The Toronto-Dominion Bank v. Zaid Javed
Claim Number: FA2206001998664
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Zaid Javed (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ustdbanks.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2022; the Forum received payment on June 1, 2022.
On June 2, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ustdbanks.com> 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 June 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@ustdbanks.com. Also on June 8, 2022, 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 timely Response was received and determined to be complete on June 28, 2022.
On July 4, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed DR. Beatrice Onica Jarka 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
By the Complaint, Complainant contends that:
- It is a banking and financial services company.
- It has rights in the TD and TD BANK marks through its registration with various trademark agencies, including the USPTO and CIPO (e.g. USPTO TD Reg. 1,649,009, registered Jun. 25, 1991; CIPO TD BANK Reg. TMA549,396, registered Aug. 7, 2001).
- Respondent’s <ustdbanks.com> domain name is identical of confusingly similar to Complainant’s marks as it incorporates the marks in its entirety and adds the geographic term “us”, the letter “s”, and the “.com” generic top-level domain (“gTLD”).
- Respondent lacks rights and legitimate interests 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 and TD BANK marks in the disputed domain name.
- Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair uses, but instead inactively holds the disputed domain name and offers it for sale.
- Respondent registered and uses the disputed domain name in bad faith. Respondent offers the disputed domain name for sale. Respondent inactively holds the disputed domain name for sale. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the marks. Respondent inactively holds the disputed domain name. Respondent hid its identity behind a WHOIS privacy service.
B. Respondent
By the Respondent submitted,
- the Respondent attaches a screenshot related to the correspondence between Complainant and Respondent negotiating an offer to sell the domain name.
- Respondent states Complainant and Respondent can resolve this on their own.
The Panel finds that the <ustdbanks.com> disputed domain name was registered in bad faith, without any rights or legitimate interest by the Respondent on Apr. 4, 2022 and it is identical or confusingly similar to Complainant’s mark. In addition, The Panel finds that also the use of the disputed domain name, after registration has been made in bad faith by the Respondent whose only illicit purpose was to sell the domain name registration to the Complainant who is the owner of the trademark or service mark, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
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.
Complainant claims rights in the TD and TD BANK marks through its registrations of the marks with the USPTO and CIPO (e.g. USPTO TD Reg. 1,649,009, registered Jun. 25, 1991; CIPO TD BANK Reg. TMA549,396, registered Aug. 7, 2001). See Compl. Ex. A. Registration with the USPTO AND CIPO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See THE TORONTO-DOMINION BANK v. Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho, FA 1724017 (Forum May 17, 2017) (finding registrations with the USPTO and CIPO are satisfactory demonstrations of Policy ¶ 4(a)(i) rights). The Panel agrees and consequently finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ustdbanks.com> domain name is identical or confusingly similar to Complainant’s TD BANK mark as it incorporates the mark in its entirety and adds the geographic acronym to the front of the mark and an “s” to the end, along with the “.com” gTLD. Adding a geographic term and an extra “s”, along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”).
In his Response, the Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Therefore, the Panel finds that disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) and the Complainant has satisfied Policy ¶ 4(a)(i).
Under the Policy ¶ 4(a)(ii), the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).In making this showing, the Complainant argues that Respondent is not commonly known by the <ustdbanks.com> domain name, nor has Complainant authorized or licensed Respondent to use its TD BANK mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS Information demonstrates that a Respondent is not commonly known by a disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS of record identifies Respondent as “Zaid Javed” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its TD mark in the disputed domain name as per Registrar Verification Email.
Therefore, if the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Further in its prima facie showing, the Complainant argues that Respondent does not use the <ustdbanks.com> domain name for any bona fide offerings of goods or services, nor legitimate noncommercial or fair uses. Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name’s resolving website and/or holding it out for sale is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). In this case the disputed domain name resolves to a pages with no content but only with an offer to sell it. See Compl. Ex. F.
In his Response, the Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Therefore, the Panel finds that Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and consequently that the Complainant has satisfied Policy ¶ 4(a)(ii).
Under the Policy paragraph 4(b), bad faith may be evidenced by a number of circumstances including, but not limited to, the registration or you acquiring of 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, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. This Panel considers the circumstances and evidences presented in the Complaint as demonstrative of the bad faith of the Respondent in registering and using the disputed domain name, as follows:
First, Complainant argues that Respondent registered and uses the <ustdbanks.com> domain name in bad faith by offering it for sale. Under Policy ¶ 4(b)(i), past panels have found bad faith registration and use where a Respondent offers a domain name for sale and registered the disputed domain name with the intent to do so. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant’s registered DINERS CLUB mark). The Panel notes as relevant in this respect, the Complainant’s screenshots of the disputed domain name’s resolving website, which features no content but an offer to sell the domain name. See Compl. Ex. F.
Second, Complainant argues that Respondent registered and uses the <ustdbanks.com> domain name in bad faith by inactively holding its resolving website. Inactively holding a disputed domain name’s resolving website is generally considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel considers relevant in this respect that the Complainant’s screenshots of the disputed domain name’s resolving website, which show the disputed domain name resolving to a page with no content except an offer to sell.
Third, the Complainant argues that Respondent registered the <ustdbanks.com> domain name with bad faith actual knowledge of Complainant’s rights in the TD marks. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). The Panel consider relevant in this respect, the fact that the Complainant’s TD marks are wholly incorporated into the domain name.
Fourth, the Complainant argues that Respondent hid its identity behind a WHOIS privacy service. Such actions are generally considered evidence that contributes to an independent finding of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The Panel notes that Respondent’s identity was initially hidden behind a privacy shield according to WHOIS Information.
In his Response, the Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Considering the all the circumstances above asserted by the Complainant, documented with evidences, this Panel finds that the Complainant established bad faith registration and use of the disputed domain name 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 <ustdbanks.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka - Panelist
Dated: July 18, 2022
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