The Toronto-Dominion Bank v. 12976641 Canada Inc. / Dean A. Palmer
Claim Number: FA2110001969011
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by Jason Hayden of CSC Digital Brand Services AB, Sweden. Respondent is 12976641 Canada Inc. / Dean A. Palmer (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadatrust.finance>, registered with Name.com, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2021; the Forum received payment on October 14, 2021.
On October 14, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the <tdcanadatrust.finance> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 October 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2021 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@tdcanadatrust.finance. Also on October 18, 2021, 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.
A deficient Response was received on November 10, 2021.
On November 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 timely, formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: DEFICIENT RESPONSE
The Response was submitted after the deadline to respond. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5. However, the Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
The Panel will consider the Response in the instant case. To the extent that the Response does not address Complainant’s allegations or dispute the facts set forth in the Complaint, 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”).
A. Complainant
Complainant states that it the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Commonly known as TD and operating as TD Bank Group, the bank was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant has over 86,000 employees and over 25 million clients worldwide. In Canada, the retail bank operates as TD Canada Trust and serves more than 13 million customers at over 1,100 branches. In the United States, the company operates as TD Bank (the initials are used officially for all U.S. operations). The U.S. subsidiary was created through the Complainant’s acquisition of Banknorth and Commerce Bank, and for many years was known as TD Banknorth. TD Bank now serves more than 9 million customers with a network of more than 1,300 branches, primarily located in the eastern United States. Complainant also ranks among the world’s leading online financial services firms. Complainant is ranked number 46 on the 2019 Forbes Global 2000 listing. Brand Finance® Brand Directory, which ranks the world’s most valuable brands, ranks TD as number 113 on its 2019 Global 500 list. Complainant is one of the few banks in the world rated AAA by Moody’s. BrandZ also ranked Complainant as number 72 on its list of the 2019 Top 100 Most Valuable Global Brands. Furthermore, Complainant has been consistently named as one of Canada’s Top 100 Employers and one of Great Place to Work Institute’s Best Workplaces in Canada. Complainant has rights in the TD and CANADA TRUST marks through its registrations of the marks in Canada in, respectively, 1992 and 1993. The marks are well known.
Complainant alleges that the disputed domain name is identical or confusingly similar to its marks as it incorporates the marks in their entireties and merely adds the “.finance” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its TD or CANADA TRUST marks. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain name. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent inactively holds the disputed domain name. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TD and CANADA TRUST marks. Respondent failed to respond to Complainant’s cease-and-desist letters. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent submitted a tardy response via email which does not contain any discernible arguments that would rebut the Complaint under the provisions of the UDRP. Respondent appears to allege that it registered the disputed domain name for the purpose of forming a new company/division of Complainant’s company with that title, but does not explain why it would be authorized to do so. Respondent concedes its plan has fallen through. Respondent states that it did not violate any copyrights and that it has not used the disputed domain name to tarnish Complainant’s reputation; instead, it actually promoted Complainant’s reputation.
Complainant owns the marks TD and CANADA TRUST uses them to provide banking and financial services. The marks are well known.
Complainant’s rights in its marks date back to, respectively, 1992 and 1993.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name is not being used.
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.
The disputed domain name incorporates Complainant’s TD and CANADA TRUST marks in their entireties, merely adding the “.finance” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), adding a gTLD is generally insufficient in differentiating a disputed domain name from the marks or combination of marks it incorporates. See McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Forum Oct. 29, 2008) (finding confusing similarity where Respondent combined Complainant’s GLENCOE and MCGRAW-HILL marks to form the <glencoemcgrawhill.com> domain name); see also 3M Co. v. Silva, FA 1429349 (NAF March 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks); see also Robert Downey Jr. v. Shashank Agarwal, FA 1581490 (Forum Nov. 10, 2014) (finding that the “.actor” addition to Complainant’s ROBERT DOWNEY JR. mark enhances the confusion in light of the fact that Complainant is a notable actor.). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has not authorized or licensed Respondent to use its TD or CANADA TRUST marks in any way. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), relevant WHOIS Information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence affirming otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its marks in the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS of record, along with the response, identify the registrant of the disputed domain name as “Dean Palmer,” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its marks in the disputed domain name. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain name is not being used. Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests, in the sense of the Policy, in the disputed domain name.
Respondent alleges that its registration of the disputed domain name has promoted Complainant’s reputation. But the disputed domain name has never been used, thus it cannot have promoted Complainant’s reputation.
Indeed, as already noted, the disputed domain name is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademarks are well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
The response to the Complainant does not rebut any of Complainant’s relevant allegations. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: in its response, Respondent admits that it knew of Complainant and its business. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain names and that this constitutes bad faith under 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 <tdcanadatrust.finance> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 15, 2021
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