The Toronto-Dominion Bank v. CYBERNET SYSTECH PRIVATE LIMITED
Claim Number: FA1804001782931
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is CYBERNET SYSTECH PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2018; the Forum received payment on April 23, 2018.
On April 24, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> 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 April 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2018 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@tdbankbusiness.com, postmaster@htdbank.com, postmaster@tdbameritrade.com, postmaster@tdcardmemberservices.com, postmaster@tdcardserives.com, postmaster@tdcardservicess.com, postmaster@tdcardsrervices.com, postmaster@tdmytotalrewards.com, postmaster@tdsbcashonline.com. Also on April 24, 2018, 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 May 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant is one of the largest banks in Canada and the sixth largest bank in North America. Complainant has rights in TD (e.g., Reg. No. 1,649,009, registered Jun. 15,1991) and TD BANK (e.g., Reg. No. 3,788,055, registered Jun. 9, 2005) marks through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) and registrations with the Canadian Intellectual Property Office (“CIPO”).
Respondent’s <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names are confusingly similar to Complainant’s TD and TD BANK marks as Respondent merely adds generic and descriptive terms (“business,” “bameritrade,” “card member services,” “card”), various misspellings of generic or descriptive terms (“service(s),” “my total rewards,” and “sb cash online”), and adds a “.com” generic top level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names. Respondent is not permitted or otherwise authorized to use Complainant’s TD or TD BANK marks and is not commonly known by the disputed domain names. Additionally, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent features competing hyperlinks at the disputed domain names’ resolving websites, presumably for commercial gain. Respondent also offers the disputed domain names for sale, which indicates Respondent lacks rights and legitimate interests in the disputed domain names.
Respondent registered and is using the <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names in bad faith. Respondent is attempting to sell the disputed domain names which constitutes bad faith. Respondent also registered multiple domain names in the present UDRP case which is evidence for a pattern of bad faith registration. Additionally, Respondent currently holds registrations for several other domain names which incorporate third-party marks. Moreover, Respondent attempts to attract users to the disputed domain names’ websites which feature competing, pay-per-click hyperlinks. Furthermore, Respondent had actual knowledge and constructive notice of Complainant’s rights in the TD and TD BANK marks prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the TD and TD BANK marks.
Respondent registered the at-issue domain names after Complainant acquired rights in TD and TD BANK.
Respondent’s at-issue domain names are offered for sale and used to display competing pay-per-click links.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a CIPO or a USPTO registration for its TD and TD BANK trademarks demonstrates its rights in such marks 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.”).
Respondent’s <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names each contain Complainant’s TD and/or TD BANK mark followed by generic terms—either “business” or “ameritrade” or “cardmemberservices” or “cardservices” (or misspellings thereof) or “totalrewards: or “sbcashonline”—and then concluded with the top-level domain name “.com”. In each case, the alterations to Complainant’s trademarks are insufficient to distinguish any of the domain names from Complainant’s trademark(s) for the purposes of the Policy ¶ 4(a)(i). In fact the additions to Complainant’s mark(s) are suggestive of Complainant’s banking related business and thus add to any confusion caused by the incorporation of Complainant’s trademark(s) in the at-issue domain names. Therefore, the Panel finds that Respondent’s <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names are each confusingly similar to one or more of Complainant’s trademarks. 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, Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); 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).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at-issue domain names.
WHOIS information for the at-issue domain names lists “CYBERNET SYSTECH PRIVATE LIMITED” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by any of the at-issue domain names. Therefore, the Panel finds that Respondent is not commonly known by any of the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum 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).
Additionally, Respondent’s confusingly similar <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names each resolve to a website displaying links to competing third parties. Using the domain names in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services 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 pursuant to Policy ¶ 4(c)(iii).”); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Given the forgoing, Complainant’s unrebutted showing that Respondent lacks rights or interests in each of the at-issue domain names satisfies Complainant’s burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each domain name.
The <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding the <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names.
First, Complainant shows evidence in the form of emails from Respondent indicating that Respondent is offering the at-issue domain names for sale to Complainant in amount in excess of Respondent’s out-of-pocket expenses. Offering to sell a disputed domain name for more than out of pocket costs is evidence of bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i)).
Second, Respondent has registered an array of domain names where each is confusingly similar to Complainant’s trademark(s). Registration of multiple, here nine, confusingly similar domain names in a single UDRP case suggests a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). Such pattern further indicates Respondent’s bad faith in the instant case. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Moreover, Respondent also registered domain names incorporating well-known third-party trademarks (e.g., <allbanklogin.com> for ALLY, <americanexpresspbc.com> for AMERICAN EXPRESS, and <bankofamerica2017.com> for BANK OF AMERICA). This too indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Next and as discussed above regarding rights and legitimate interests, Respondent uses the at-issue domains to display webpages which include what appear to be pay-per-click links to third parties, some of whom compete with Complainant. Respondent’s use of the confusingly similar domain names to redirect internet users, via hyperlinks, to Complainant’s competitors shows Respondent’s bad faith registration and use of the at-issue domain names under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Finally, Respondent registered the <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names knowing that Complainant had trademark rights in the TD and TD BANK marks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks, as well as from Respondent’s concurrent registration of such trademarks in multiple domain names. Respondent’s actual knowledge of Complainant's trademarks further indicates that Respondent registered and used the <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's 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 <tdbankbusiness.com>, <htdbank.com>, <tdbameritrade.com>, <tdcardmemberservices.com>, <tdcardserives.com>, <tdcardservicess.com>, <tdcardsrervices.com>, <tdmytotalrewards.com>, and <tdsbcashonline.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 21, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page