The Toronto-Dominion Bank v. shang liang
Claim Number: FA2010001918397
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is shang liang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwtdbank.co>, registered with GoDaddy.com, LLC.
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 October 27, 2020; the Forum received payment on October 27, 2020.
On October 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wwwtdbank.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2020 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@wwwtdbank.co. Also on October 27, 2020, 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 November 19, 2020, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America.
Complainant has rights in the TD BANK mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <wwwtdbank.co> is identical or confusingly similar to Complainant’s TD BANK mark as it simply adds the generic term “www” to the beginning of Complainant’s mark.
Respondent lacks rights or legitimate interests in the <wwwtdbank.co> domain name. Respondent is not commonly known by the at-issue domain name nor has Respondent been authorized by Complainant to use the TD BANK mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to redirect internet users to a website featuring hyperlinks to third-party websites, some of which directly compete with Complainant's business. Furthermore, Respondent does this for financial gain.
Respondent registered and uses the <wwwtdbank.co> domain name in bad faith because Respondent is engaging in a pattern of cybersquatting/typosquatting. Additionally, Respondent uses the at-issue domain name to intentionally divert traffic from Complainant’s official website to Respondent’s own website for Respondent’s financial gain. Next, Respondent had actual knowledge of Complainant’s rights to the TD BANK mark prior to registering the disputed domain name as evidenced by the famous nature of Complainant’s mark and Respondent’s use of the mark. Finally, Respondent failed to respond to Complainant’s cease and desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the TD BANK mark.
Respondent registered the at-issue domain name after Complainant acquired rights in TD BANK.
Complainant’s has not authorized Respondent to use any of Complainant’s trademarks.
Respondent used the at-issue domain name to address a webpage containing Complainant’s trademark and now holds the <wwwtdbank.co>domain name inactively.
Complainant has trademark rights in the TD BANK mark.
Respondent registered the at-issue domain name after Complainant acquired rights in TD BANK.
Complainant’s has not authorized Respondent to use any of Complainant’s trademarks.
Respondent uses the at-issue domain name to direct internet traffic to Respondent’s own website for Respondent’s financial gain.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for its TD BANK trademark is sufficient to demonstrate Complainant’s rights in TD BANK for the purposes of Policy ¶ 4(a)(i) as are each of its other national registrations for said 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).”);See United Way of America v. Alex Zingaus, FA 1036202 (Forum Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Respondent’s <wwwtdbank.co> domain name contains Complainant’s TD BANK, trademark less its domain name impermissible space, prefixed with the generic term “www” an initialism for “world wide web” which is often used as a high-level qualifier in a website address, with all followed by the top-level domain name “.co.” The Panel notes that Respondent has obviously designed the domain name to take advantage of internet users who, seeking Complainant, include the “www” identifier in the address but inadvertently omit the period separating “www” from the second-level domain name, “tdbank.” Importantly, the differences between Complainant’s trademark and Respondent’s domain name are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <wwwtdbank.co> domain name is confusingly similar to Complainant’s TD BANK trademark under Policy ¶ 4(a)(i). See The Toro Company v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1615881 (Forum May 27, 2015) (concluding that the <wwwtoro.com> domain name is confusingly similar, as the domain name consists of the Complainant's TORO mark, the generic term “www” and the gTLD “.com”).
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 the at-issue domain name. Respondent is not authorized to use Complainant’s trademark 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 legitimate interests in respect of the at-issue domain name.
The WHOIS information for <wwwtdbank.co> indicates “shang liang” as the domain name’s registrant and there is no evidence before the Panel that otherwise indicates Respondent is commonly known by the <wwwtdbank.co> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to 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)”); 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).
Next, Respondent’s confusingly similar domain name addresses a website displaying multiple third-party hyperlinks likely for financial gain. Some of these links appear to be to parties or resources competing with Complainant. Respondent’s use of the at-issue domain name 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 Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provides screenshots the resolving website, highlighting the presence of multiple third-party hyperlinks for “Current Bank Account” and “Banking Account”.
Given the forgoing, Complainant conclusively demonstrates Respondent’s lack of rights and lack of interests in the <wwwtdbank.co> domain name.
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is sufficient evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Complainant shows that Respondent has registered multiple domain names which may be confused with the trademarks of well-known brands and businesses. Thereby, Respondent has indulged in a pattern of cybersquatting which indicates Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
As mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar <wwwtdbank.co> domain name to direct internet traffic likely intended for Complainant to Respondent’s <wwwtdbank.co> website. Using the confusingly similar domain name to divert internet traffic to Respondent’s commercial website where Respondent features competitive hyperlinks demonstrates Respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Finally, Respondent had actual knowledge of Complainant’s rights in the TD BANK mark when it registered <wwwtdbank.co>as a domain name. Respondent’s prior knowledge of Complainant’s trademark is evident from the notoriety of Complainant’s TD BANK trademark, from Respondent’s use of the domain name to direct internet traffic to Complainant’s competitors, and from Respondent’s design of the domain name to exploit anticipated typographical errors made by internet users seeking Complainant’s official website. 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); see also, 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 <wwwtdbank.co> domain name be TRANSFERRED from Respondent.
Paul M. DeCicco, Panelist
Dated: November 19, 2020
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