The Toronto-Dominion Bank v. sam ngozichukwu / SAM WEB SOLUTIONS
Claim Number: FA1905001844983
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is sam ngozichukwu / SAM WEB SOLUTIONS (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbanksonline.com>, registered with NameCheap, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2019; the Forum received payment on May 26, 2019.
On May 28, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <tdbanksonline.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2019 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@tdbanksonline.com. Also on June 3, 2019, 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 June 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, The Toronto-Dominion Bank, uses their mark TD BANK in connection with financial and banking services. Complainant has rights in the TD BANK mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,788,055, registered May 11, 2010). See Amend. Compl. Ex. A. Respondent’s <tdbanksonline.com> domain name is confusingly similar to Complainant’s TD BANK mark, as it adds the letter “s” and the descriptive term “online.”
Respondent has no rights or legitimate interests in the <tdbanksonline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TD BANK mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to pass off as Complainant in order to further a fraudulent phishing scheme. This use diverts users away from Complainant’s site to Respondent’s site for commercial gain.
Respondent registered and is using the <tdbanksonline.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent is using the disputed domain name to pass off as Complainant in order to further a phishing scheme. Respondent had actual knowledge of Complainant’s rights in the TD BANK mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Canadian company engaged in the financial and banking services industries.
2. Complainant has established its trademark rights in the TD BANK mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,788,055, registered May 11, 2010).
3. Respondent registered the disputed domain name on February 13, 2019.
4. Respondent is using the disputed domain name to pass itself off as Complainant in order to further a fraudulent phishing scheme.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the TD BANK mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,788,055, registered May 11, 2010). See Amend. Compl. Ex. A. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The
Panel therefore finds that Complainant’s registration of the TD BANK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TD BANK mark. Complainant argues that Respondent’s <tdbanksonline.com> domain name is confusingly similar to the TD BANK mark, as it adds the letter “s” and the descriptive term “online.” Generally, the addition of letters and/or descriptive terms is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark), see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Here, the Panel notes that while Respondent makes no arguments as to the addition of the generic top-level domain “.com” to Complainant’s mark when registering the disputed domain name, such an addition is irrelevant under a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s TD BANK mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TD BANK mark and use it in its domain name, adding the letter “s” and the descriptive word “online” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the disputed domain name on February 13, 2019;
(c) Respondent is using the disputed domain name to pass itself off as Complainant in order to further a fraudulent phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <tdbanksonline.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TD BANK mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “sam ngozichukwu / SAM WEB SOLUTIONS” and no information on record indicated Respondent was authorized to register a domain name with Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <tdbanksonline.com> domain name;
(f) Complainant argues Respondent’s lack of rights and legitimate interests in the <tdbanksonline.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name resolves to a website which is being used to pass itself off as Complainant in order to further a fraudulent phishing scheme. Generally, use of a domain name to pass off as a complainant to further a fraudulent phishing scheme is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (concluding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Here, Complainant provides screenshots of the resolving website associated with the disputed domain name to show Respondent’s attempts to pass itself off as Complainant. See Amend. Compl. Ex. F. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <tdbanksonline.com> domain name per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant also submits that Respondent’s lack of rights or legitimate interests is demonstrated by its use of the <tdbanksonline.com> domain name to divert users away from Complainant’s website to Respondent’s website for commercial gain. Generally, use of a disputed domain name to divert users is not a use indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).”). The Panel notes that Complainant has provided screenshots of the resolving website to support this contention. See Amend. Compl. Ex. F. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <tdbanksonline.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s bad faith is indicated by its use of the <tdbanksonline.com> domain name to pass itself off as Complainant in order to further a phishing scheme. Generally, use of disputed domain name to pass off as a complainant in order to further a phishing scheme may demonstrate bad faith under Policy ¶ 4(b)(iv). See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). Here, the Panel notes that Complainant has provided screenshots of the resolving website associated with the disputed domain name. See Amend. Compl. Ex. H. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent’s bad faith is demonstrated by its actual knowledge of Complainant’s rights in the TD BANK mark prior to registering the <tdbanksonline.com> domain name. Generally, a respondent’s registration of a disputed domain name with actual knowledge of a complainant’s rights in a mark may demonstrate bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Complainant has provided a screenshot of the resolving website associated with the domain name which mimics Complainant’s website to demonstrate this contention. See Amend. Compl. Ex. H. The Panel agrees with Complainant and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the TD BANK mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbanksonline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 28, 2019
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