The Toronto-Dominion Bank v. DomCollect AG / Andre Schneider
Claim Number: FA1209001465037
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is DomCollect AG / Andre Schneider (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <td-canada.com>, registered with 1 & 1 INTERNET AG.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
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 4, 2012, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <td-canada.com> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@td-canada.com. Also on October 5, 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 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 issues 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
i. Respondent has not been commonly known by the disputed domain name where the WHOIS information identifies “DomCollect AG / Andre Schneider” as the registrant, Respondent has not been sponsored by or affiliated with Complainant, and Complainant has not given Respondent permission to use Complainant’s marks in any way.
ii. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business, for which Respondent presumably receives pay-per-click fees.
i. Respondent is using the disputed domain name to redirect Internet users to a website featuring advertising links to third-party websites and presumably receiving pay-per-click fees in the process.
ii. Respondent, at the time that it registered the <td-canada.com> domain name on February 25, 2012, knew or should have known, about the existence of Complainant’s rights in the TD and TD BANK marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant, The Toronto-Dominion Bank, publicly known as TD, claims that it is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant also notes that it has over 79,000 employees and over 19 million clients worldwide. Complainant contends, and provides evidence to show, that it owns several trademark registrations with the CIPO for the TD BANK (Reg. No. TMA549396 registered Aug. 7, 2001) and TD marks (Reg. No. TMA644911 registered July 26, 2005). Complainant also notes that it owns trademark registrations with the USPTO for the TD BANK (Reg. No. 3,788,055 registered May 11, 2010) and TD marks (Reg. No. 1,649,009 registered June 25, 1991). Id. Although Respondent appears to reside in Switzerland, Policy ¶ 4(a)(i) and UDRP precedent require only that Complainant establish rights in “some” jurisdiction for Policy ¶ 4(a)(i) rights to attach to its mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s trademark registrations with the CIPO and USPTO are sufficient for Complainant to establish its rights in the TD and TD BANK marks under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant also argues that Respondent’s <td-canada.com> domain name is confusingly similar to Complainant’s TD marks as merely adding the geographic term “canada” does not negate the use of the TD mark within the domain name and the confusion that it causes. Further, Complainant asserts that the addition of the gTLD “.com” has been found to be irrelevant to a Policy ¶ 4(a)(i) analysis. The Panel notes that the disputed domain name also includes a hyphen separating the TD mark and the geographic term “canada.” The Panel agrees with Complainant and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 contends that Respondent has not been commonly known by the disputed domain name where the WHOIS information identifies “DomCollect AG / Andre Schneider” as the registrant, Respondent has not been sponsored by or affiliated with Complainant, and Complainant has not given Respondent permission to use Complainant’s marks in any way. The Panel agrees and find 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 further argues that Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business, for which Respondent presumably receives pay-per-click fees. Included in Complainant’s exhibits is a screenshot of the revolving website. The links noted by Complainant as being competing are contained under headings such as “PNC Bank Virtual Wallet,” “TD Ameritrade Support,” and “Mobile ATM Vehicles.” The resolving website also features unrelated and non-competitive links to companies such as, “T-Mobile® Official Site,” and “Banking Opening,” which appears to be an employment hosting website. The Panel finds that Respondent’s use of the disputed domain name, does not constitute 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). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant has proven this element.
Complainant argues that Respondent is using the disputed domain name to redirect Internet users to a website featuring advertising links to third-party websites and presumably receiving pay-per-click fees in the process. As noted above under the Policy ¶ 4(a)(ii) section, such links include both competing and non-competitive links to various companies. The Panel presumes, based upon the facts in evidence, that Respondent receives click-through fees from its use of the disputed domain name. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Lastly, Complainant argues that Respondent, at the time that it registered the <td-canada.com> domain name on February 25, 2012, knew or should have known, about the existence of Complainant’s rights in the TD and TD BANK marks. Complainant notes that its long standing trademark registrations and use of the TD and TD BANK marks should have given Respondent ample notice of Complainant’s rights in the marks. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <td-canada.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 7, 2012
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