb Forum. Feb 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and services under the Policy.)
Additionally the Domain Name appears to be a typosquatted version of Complainant's domain name for its web site chosen in the hope that a customer might reach Respondent's web site by mistakenly typing additional letters when intending to access Complainant’s site. See Amazon.com, Inc. v JJ Domains, FA 514939 (Nat Arb. Forum Sept 2, 2005)(respondent lacks rights and legitimate interests in the www-amazon.com domain name because the addition of 'www-' constitutes typosquatting).
As such, the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant has provided evidence that Respondent has attempted to disrupt Complainant’s business by its use of the Domain Name providing links that resolve to third party commercial sites that compete directly with Complainant. See Univ of Texas Sys. v Smith FA 1195695 (Nat. Arb Forum July 7, 2008)(finding that using the resolving web site to divert Internet users to Complainant's competitors constitutes bad faith registration and use under the Policy. )
Complainant also alleges that Respondent's use of the site is commercial and he is using it to make a profit from linking to third party web sites that compete with Complainant in a confusing manner. The use is confusing in that visitors to the site might reasonably believe it is connected to or approved by Complainant offering financial services under a Domain Name which is a typosquatted version of Complainant’s Domain Name. The use for links concerning financial services suggests Respondent is aware of Complainant and its goods and business. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Asbury Auto Group Inc. v Tex. Int'l Prop Assocs FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
Finally, typosquatting itself is evidence of relevant bad faith registration and use. See Vanguard Group Inc. v IQ Mgmt. Corp FA 328127 (Nat Arb Forum Oct 28, 2004)(By engaging in typosquatting respondent has registered and used the vangard.com domain name in bad faith pursuant to Policy 4(a) (iii)).
The Panel also notes that the Domain Name has been offered for sale for a sum significantly in excess of out of pocket expenses. See World Wrestling Fed’n Entm’t, Inc. v Bosman, D99-0001 (WIPO Jan 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of an out of pocket costs.)
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy. As such there is no need to further consider whether Respondent has been involved in a pattern of bad faith registrations evidenced by previous UDRP decisions.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcancadatrust.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: November 28, 2016
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