The Toronto-Dominion Bank v. Victoria Morozova / na
Claim Number: FA1112001418097
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Victoria Morozova / na (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdnewcrest.com>, registered with Domus Enterprises Llc d/b/a Domus.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2011; the National Arbitration Forum received payment on December 1, 2011.
On December 6, 2011, Domus Enterprises Llc d/b/a Domus confirmed by e-mail to the National Arbitration Forum that the <tdnewcrest.com> domain name is registered with Domus Enterprises Llc d/b/a Domus and that Respondent is the current registrant of the names. Domus Enterprises Llc d/b/a Domus has verified that Respondent is bound by the Domus Enterprises Llc d/b/a Domus 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 December 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2011 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@tdnewcrest.com. Also on December 7, 2011, 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 January 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tdnewcrest.com> domain name is confusingly similar to Complainant’s TD and NEWCREST marks.
2. Respondent does not have any rights or legitimate interests in the <tdnewcrest.com> domain name.
3. Respondent registered and used the <tdnewcrest.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Toronto-Dominion Bank, is a financial institution operating in the banking industry. Complainant holds trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for the TD (Reg. No. 1,649,009 registered June 25, 1991) and NEWCREST marks (Reg. No. TMA477028 registered May 30, 1997).
Respondent, Victoria Morozova / na, registered the <tdnewcrest.com> domain name on January 21, 2011. The disputed domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
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 presents its trademark registrations with the CIPO to support its claim of rights in the TD (Reg. No. 1,649,009 registered June 25, 1991) and NEWCREST marks (Reg. No. TMA477028 registered May 30, 1997) under Policy ¶ 4(a)(i). Registration of a mark with a federal trademark authority has previously been held to confer such rights in the mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel finds that Complainant’s trademark registrations with the CIPO are sufficient to establish rights in the mark under Policy ¶ 4(a)(i), despite the fact that Complainant has not presented evidence of registration in the country in which Respondent operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues that the disputed domain name is confusingly similar to its TD and NEWCREST marks for the purposes of Policy ¶ 4(a)(i). When comparing the disputed domain name to Complainant’s marks, the relevant comparison to be made is between only the second-level portion of the disputed domain name and Complainant’s marks. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The remaining portion of the disputed domain name consists of a combination of Complainant’s TD and NEWCREST marks. Previous panels have refused to recognize the combination of a complainant’s marks as creating a distinct, non-confusing domain name. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”). In light of these findings, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s marks for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been satisfied.
Respondent in this case has failed to produce a Response, which some panels have held to demonstrate a lack of rights or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). This Panel, however, will continue to weigh the reminder of the evidence in the record in order to determine whether Respondent does in fact have such rights or legitimate interests. From the outset, Complainant carries the burden of presenting a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”). The Panel finds Complainant to have satisfied this burden.
Complainant alleges that Respondent is not commonly known by the <tdnewcrest.com> domain name within the meaning of Policy ¶ 4(c)(ii). Complainant claims to have no pre-existing relationship with Respondent, and to have never authorized Respondent’s use of its marks in the disputed domain name. The WHOIS information identifies the domain name registrant as “Victoria Morozova / na.” The Panel finds no similarity between “Victoria Morozova / na” and <tdnewcrest.com>, providing evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Additionally, Respondent’s failure to produce a Response results in an absence of any evidence suggesting that Respondent is commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). After taking these findings into account, the Panel must conclude that Respondent is not commonly known by the <tdnewcrest.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further alleges that Respondent lacks rights or legitimate interests in the <tdnewcrest.com> domain name because Respondent’s use of the disputed domain name can be considered 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). Respondent uses the disputed domain name to resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Past panels have refused to recognize this type of use as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)). The Panel holds that Respondent’s use of the disputed domain name can be considered 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).
Complainant also points out that Respondent’s offer to sell the disputed domain name is grounds for a finding of Respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). Respondent’s website indicates that its owners are “accepting offers from interested parties willing to obtain ownership rights over the domain name.” The Panel finds that evidence of such an offer further demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
The Panel finds that the elements of Policy ¶ 4(a)(ii) have been satisfied.
Respondent’s solicitation of a purchaser for the disputed domain name suggests bad faith registration and use under Policy ¶ 4(b)(i). Previous panels have agreed that a respondent’s offer to sell a disputed domain name to the general public is grounds for a finding of bad faith under 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel opines that Respondent’s offer to sell the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(i).
Previous panels have found bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii) when a disputed domain name resolves to a parked website featuring links to products or services that compete with the complainant’s business. 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 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).”). Respondent in the instant case operates a similar website, prompting the Panel to conclude that Respondent’s registration and use of the disputed domain name constitute bad faith disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s provision of links to competing services on its website housed at the disputed domain name exhibits bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Complainant assumes, as does the Panel, that Respondent profits from the operation of its website. Click-through revenues are the most likely means through which Respondent is able to realize a commercial gain through the operation of its website. Respondent’s operation at a confusingly similar domain name evidences an intent to create confustion as to Complainant’s endorsement of or affiliation with Respondent’s website. Respondent hopes to use this confusion to draw greater traffic to its site, in turn generating a higher click-through rate and higher click-through revenues. When confronted with this type of business model, past panels have found bad faith attraction for commercial gain as Respondent realizes a commercial gain from the confusion it creates. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel holds that Respondent’s registration and use of the disputed domain name constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the TD and NEWCREST marks. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Complainant has proven that Respondent has actual knowledge of Complainant's mark and, therefore, that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdnewcrest.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 7, 2012
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