TD AMERITRADE IP Company Inc. v. The Domain Holding Trust Inc.
Claim Number: FA0705000989375
Complainant is TD AMERITRADE IP Company Inc. (“Complainant”), represented by Julia
A Matheson, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <tdameritradedirect.com>, <tdameritradeonline.com>, <tdameritradeuniversity.com>, and <mytdameritrade.com>, registered with Wild West Domains, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 7, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@tdameritradedirect.com, postmaster@tdameritradeonline.com, postmaster@tdameritradeuniversity.com and postmaster@mytdameritrade.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <tdameritradedirect.com>, <tdameritradeonline.com>, <tdameritradeuniversity.com>, and <mytdameritrade.com> domain names are confusingly similar to Complainant’s AMERITRADE mark.
2. Respondent does not have any rights or legitimate interests in the <tdameritradedirect.com>, <tdameritradeonline.com>, <tdameritradeuniversity.com>, and <mytdameritrade.com> domain names.
3. Respondent registered and used the <tdameritradedirect.com>, <tdameritradeonline.com>, <tdameritradeuniversity.com>, and <mytdameritrade.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TD AMERITRADE IP Company Inc., is a financial
services company that offers securities brokerage and technology-based products
and services to retail investors and institutional clients around the
world. Complainant was formerly known as
Ameritrade Holding Corporation before its acquisition of TD Waterhouse Group,
Inc. in January 2006. Through its
predecessors-in-interest, Complainant has continuously and extensively used the
AMERITRADE mark since March 1981 and the TD AMERITRADE mark since
Complainant’s trademark registrations with the United States
Patent and Trademark Office (“USPTO”) for the AMERITRADE mark include Reg. No.
2,032,385 issued
Respondent registered the <tdameritradedirect.com>, <tdameritradeonline.com>,
and
<mytdameritrade.com>
domain
names on
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant’s federal USPTO trademark registrations for the
AMERITRADE mark sufficiently establish its rights in the mark pursuant to
Policy ¶ 4(a)(i).
See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd.,
FA 571918 (Nat. Arb. Forum
The <tdameritradedirect.com>, <tdameritradeonline.com>,
<tdameritradeuniversity.com>, and <mytdameritrade.com>
domain names all fully incorporate Complainant’s registered AMERITRADE mark in
combination with terms directly relating to Complainant’s business and the
generic top-level domain (“gTLD”) “.com.”
In Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 7, 2007), the panel found that by adding the term
“security” to the complainant’s VANCE mark in several domain names, a term
which described the complainant’s business, the respondent “very significantly
increased” the likelihood of confusion with the complainant’s mark. Similarly, the panel in SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant bears the initial burden of proof of establishing that Respondent
does not have rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case, the burden shifts to Respondent to demonstrate
that it does, in fact, have rights or legitimate interests in the domain names
in dispute. In this case, the Panel
finds that Complainant has made a prima
facie case pursuant to Policy ¶ 4(a)(ii). See SEMCO
Prods., LLC v. dmg world media (
Respondent has
failed to submit a Response. Therefore,
the Panel will presume that Respondent has no rights or legitimate interests in
the disputed domain names. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
Respondent is
listed as “The Domain Holding Trust Inc.” in the WHOIS information for the
disputed domain names. There does not
appear to be any other evidence in the record suggesting that Respondent is
commonly known by any of the domain names in dispute. Consequently, the Panel concludes that
Respondent has not established rights or legitimate interests pursuant to
Policy ¶ 4(c)(ii).
See Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb.
Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there is no evidence in the record indicating that
the respondent is commonly known by the disputed domain name).
Moreover,
Respondent’s use of the disputed domain names to maintain pay-per-click
websites indicates that it is probably profiting from referral fees it earns
each time an unsuspecting Internet user clicks on one of the links that
resolves to a competing financial services website. The panel in Persohn v.
Lim, FA
874447 (Nat. Arb. Forum
Feb. 19, 2007) found that such a use did not constitute a bona fide offering of goods or services, or a legitimate
noncommercial or fair use because the respondent was redirecting Internet users
to a commercial search engine website with links to multiple websites that may
be of interest to the complainant’s customers and presumably earning
“click-through fees” in the process. In Tesco Pers. Fin. Ltd. v. Domain
Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel also found that a respondent
maintaining a pay-per-click website with links to competing financial services
websites was not a use in connection with a bona fide offering of goods
or services, or a legitimate noncommercial or fair use. In this case, then, the Panel finds that
Respondent has not used the disputed domain names in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) by maintaining
pay-per-click websites.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s pay-per-click websites at the disputed domain names display links to the websites of Complainant’s competitors in the financial services industry. The Panel thus finds that Respondent has registered and is using the disputed domain names in order to disrupt Complainant’s business under the AMERITRADE and TD AMERITRADE marks, which represents bad faith according to Policy ¶ 4(b)(iii). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 8, 2007) (“Respondent’s use of the Domain Name to divert Internet users to its competing business suggests that Respondent registered the disputed domain name in order to disrupt Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, Respondent is taking advantage of the confusing similarity between Complainant’s AMERITRADE and TD AMERITRADE marks and the four domain names in dispute and likely profiting from the goodwill associated with the marks in the form of click-through fees. Respondent’s diversion of Internet users to competing websites thus constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel concludes that Complainant has satisfied 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 <tdameritradedirect.com>, <tdameritradeonline.com>, <tdameritradeuniversity.com>, and <mytdameritrade.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
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