The Toronto-Dominion Bank v. Andrew Leftwich
Claim Number: FA1005001322719
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by Peter
W. Choe, of Gowling Lafleur Henderson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <tdinsurancerates.com> and <tdinsurancequotes.com>, registered with GoDaddy.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2010.
On May 4, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tdinsurancerates.com> and <tdinsurancequotes.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2010 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@tdinsurancerates.com and postmaster@tdinsurancequotes.com. Also on May 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
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" through submission of a Written Notice, as defined in Rule 1. 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 <tdinsurancerates.com> and <tdinsurancequotes.com> domain names are confusingly similar to Complainant’s TD INSURANCE mark.
2. Respondent does not have any rights or legitimate interests in the <tdinsurancerates.com> and <tdinsurancequotes.com> domain names.
3. Respondent registered and used the <tdinsurancerates.com> and <tdinsurancequotes.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Toronto-Dominion Bank, has rights in its TD INSURANCE mark through its trademark registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA516808 issued September 22, 1999) and through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,665,932 issued August 11, 2009). Complainant uses the mark in connection with providing insurance related credit protection and life, health, travel, home, and auto insurance. Complainant operates its official website resolving from the <tdinsurance.com> domain name to offer its services online in relation to the mark.
Respondent, Andrew Leftwich, registered the <tdinsurancerates.com> and <tdinsurancequotes.com> domain names on February 17, 2010. The <tdinsurancerates.com> domain name resolves to a website which offers a comparison of insurance companies that compete with Complainant. The <tdinsurancequotes.com> domain name resolves to a website which displays a list of links to third-party websites including competitors of Complainant.
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.”).
Respondent has sent communication to the Forum regarding these proceedings that has been labeled as “Other Correspondence.” The Forum has determined that this correspondence is not considered a Response because it did not meet the requirements of ICANN Rule #5. The Other Correspondence does not specifically address any of the UDRP Policy Paragraph 4(a) elements. The Panel has chosen not to consider the statements made by Respondent in consideration of its decision.
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.
Respondent, Andrew Leftwich, registered the <tdinsurancerates.com> and <tdinsurancequotes.com> domain names on February 17, 2010. Complainant asserts it has established rights in its TD INSURANCE mark through its trademark registration with the CIPO (Reg. No. TMA516808 issued September 22, 1999) and the USPTO (Reg. No. 3,665,932 issued August 11, 2009). The Panel finds Complaint’s multiple registrations of its TD INSURANCE mark sufficiently meet the elements of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <tdinsurancerates.com> and <tdinsurancequotes.com>
domain names are confusingly similar to Complainant’s mark. Complainant argues that Respondent’s disputed
domain names use the mark in its entirety, remove the space between terms of
the mark, add a descriptive term (“rates” or “quotes”), and add the generic
top-level domain (“gTLD”) “.com.” The
Panel finds these alterations are insufficient to distinguish Respondent’s
disputed domain names from Complainant’s mark.
Therefore, the Panel finds Respondent’s <tdinsurancerates.com> and <tdinsurancequotes.com> domain
names are confusingly similar to Complainant’s TD INSURANCE mark under Policy ¶ 4(a)(i). See
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(i) in establishing that Respondent’s disputed domain names are confusingly similar to Complainant’s established mark.
Complainant has established a prima facie case that Respondent has no rights or legitimate
interests in the disputed domain names, thus shifting the burden to the
Respondent to provide evidence to the contrary, pursuant to Policy ¶ 4(a)(ii). The Panel may choose to view the lack of a
response to these proceedings by Respondent as an admission of its lack of
rights or legitimate interests in the disputed domain names. However, the Panel may choose, in its
discretion, to review the evidence before it in determining Complainant’s
allegation, pursuant to Policy ¶ 4(c). See Document
Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6,
2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant
prove the presence of this element (along with the other two), once a
Complainant makes out a prima facie
showing, the burden of production on this factor shifts to the Respondent to
rebut the showing by providing concrete evidence that it has rights to or
legitimate interests in the Domain Name.”); see
also F. Hoffmann-La Roche AG v. Di
Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of
paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts
from the Complainant to the Respondent once the Complainant has made out a
prima facie case that the Respondent has no rights or interests in the domain
names.”); see also Am. Express Co. v. Fang Suhendro, FA
129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”); see also Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004)
(“Respondent’s failure to respond to the Complaint functions as an implicit
admission that [Respondent] lacks rights and legitimate interests in the
disputed domain name. It also
allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant asserts that it has not authorized or otherwise granted permission to Respondent to use its TD INSURANCE mark. Further, Complainant alleges that Respondent is not commonly known by the disputed domain names. The WHOIS information for the disputed domain names lists the registrant as “Andrew Leftwich,” which does not provide evidence of Respondent being commonly known by either disputed domain name. The Panel finds Respondent is not commonly known by either of the <tdinsurancerates.com> and <tdinsurancequotes.com> domain names 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 Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s <tdinsurancerates.com> domain name resolves to a website which offers a comparison of insurance companies that compete with Complainant. The Panel finds this use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
Respondent’s <tdinsurancequotes.com> domain name resolves to a website which displays a list of links to third-party websites including competitors of Complainant. The Panel finds this use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(ii) in establishing that Respondent lacks rights or legitimate interests in the disputed domain names.
Complainant submits evidence to the Panel of Respondent’s offer to sell the <tdinsurancerates.com> domain name for $75,000 USD to a third party. The Panel presumes that this price exceeds Respondent’s out-of-pocket costs for registration of the disputed domain name. The Panel finds Respondent’s offer to sell constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”).
Complainant asserts that Respondent’s <tdinsurancerates.com> domain name disrupts
Complainant’s business by offering a comparison of Complainant’s competitors by
Respondent on the website resolving from the disputed domain name. The Panel finds that Respondent’s <tdinsurancerates.com> domain name
creates a disruption of Complainant’s business and diverts Internet users
seeking Complainant’s services to competitors of Complainant, which is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See
David Hall Rare Coins v.
Further, Complainant asserts that Respondent’s <tdinsurancequotes.com> domain name
disrupts Complainant’s business by displaying a list of links to third-party
websites including competitors of Complainant on the website resolving from the
disputed domain name. The Panel finds
that the diversion of Internet users seeking Complainant’s services by Respondent’s
<tdinsurancequotes.com>
domain name to competitors of Complainant creates a disruption of Complainant’s
business, which is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a
confusingly similar domain name to attract Internet users to a directory
website containing commercial links to the websites of a complainant’s
competitors represents bad faith registration and use under Policy ¶ 4(b)(iii));
see also Am. Online, Inc. v. Tapia,
FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet
traffic that seeks out the <aol.tv>
domain name to a competitor’s news site.
The Panel strongly finds that appropriating Complainant’s mark to refer
customers seeking Complainant to Complainant’s competitors is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s <tdinsurancerates.com> and <tdinsurancequotes.com>
domain names resolve to websites that display comparisons with Complainant’s
competitors and links to third-party websites including competitors of
Complainant. The Panel finds that
Respondent profits from the websites resolving from the disputed domain names,
and that such commercial gain from confusingly similar disputed domain names
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Lastly, the website resolving from Respondent’s <tdinsurancerates.com> domain name
displays a disclaimer that the site is not affiliated with Complainant. The Panel finds that this disclaimer is
insufficient to negate a finding of bad faith registration and use by Respondent
of the <tdinsurancerates.com> domain
name under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v.
Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a
disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone
v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid
a finding of bad faith. First, the
disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel
initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a
violation of Complainant’s rights.”).
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(iii) in establishing that Respondent registered and used the disputed domain names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdinsurancerates.com> and <tdinsurancequotes.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 10, 2010
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