national arbitration forum

 

DECISION

 

The Toronto-Dominion Bank v. N/A / Ailesh  Mahaisuria

Claim Number: FA1210001465138

 

PARTIES

Complainant is The Toronto-Dominion Bank (“Complainant”), Canada.  Respondent is N/A / Ailesh  Mahaisuria (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tdeasylineaccess.com>, registered with NetEarth One, Inc d/b/a NetEarth.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2012; the National Arbitration Forum received payment on October 1, 2012.

 

On October 1, 2012, NetEarth One, Inc d/b/a NetEarth confirmed by e-mail to the National Arbitration Forum that the <tdeasylineaccess.com> domain name is registered with NetEarth One, Inc d/b/a NetEarth and that Respondent is the current registrant of the name.  NetEarth One, Inc d/b/a NetEarth has verified that Respondent is bound by the NetEarth One, Inc d/b/a NetEarth 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 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@tdeasylineaccess.com.  Also on October 1, 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 October 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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

1.    Complainant is the owner of hundreds of trademark registrations with the Canadian Intellectual Property Office (“CIPO”) and the United States Patent and Trademark Office (“USPTO”) for the TD and related marks:

USPTO

TD                         Reg. No. 1,649,009              registered June 25, 1991;

TD                         Reg. No. 3,037,995              registered January 3, 2006;

TD                         Reg. No. 3,041,792              registered January 10, 2006;

TD BANK                        Reg. No. 3,788,055              registered May 11, 2010;

 

CIPO

TD BANK                        Reg. No. TMA549,396        registered August 7, 2001; &                     

TD                         Reg. No. TMA644,911        registered July 26, 2005.

EASYLINE          Reg. No. TMA424,807.

2.    Complainant is the second largest bank in Canada by market capitalization and deposits and the sixth largest bank in North America.

3.    Complainant is commonly known as TD and operates as TD Bank Group.

4.    Complainant operates numerous websites, chief among them <tdbank.com> and <td.com>.

5.    The disputed domain name is confusingly similar to Complainant’s mark as the domain name begins with the TD mark, followed by Complainant’s other mark EASYLINE, the descriptive term “access” and the generic top-level domain (“gTLD”).

6.    Respondent has not been commonly known by the disputed domain name.

7.    Respondent is not sponsored by or affiliated with Complainant in any way.

8.    Complainant has not given Respondent permission to use Complainant’s mark in a domain name.

9.    Respondent has failed to make an active use of the disputed domain names, which indicates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).

10. Respondent registered the disputed domain name on January 18, 2012, which is significantly after Complainant’s registration of <td.com> and <tdcanadatrust.com>.

11. Respondent’s failure to make an active use of the disputed domain name is evidence that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

12. Complainant’s TD and EASYLINE brands are known internationally. By registering “Tdeasylineaccess,” Respondent has demonstrated a thorough knowledge of Complainant’s brand and business and it is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant’s mark at the time the domain name was registered.

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

Complainant holds trademark rights for the TD and EASYLINE marks. Respondent’s domain name is confusingly similar to Complainant’s marks.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tdeasylineaccess.com> domain name, and that Respondent registered and uses the domain names in bad faith.

 

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

Complainant alleges that it is the owner of hundreds of trademark registrations with the CIPO and the USPTO for the TD and related marks.  For example:

USPTO

TD                               Reg. No. 1,649,009              registered June 25, 1991;

TD                               Reg. No. 3,037,995              registered January 3, 2006;

TD                               Reg. No. 3,041,792              registered January 10, 2006;

TD BANK                  Reg. No. 3,788,055              registered May 11, 2010;

 

CIPO

TD BANK                  Reg. No. TMA549,396        registered August 7, 2001; &                     

TD                               Reg. No. TMA644,911        registered July 26, 2005.

EASYLINE                Reg. No. TMA424,807.

 

These USPTO and CIPO trademark registrations prove that Complainant owns rights in the marks for the purposes of Policy ¶ 4(a)(i). See Seiko Epson Corp. v. Citizens News Network, FA 1389991 (Nat. Arb. Forum June 30, 2011) (finding that complainant had established Policy ¶ 4(a)(i) rights in its mark through its trademark registrations with the USPTO and CIPO).

 

Complainant argues that the <tdeasylineaccess.com> domain name is confusingly similar to Complainant’s marks.   Complainant asserts that the disputed domain name begins with its TD trademark, followed by Complainant’s other mark EASYLINE, the generic term “access” and the gTLD “.com.” The combining of two of Complainant’s marks and adding a descriptive term and a gTLD do not differentiate the disputed domain name from the marks under Policy ¶ 4(a)(i). See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also 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 Panel therefore determines that Respondent’s <tdeasylineaccess.com> domain name is confusingly similar to Complainant’s TD mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant contends that Respondent has not been commonly known by the disputed domain name. The WHOIS information for the disputed domain name identifies the registrant as “N/A / Ailesh  Mahaisuria,” which the Panel finds bears no similarity to the disputed domain name. Complainant also asserts that Respondent is not sponsored by or affiliated with Complainant in any way and has not been given permission by Complainant to use Complainant’s mark in a domain name. Based on these allegations and the supporting evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Complainant alleges that Respondent has failed to make an active use of the disputed domain name, which indicates a lack of rights and legitimate interests. According to the screenshot submitted by Complainant, the disputed domain name resolves to a website with only an error message and no active content. The disputed domain name and resolving website therefore do not evidence 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 Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).”).

 

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

 

Registration and Use in Bad Faith

Complainant alleges that Respondent registered the disputed domain name and has failed to make an active use of the disputed domain name. Complainant asserts, and the Panel agrees, that lack of legitimate noncommercial or fair use of the domain name is evidence that Respondent registered and uses the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).

 

Complainant contends that its TD and EASYLINE marks are known internationally and that it has sold and marketed services using these marks since 1969. Complainant asserts that by registration of the disputed domain name, Respondent demonstrated knowledge of the TD and EASYLINE brands and Complainant’s business. Complainant argues, therefore, that it is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant’s mark at the time the disputed domain name was registered. Complainant also asserts that Respondent knew at the time of the disputed domain name registration, that Complainant had registered trademarks for the TD mark. Based upon this record, the Panel concludes that Respondent had actual knowledge of Complainant’s mark prior to registering the domain name. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); see also Univision Comm’cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).

 

The Panel finds 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 <tdeasylineaccess.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  November 9, 2012

 

 

 

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