The Toronto-Dominion Bank v. Emanuella Doucet
Claim Number: FA1701001714314
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Emanuella Doucet (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdcanadatrustonline-activation.com>, <tdbank-activation.net>, <tdbank-activation.com>, <tdcanadatrustactivation.net>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
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 Forum electronically on January 26, 2017; the Forum received payment on January 26, 2017.
On Jan 30, 2017, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <tdcanadatrustonline-activation.com>, <tdbank-activation.net>, <tdbank-activation.com>, <tdcanadatrustactivation.net> domain names are registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the names. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com 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 February 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2017 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@tdcanadatrustonline-activation.com, postmaster@tdbank-activation.net, postmaster@tdbank-activation.com, postmaster@tdcanadatrustactivation.net. Also on February 2, 2017, 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 March 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant registered the TD (e.g., Reg. No. TMA396087, registered Mar. 20, 1992), TD BANK (e.g., Reg. No. TMA549396, registered Aug. 7, 2001), and CANADA TRUST (e.g., Reg. No. TMA409300, registered Mar. 12, 1993) marks (“Marks”) with the Canadian Intellectual Property Office (“CIPO”). Complainant additionally registered the TD (e.g., Reg. No. 1,649,009, registered Apr. 2, 1991) and TD BANK (e.g., Reg. No. 3,788,055, registered May 11, 2010) with the United States Patent and Trademark Office (“USPTO”). Respondent’s <tdcanadatrustonline-activation.com>, <tdbank-activation.net>, <tdbank-activation.com>, and <tdcanadatrustactivation.net> domain names are confusingly similar as they fully incorporate some or all of the Marks; add generic or descriptive terms such as “online” or “activation”; some of them add a hyphen; and they add one of the generic top-level domains (“gTLD”) “.com” or “.net.”
ii) Respondent has no rights or legitimate interests in any of the disputed domain names. There is no evidence that the Respondent listed in the WHOIS information is commonly known by the Marks, nor has Complainant licensed or otherwise permitted Respondent to use Complainant’s Marks or use domain names incorporating the Marks. Respondent has also ignored all of Complainant’s attempts to resolve the dispute before initiating the instant action. Additionally, Respondent does not use the disputed domain names in a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent engages in a fraudulent phishing scheme. Some of the domain names resolve to websites offering similar services in attempts to fool Complainant’s prospective customers into believing Respondent is authorized by Complainant in order to obtain personal information for financial gain. Alternatively, some of the disputed domain names redirect users to inactive websites resolving in a blank page with no content.
iii) Respondent registered and is using the <tdcanadatrustonline-activation.com>, <tdbank-activation.net>, <tdbank-activation.com>, and <tdcanadatrustactivation.net> domain names in bad faith. Respondent participates in a phishing scheme to try and extract personal information out of potential users while passing off as Complainant. Alternatively, some of the disputed domain names resolve to a blank site lacking any content.
Furthermore, by registering multiple domain names similar to Complainant’s Marks, Respondent engages in a pattern of cybersquatting, which also indicates bad faith registration. Respondent also used a privacy service when initially filing the disputed domain names, indicating bad faith registration. Finally, Respondent must have had actual or constructive knowledge of Complainant’s marks, as Complainant has sold its goods and services using the trademark since 1969; the disputed domain name incorporates some of Complainant’s Marks and Respondent attempts to pass off as Complainant; and Complainant is the sixth largest bank in North America and is known worldwide.
B. Respondent
Respondent did not submit a Response in this Proceeding. The Panel notes that Respondent registered the disputed domain names on the following dates: <tdcanadatrustonline-activation.com> (June 4, 2016), <tdbank-activation.net> (June 2, 2016), <tdbank-activation.com> (June 2, 2016), and <tdcanadatrustactivation.net> (June 2, 2016).
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
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(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 is a large financial institution that conducts operates all around the world. Complainant uses the Marks for financial, banking and related businesses, goods, and services. Complainant claims it registered the TD (e.g., Reg. No. TMA396087, registered Mar. 20, 1992), TD BANK (e.g., Reg. No. TMA549396, registered Aug. 7, 2001), and CANADA TRUST (e.g., Reg. No. TMA409300, registered Mar. 12, 1993) Marks with the CIPO. Complainant additionally claims it registered the TD (e.g., Reg. No. 1,649,009, registered Apr. 2, 1991) and TD BANK (e.g., Reg. No. 3,788,055, registered May 11, 2010) with the USPTO. Panels have consistently held that registration of a mark with multiple governmental agencies sufficiently establishes a registrant’s rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Therefore, the Panel sees that Complainant has established rights in the Marks for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <tdcanadatrustonline-activation.com>, <tdbank-activation.net>, <tdbank-activation.com>, <tdcanadatrustactivation.net> domain names are confusingly similar as they fully incorporate some or all of the Marks, and only differ by the addition of generic or descriptive terms, punctuation, or the gTLD’s “.com” or “.net”. The addition of generic or descriptive terms and punctuation marks have not been found to sufficiently distinguish domain names. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Similarly, Panels have held that adding the gTLD’s “.com” or “.net” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”); see also Thom Browne, Inc. v. Huili Zhang, FA 1358629 (Forum Dec. 22, 2010) (“finding, “The addition of the gTLD “.net” also has no effect on the Policy ¶ 4(a)(i) analysis.”). Respondent’s domain names are confusingly similar as they fully incorporate some or all of the Marks; add the generic or descriptive terms “online” or “activation”; some of them add a hyphen; and they add the gTLD “.com” or “.net.” Therefore, the Panel agrees that Respondent has not included elements in the domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
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 (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 contends that Respondent has no rights or legitimate interests in the disputed domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Emanuella Doucet” as the registrant. Complainant argues there is no evidence that Respondent had ever been known by the disputed domain names prior to their registration, nor has Complainant licensed or otherwise permitted Respondent to use Complainant’s Marks or use domain names with the Marks. These assertions have been used as evidence of lacking rights or legitimate interests. 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). Accordingly, the Panel agrees that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also purports that Respondent has no rights or legitimate interest because Respondent failed to respond to any of Complainant’s attempts to resolve the dispute privately. A respondent’s failure to respond can be used to demonstrate a lack of rights or legitimate interest. See Bank of Am. Corp. v. McCall, FA 135012 (Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Complainant alleges that it sent multiple notices to Respondent in order to allow Respondent the opportunity to cease use of the disputed domain name. Respondent did not respond to any of the correspondences. The Panel finds that Respondent’s failure to respond demonstrates a lack of rights or legitimate interest.
Complainant further alleges that Respondent’s actions are not a bona fide offering of goods or services or a legitimate noncommercial or fair use because some of the domain names directs users to a webpage similar to that of Complainant’s in attempts to pass off as Complainant to acquire personal information in a phishing scheme. Prior Panels have concluded that this conduct demonstrates lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The disputed domains applicable here resolve to a website offering showing the TD mark and the words “EasyWeb” and allows users to enter in their “Card Number” and password. The Panel agrees that Respondent’s actions are not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Alternatively Complainant contends that the disputed domain names redirects users to a website that lacks any content. Using confusingly similar domain names as a passive holding landing site can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Some of Respondent’s domain names redirect users to a website that states “Server not found” and similar content indicating that the disputed domain name lacks content. Accordingly, the Panel agrees with Complainant’s assertions and finds that the disputed domain names are not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor are they a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).”).
Complainant claims Respondent registered and is using the <tdcanadatrustonline-activation.com> and <tdbank-activation.net> domain names in bad faith because Respondent participates in a phishing scheme to try and extract personal information out of potential users while passing off as Complainant. Phishing schemes can be used as evidence of bad faith registration. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). As previously noted above, Respondent’s website had the TD mark and solicits users to enter credit card information. Once entered, the website redirects users to a blank site with no content. The Panel agrees that Respondent registered and uses the domain names in bad faith.
Complainant similarly alleges bad faith registration as the disputed domain names land in a non-functioning webpage. Passive holding sites have been found to evince bad faith registration by prior Panels. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The <tdcanadatrustonline-activation.com> and <tdbank-activation.net> domain names initially begin as a functional website, however after the user enters in their personal information, the webpage redirects the user to a non-operative page claiming “Server not found”. The other two disputed domain names, <tdbank-activation.com> and <tdcanadatrustactivation.net>, immediately take users to the same blank, non-operative webpage mentioned above. The Panel agrees that Respondent’s conduct sufficiently demonstrates bad faith registration.
Furthermore Complainant argues that Respondent, by registering multiple similar domain names to Complainant, engages in a pattern of cybersquatting. A finding of a pattern of cybersquatting has indicated bad faith registration by prior panels. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum February 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Respondent registered four domain names incorporating some or all of Complainant’s Marks. The Panel agrees and finds that Respondent registered the names in bad faith.
Next, Complainant claims that Respondent initially used a privacy shield, evincing bad faith registration. Prior Panels have found that the use of a privacy shield constitutes bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding that the respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar was an example of bad faith conduct). The initial WHOIS search indicated the registrant as “Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org”. The Panel agrees with Complainant that Respondent’s initial use of a privacy shield constituted bad faith registration.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s Marks. However, arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Complainant contends that Respondent must have had actual knowledge of Complainant’s Marks, as Complainant has sold its goods and services using the trademark since 1969; the disputed domain names capture all or some of the full Marks and attempts to pass off as Complainant; and Complainant is the sixth largest bank in North America and is known worldwide. The Panel infers due to the fame and notoriety of Complainant's marks and the manner of use of the disputed domain names, however, that Respondent had actual knowledge of Complainant's rights in the Marks prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanadatrustonline-activation.com>, <tdbank-activation.net>, <tdbank-activation.com>, <tdcanadatrustactivation.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 9, 2017
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