The Toronto-Dominion Bank v. shi lei
Claim Number: FA2003001888657
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is shi lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbenefitcenter.com>, registered with NameSilo, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2020; the Forum received payment on March 17, 2020.
On March 18, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <tdbenefitcenter.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@tdbenefitcenter.com. Also on March 19, 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 April 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 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 mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,649,009, registered June 25, 1991). Respondent’s <tdbenefitcenter.com> domain name is confusingly similar to Complainant’s TD mark. Respondent incorporates the mark in its entirety and adds the generic, descriptive terms “benefit center” to the mark.
Respondent lacks rights or legitimate interests in the <tdbenefitcenter.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the TD mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that offers links that compete with Complainant’s services.
Respondent registered and used the <tdbenefitcenter.com> domain name in bad faith. Prior adverse UDRP decisions against Respondent have ordered the transfer of domain names. Respondent attempts to create confusion among internet users that Respondent is affiliated with Complainant by using its TD mark in its domain name. Respondent had actual knowledge of Complainant’s rights in the TD mark through its long-standing use and fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 mark through its registration with the USPTO (Reg. No. 1,649,009, registered June 25, 1991). Respondent’s <tdbenefitcenter.com> domain name is confusingly similar to Complainant’s TD mark.
Respondent registered the <tdbenefitcenter.com> domain name on October 5, 2019.
Respondent lacks rights or legitimate interests in the <tdbenefitcenter.com> domain name. Respondent’s domain name resolves to a webpage that offers links that compete with Complainant’s services.
Respondent registered and used the <tdbenefitcenter.com> domain name in bad faith.
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”).
Complainant has rights in the TD mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <tdbenefitcenter.com> domain name is confusingly similar to Complainant’s TD mark. Respondent incorporates the mark in its entirety and adds the generic, descriptive terms “benefit center” to the mark.
Respondent lacks rights or legitimate interest in the <tdbenefitcenter.com> domain name. Complainant has not authorized Respondent to use the TD mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. 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 for the disputed domain name lists the registrant as “shi lei” and there is no other evidence to suggest that Respondent was authorized to use the TD mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that offers links that compete with Complainant’s services. Use of a disputed domain name to offer links and ads that compete with a complainant’s business and services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015).
Respondent registered and used the <tdbenefitcenter.com> domain name in bad faith under Policy ¶ 4(b)(ii). Respondent has been ordered to transfer domain names in previous UDRP decisions. Prior adverse UDRP cases is evidence of a Respondent’s pattern of bad faith per Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions).
Respondent attempts to create confusion among internet users that Respondent is affiliated with Complainant by using its TD mark in its <tdbenefitcenter.com> domain name. Use of a disputed domain name to create confusion among internet users is evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain).
Respondent had actual knowledge of Complainant’s rights in the TD mark prior to registration through Complainant’s long-standing use and fame of the mark. Therefore, Respondent registered and used the <tdbenefitcenter.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbenefitcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr., Panelist
Dated: April 24, 2020
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