The Toronto-Dominion Bank v. lin yanxiao / LinYanXiao
Claim Number: FA2112001977988
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is lin yanxiao / LinYanXiao (“Respondent”), China.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <<tdautofinanceonline.com>, <tdautofinancepayment.com>, <tdbankcommercial.com>, <tdbanksmallbusiness.com>, <tdbankchecking.com>, <tdbankdebitcard.com>, <tdautofinanceusa.com>, <tdbankautoloans.com>, <tdbankcarloan.com>, and <canadatdbank.com>, registered with 22net, Inc. and Dynadot, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2021; the Forum received payment on December 22, 2021.
On December 22, 2021, the Registrars confirmed by e-mail to the Forum that the <tdautofinanceonline.com>, <tdautofinancepayment.com>, <tdbankcommercial.com>, <tdbanksmallbusiness.com>, <tdbankchecking.com>, <tdbankdebitcard.com>, <tdautofinanceusa.com>, <tdbankautoloans.com>, <tdbankcarloan.com> and <canadatdbank.com> domain names are registered with them and that Respondent is the current registrant of the names. They verified that Respondent is bound by their respective registration agreements 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 28, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of January 18, 2022 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@tdautofinanceonline.com, postmaster@tdautofinancepayment.com, postmaster@tdbankcommercial.com, postmaster@tdbanksmallbusiness.com, postmaster@tdbankchecking.com, postmaster@tdbankdebitcard.com, postmaster@tdautofinanceusa.com, postmaster@tdbankautoloans.com, postmaster@tdbankcarloan.com, postmaster@canadatdbank.com. Also on December 28, 2021, the Chinese and English 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 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
The Panel notes the Chinese language Registration Agreements. Under Rule 11(a) the language of these proceedings is therefore Chinese. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have in the past taken account of factors which indicate a respondent’s proficiency with the English language[i]. Here, Complainant points to the following:
The Panel does not find that citation instructive in this instance since the relevant domain names here resolve to Complainant’s own English language website or third-party English language websites, offering very little evidence of Respondent’s actual proficiency in English.
The Panel finds that this is sufficient evidence to warrant that the proceedings should continue in English. Pursuant to Rule 11(a), the Panel determines that the remainder of the proceedings should be conducted in English[ii].
The disputed domain names are not owned by the one party. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Nevertheless, Complainant has alleged that the domain names are effectively controlled by a single person or entity.
The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity. In this case, that evidence is said to comprise:
1. the underlying registrant names are virtually the same;
2. the registrants both reside in GuangZhou, China and share the same phone number as indicated on the Whois information and use the same free email service extension “[...]@qq.com”; and
3. the domain names were all registered in March 2021 and resolve to similar pages.
The Panel considers that there is adequate evidence of Complainant’s assertion of a single controlling entity and so allows these proceedings to continue against the named respondents[iii], hereinafter referring to them together as “Respondent”.
A. Complainant
Complainant asserts trademark rights in TD and TD BANK and alleges that the disputed domain names are confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides banking and financial services by reference to the trademarks, TD and TD BANK, which re registered, inter alia, with the Chinese State Administration for Industry and Commerce (“SAIC”) as Reg. Nos. 6,781,006 and 6,781,003, respectively, both registered on June 13, 2008;
2. the disputed domain names were all registered during March 2021;
3. the domain names are for sale and resolve to parked pages with various links not connected with Complainant’s business and not used in connection with a business enterprise of Respondent’s making; and
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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 based on 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[iv].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Proof of registration of the trademark with a national trademark authority is adequate proof of trademark rights. Here Complainant provides evidence of its SAIC registrations for TD and TD BANK and so the Panel finds that Complainant has trademark rights in those terms[v].
For the purposes of comparison, the gTLD, “.com”, can be disregarded[vi]. Likewise, the other matter added to the trademarks is descriptive or generic and of no source-distinguishing value. The Panel finds the domain names to be confusingly similar to one or other of the trademarks and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy[vii].
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[viii].
In consequence of these proceedings the Registrars identified the underlying domain name holders as “Lin Yanxiao” and “LinYanXiao”. Neither name provides prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademarks for any purpose.
The domain names are for sale. Further, it is well established that using a disputed domain name to host parked, pay-per-click links is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use[ix] and so the Panel finds that Complainant has made a prima facie case in each instance.
The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
On the evidence, the Panel finds bad faith in all cases under subparagraph (iv) above. The Panel has already found the disputed domain names to be confusingly similar to the trademark. The use of all of the disputed domain names is for commercial gain in some form or another. The Panel finds registration and use of the domain names in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[x].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdautofinanceonline.com>, <tdautofinancepayment.com>, <tdbankcommercial.com>, <tdbanksmallbusiness.com>, <tdbankchecking.com>, <tdbankdebitcard.com>, <tdautofinanceusa.com>, <tdbankautoloans.com>, <tdbankcarloan.com>, and <canadatdbank.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: January 28, 2022
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English; see also Coupang Corp. v. Hyung Jun Lim, Case No. FA1906001847602 (Forum July 20, 2019); CrossFit, Inc. v. Whois Agent, Domain Whois Privacy Prot. Serv. / James Chang, Case No. D2016-1893 (WIPO Nov. 9, 2016).
[iii] See, for example, OS Asset, Inc. v. Yan / Yanli Li; Zhichao Yang, FA1311001529354, stating that panels have “found multiple respondents to be commonly controlled where the content of their websites were substantially identical and referred Internet visitors to a common “homepage”; see also, Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 ordering consolidation of multiple respondents and multiple domain names where the domain names were registered with the same registrar and resolved to essentially identical websites.
[iv] See, for example, 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.”)
[v] See, for example, 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).”
[vi] See, for example, Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶ 4(a)(i).”)
[vii] See, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) “Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”
[viii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[ix] See, for example, 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.
[x] See, for example, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).
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