national arbitration forum

 

DECISION

 

The Toronto-Dominion Bank v. Anthony Robinson

Claim Number: FA1209001465007

PARTIES

Complainant is The Toronto-Dominion Bank (“Complainant”), Canada.  Respondent is Anthony Robinson (“Respondent”), Kentucky, U.S.A.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tdcatrust-online.com>, registered with 1 API GMBH.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2012; the National Arbitration Forum received payment on September 28, 2012.

 

On October 8, 2012, 1 API GMBH confirmed by e-mail to the National Arbitration Forum that the <tdcatrust-online.com> domain name is registered with 1 API GMBH and that Respondent is the current registrant of the name.  1 API GMBH has verified that Respondent is bound by the 1 API GMBH 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 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2012 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@tdcatrust-online.com.  Also on October 9, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <tdcatrust-online.com> domain name is confusingly similar to Complainant’s TD and CANADA TRUST marks.

 

2.    Respondent does not have any rights or legitimate interests in the  <tdcatrust-online.com> domain name.

 

3.    Respondent registered and used the <tdcatrust-online.com> domain name in bad faith.

 

B.  Respondent failed to submit a timely Response in this proceeding.

 

FINDINGS

Complainant, the Toronto-Dominion Bank, commonly known as TD, is the second largest bank in Canada and the sixth largest bank in North America.  The bank was created in 1955 and currently has over 79,000 employees and over 19 million clients worldwide.  Complainant owns several trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for its CANADA TRUST (Reg. No. TMA409300 registered March 12, 1993) and TD marks (Reg. No. TMA644911 registered July 26, 2005).  Complainant also owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TD mark (Reg. No. 1,640,009 registered June 25, 1991).

 

Respondent registered the <tdcatrust-online.com> domain name on November 25, 2011, and fails to make an active use of the domain name.

 

DISCUSSION

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(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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registration of its TD and CANADA TRUST marks with the CIPO and USPTO are sufficient to establish its rights in the under Policy ¶ 4(a)(i).  See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).

 

Respondent’s <tdcatrust-online.com> domain name is confusingly similar to Complainant’s TD and CANADA TRUST marks.  First, the addition of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Respondent’s domain name includes the use of a hyphen between Complainant’s TD mark and the abbreviation “ca trust” for the CANADA TRUST mark, and the descriptive term “online”.  The use of a hyphen and the addition of a descriptive term is irrelevant in a Policy ¶ 4(a)(i) analysis.  See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark).  Therefore, the Panel finds that Respondent’s <tdcatrust-online.com> domain name is confusingly similar to Complainant’s TD and CANADA TRUST marks.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that it is commonly known as TD BANK or TD, whereas Respondent has not been commonly known by the disputed domain name.  The WHOIS information for the <tdcatrust-online.com> domain name identifies “Anthony Robinson” as the registrant.  Complainant states that it has not given Respondent permission to use Complainant’s marks in any way.  Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under 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).

 

Complainant provides evidence that Respondent has failed to make an active use of the disputed domain name.  The Panel finds that Respondent’s failure to make an active use of the domain name demonstrates that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [failure to make an active use] of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”)

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel notes that the examples of bad faith set forth in Policy ¶ 4(b) are not meant to be exhaustive.  See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).

 

Complainant argues that Respondent has failed to make an active use of the disputed domain name, and that such non-use is evidence that Respondent has no legitimate use for the domain name in question.  Complainant asserts that there is no conceivable use of the disputed domain name for a website by Respondent that would be legitimate, and that as such Respondent registered and has used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  The Panel agrees and finds that the failure to use the disputed domain name is evidence that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).

 

Complainant also contends that Respondent, at the time that it registered the <tdcatrust-online.com> domain name on November 25, 2011, knew or should have known of the existence of the Complainant’s TD and CANADA TRUST trademarks.  The Panel agrees and finds that Respondent had actual knowledge Complainant and its rights in the mark prior to registering the disputed domain name, which constitutes bad faith under Policy ¶ 4(a)(iii).  See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Associated Materials, Inc v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that the respondent’s actual knowledge of the complainant’s rights in the ULTRAGUARD mark, inferred from the fact that the respondent was a distributor of the complainant, along with the respondent being on notice of its own lack of rights evidenced that the domain name was registered in bad faith).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tdcatrust-online.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  November 16, 2012

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page