The Toronto-Dominion Bank v. Frank Linus / TD TRADING
Claim Number: FA1712001761346
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Frank Linus / TD TRADING (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbkonline.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically December 5, 2017; the Forum received payment December 5, 2017.
On December 6, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <tdbkonline.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and 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 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@tdbkonline.net. Also on December 7, 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 January 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant established rights and legitimate interests in the disputed domain name given its inclusion of Complainant’s mark, in which Complainant has protected legal rights.
Respondent has no such rights or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark and registered and used the disputed domain name in bad faith by conducting a phishing scheme among other things.
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 to 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.
Given 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 will draw such inferences as the Panel 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’s Contentions in this Proceeding:
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant registered the TD mark with the Canadian Intellectual Property Office (“CIPO”) (e.g. Reg. No. TMA396087, registered Mar. 20, 1992). See Compl. Ex. E. Respondent’s <tdbkonline.net> domain name is confusingly similar to Complainant’s mark as it adds the term “bkonline” to Complainant’s TD mark, along with the generic top-level domain (“gTLD”) “.net.”
Respondent has no rights or legitimate interests in the <tdbkonline.net> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized, licensed, or otherwise permitted Respondent to use its mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent redirects Internet users to a website that copied and attempts to duplicate Complainant’s logo and official website in design, layout, and text found at <tdbank.com> in order to fool unsuspecting visitors into divulging their personal information. See Compl. Ex. F & H (screenshots of Respondent’s and Complainant’s webpages).
Respondent registered and uses the <tdbkonline.net> domain name in bad faith. Respondent uses the domain name’s resolving website to fraudulently pose as Complainant for purposes of launching a phishing attack to deceive unsuspecting Internet users into divulging personal or financial information. See Compl. Ex. F & H. Further, Respondent created a domain name that is confusingly similar to Complainant’s trademarks, and mimics Complainant’s own <tdbank.com> domain, thus demonstrating full knowledge of and familiarity with Complainant’s brand and business.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <tdbkonline.net> domain name October 6, 2017. See Compl. Ex. E.
Identical or Confusingly Similar:
Complainant registered the TD mark with the CIPO (e.g. Reg. No. TMA396087, registered Mar. 20, 1992). See Compl. Ex. E. Registration of a mark with the CIPO sufficiently confers a complainant rights in a mark for the purposes of Policy ¶ 4(a)(i). 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.”). Accordingly, the Panel finds that Complainant established rights in the TD mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tdbkonline.net> domain name is confusingly similar to Complainant’s mark as it adds the term “bkonline” to Complainant’s TD mark, along with the gTLD “.net.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <tdbkonline.net> domain name is confusingly similar to the TD mark under Policy ¶4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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 <tdbkonline.net> domain name. Where no response is filed, the Panel looks to relevant information, including 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 “Frank Linus / TD TRADING” as the registrant. See Compl. Ex. E. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TD mark. Panels use these assertions 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). Complainant alleges that Respondent is not legitimately affiliated with Complainant, has not been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the TD mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <tdbkonline.net> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent passes off as Complainant to further a phishing scheme to obtain information from users. Passing off in furtherance of a phishing scheme can evidence a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant provides screenshots of its own website, along with that of the disputed domain name, both of which contain a similar color scheme and design, along with the TD mark. See Compl. Ex. F & H. Complainant alleges that Respondent mimics Complainant’s website to trick users into divulging personal or financial information for Respondent’s gain. As such, the Panel finds that Respondent attempts to pass off as Complainant to obtain users’ personal or financial information, and does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i), and does not make a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel considers the totality of Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <tdbkonline.net> domain name in bad faith as it attempts to pass off as Complainant on the resolving webpage to engage in a phishing scheme intended to defraud users. Passing off to further a phishing scheme can evidence bad faith registration and use under Policy ¶ 4(a)(iii).”). See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). As noted previously, Complainant provides screenshots of its own website, along with that located at the disputed domain name, both of which contain a similar color scheme and design, along with the TD mark, which Complainant alleges seeks to trick users into divulging personal or financial information for Respondent’s gain. See Compl. Ex. F & H. Accordingly, the Panel agrees with Complainant’s assertions and finds that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s TD mark at the time it registered the <tdbkonline.net> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evidence 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). Complainant contends that Respondent created a domain name that is confusingly similar to Complainant’s trademarks, and mimics Complainant’s own <tdbank.com> domain, demonstrating knowledge of and familiarity with Complainant’s brand and business. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and attempts to use the disputed domain name to carry out a phishing scheme in bad faith; Complainant satisfied the elements of ICANN 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 <tdbkonline.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 16, 2018
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