The Toronto-Dominion Bank v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org)
Claim Number: FA1711001759881
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <update-easyweb.com> and <update-td.com>, registered with Shinjiru Technology Sdn Bhd.
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.
David A. Einhorn as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 27, 2017; the Forum received payment on November 27, 2017.
On December 1, 2017, Shinjiru Technology Sdn Bhd confirmed by e-mail to the Forum that the <update-easyweb.com> and <update-td.com> domain names are registered with Shinjiru Technology Sdn Bhd and that Respondent is the current registrant of the names. Shinjiru Technology Sdn Bhd has verified that Respondent is bound by the Shinjiru Technology Sdn Bhd 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 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@update-easyweb.com and postmaster@update-td.com. Also on December 1, 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 December 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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, The Toronto-Dominion Bank, is the second largest bank in Canada and uses its TD and EASYWEB marks to promote its products and services. Complainant established rights in its TD and EASYWEB marks through registration with the Canadian Intellectual Property Office (“CIPO”) (e.g. TD – Reg. No. TMA396087, registered Mar. 20, 1992; EASYWEB - Reg. No TMA493469, registered Apr. 22, 1998). Respondent’s <update-easyweb.com> domain name is confusingly similar to Complainant’s EASYWEB mark because it adds the generic term “update,” a hyphen, and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark. Respondent’s <update-td.com> domain name is confusingly similar to Complainant’s TD mark because it adds the generic term “update,” a hyphen, and the gTLD “.com” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the <update-easyweb.com> and <update-td.com> domain names. Complainant has not licensed or authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain names, as the WHOIS information provides that the registrant is “Domain Admin / Privacy Protect, LLC (PrivacyProtect.org).” Further, Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Currently, the domain names resolve to a Google warning page that reads “Deceptive site ahead.” Previously, the domain names resolved to websites that mirrored Complainant’s website, <easyweb.td.com>, and were used to phish for Internet user’s information.
Respondent registered and is using the disputed domain names in bad faith. Respondent used the domain names to fraudulently pose as Complainant for purposes of launching a phishing attack. Additionally, Respondent had actual knowledge of Complainant’s rights in the TD and EASYWEB marks at the time of registration as shown by Respondent incorporating Complainant’s marks in the domain names, and previously having the domain names resolve to a webpage mirroring Complainant’s own website hosted at <easyweb.td.com>. Furthermore, Respondent used a privacy service to conceal its true identity. Finally, Respondent ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the <update-easyweb.com> domain name on September 30, 2017 and registered the <update-td.com> domain name on September 27, 2017.
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 contends it registered its TD and EASYWEB marks with the CIPO (e.g. TD – Reg. No. TMA396087, registered Mar. 20, 1992; EASYWEB - Reg. No TMA493469, registered Apr. 22, 1998). Registration of a mark with a trademark authority, such as the CIPO, confers rights in a mark. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”). Therefore, the Panel concludes that Complainant has rights in the TD and EASYWEB marks for the purposes of Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <update-easyweb.com> domain name is confusingly similar to Complainant’s EASYWEB mark because it adds the generic term “update,” and a hyphen, to the fully incorporated mark. Complainant also alleges that Respondent’s <update-td.com> domain name is confusingly similar to Complainant’s TD mark in that it too adds the generic term “update,” and a hyphen, to the fully incorporated mark. The addition of a generic term and a hyphen do not negate confusing similarity. See Morgan Stanley v. nashan, FA 1706094 (Forum Jan. 23, 2017) (finding the <morgan-stanley.xyz> domain name identical to complainant’s MORGAN STANLEY mark, because “the use of a hyphen and addition of a gTLD are irrelevant in determining the identical or confusingly similar nature of a disputed domain name under Policy ¶ 4(a)(i).”). Therefore, the Panel holds that the disputed domain names are confusingly similar to Complainant’s TD and EASYWEB marks.
Respondent does not have rights or legitimate interests in the <update-easyweb.com> and <update-td.com> domain names. Complainant has not licensed or authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by 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); see also Navistar International Corporation v. N Rahmany, FA1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS identifies “Domain Admin / Privacy Protect, LLC (PrivacyProtect.org)” as the registrant, and Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by either the TD or EASYWEB mark. Accordingly, the Panel agrees that Respondent is not commonly known by the <update-easyweb.com> and <update-td.com> domain names per Policy ¶ 4(c)(ii).
Further, Complainant contends that Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims that while the domain names currently resolve to a Google warning page that reads “Deceptive site ahead,” the domain names previously resolved to websites that mirrored Complainant’s website, <easyweb.td.com>, and were used to phish for Internet user’s information. Use of a confusingly similar domain name to phish for Internet users personal or financial information is generally not considered to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Screenshots of the previous resolving website indicate that the sites featured all fraudulent log in pages alongside Complainant’s TD and EASYWEB marks. Complainant claims that Respondent displayed Complainant’s marks to fraudulently obtain users’ personal information. The previous resolving website bears the TD and EASYWEB marks and consists of an access page seeking the user’s username and password. The page also deceptively states “Login to our secure financial services site”, displays the image of a lock and bears the label “TD Online Mobile Security Guarantee Protect Yourself Against Fraud”. Therefore, the Panel agrees that Respondent uses the domain names to pass off as Complainant to further a fraudulent phishing scheme, and thus fails to use the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Finding for Complainant
Complainant contends that Respondent registered and is using the domain names in bad faith because Respondent previously used the domain names to fraudulently pose as Complainant for purposes of launching a phishing scheme. Use of a domain name to phish for Internet users’ personal and financial information constitutes clear evidence bad faith registration and use under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). As mentioned previously, screenshots of the domain names’ resolving websites indicate that the sites featured allegedly fraudulent login pages alongside Complainant’s TD and EASYWEB marks. Therefore, the Panel finds that Respondent used the domain names to pass off as Complainant and to phish for users’ information in bad faith.
Further, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the TD and EASYWEB marks at the time of registration. Actual knowledge of a Complainant’s rights in a mark at the time a disputed domain name is registered can further a finding of bad faith. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Here, Complainant clearly had actual knowledge of Complainant’s marks as Respondent previously used the domain names to resolve to a website featuring content from Complainant’s own <easyweb.td.com> domain name. As such, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the TD and EASYWEB marks.
Thus, Complainant has also satisfied 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 <update-easyweb.com> and <update-td.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 10, 2018
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