national arbitration forum

 

DECISION

 

The Toronto-Dominion Bank v. Peter Korbel

Claim Number: FA1304001493796

 

PARTIES

Complainant is The Toronto-Dominion Bank (“Complainant”), Canada.  Respondent is Peter Korbel (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tdbank.info>, registered with Click Registrar, Inc. d/b/a publicdomainregistry.com.

 

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2013; the National Arbitration Forum received payment on April 9, 2013.

 

On April 10, 2013, Click Registrar, Inc. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <tdbank.info> domain name is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the name.  Click Registrar, Inc. d/b/a publicdomainregistry.com has verified that Respondent is bound by the Click Registrar, Inc. d/b/a publicdomainregistry.com 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 April 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2013 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@tdbank.info.  Also on April 10, 2013, 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 May 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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

Complainant is the owner of the TD BANK mark.

a.    The TD BANK mark is used in connection with the second-largest bank in Canada and sixth-largest bank in North America.

b.    Complainant is the owner of registrations for the TD BANK mark (e.g., Reg. No. TMA549396 registered Aug. 7, 2001) with the Canadian Intellectual Property Office (“CIPO”).

c.    Complainant is the owner of United States Patent and Trademark Office (“USPTO”) registration for the TD BANK mark (Reg. No. 3,788,055 registered May 11, 2010).

d.    Complainant is the owner of registrations with the Indian Controller-General of Patents, Designs, and Trademarks (“CGPDT”) for the TD BANK mark (e.g., Reg. No. 955,941 filed Sept. 14, 2000).

B.   The <tdbank.info> domain name is identical to the TD BANK mark.

a.    When comparing the disputed domain name to the mark at issue, the relevant comparison to be made is between only the second-level portion of the disputed domain name and the mark. Here, the <tdbank.info> domain name contains the TD BANK mark in its entirety, save for the space between words, and is merely supplemented by the generic top-level domain (“gTLD”) “.info.”

C.   Respondent has no rights or legitimate interests in the <tdbank.info> domain name.

a.    Respondent is not commonly known by the disputed domain name. The WHOIS record supports this claim, suggesting that Respondent is known as an entity other than is associated with the TD BANK mark. Respondent has not been given permission to use the TD BANK mark and is not sponsored by or affiliated with Complainant.

b.    The <tdbank.info> domain name resolves to a website displaying links to third-party websites, some of which directly compete with Complainant’s business.

D.   The <tdbank.info> domain name was registered and is being used by Respondent in bad faith.

a.    Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, the owner of the TD BANK mark, for an amount in excess of documented out-of-pocket costs. Respondent offered to sell the domain name to Complainant for $3,000. Complainant responded, offering to reimburse Respondent for out-of-pocket costs, but Respondent refused and again demanded $3,000. Several weeks later, Respondent sent Complainant a letter noting that $2,500 was the lowest price that Respondent would accept in a deal to sell the <tdbank.info> domain name.

b.    Respondent’s use of the <tdbank.info> domain name demonstrates bad faith. Respondent directs Internet users to a website which is littered with competing links to third-party websites, and is presumably receiving pay-per-click fees in the process. Respondent is using the fame of Complainant’s mark to improperly increase traffic to the <tdbank.info> domain name for commercial gain. This is an obvious demonstration of bad faith.

c.    Respondent was aware of Complainant’s rights in the TD BANK mark. Complainant and its mark are known internationally, having marketed and sold services under the mark since 1969 and owning trademark registrations throughout the world. Respondent’s registration of a  domain name which is identical to the TD BANK mark demonstrates that Respondent was aware of Complainant and its rights in the mark at the time the <tdbank.info> domain name was registered. The domain name is so obviously connected to the TD MARK but Respondent has no connection with the brand, and thus bad faith is the logical outgrowth of the facts.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the Toronto-Dominion Bank, who list its address as Toronto, Ontario, Canada. Complainant owns registrations throughout Canada, the USA and elsewhere that consist of the brand TD alone or in connection with goods or services, such as TD BANK, related to its banking business. Complainant also owns and operates numerous websites incorporating its marks such as <tdbank.com> and <td.com>.

 

Respondent is Peter Korbel who lists his or its address as Verna, Goa, India. Respondent’s registrar’s address is listed as Beaverton, OR, USA.

Respondent registered the <tdbank.info> domain name on September 23, 2012.

 

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 contends that it is the owner of the TD BANK mark, used in connection with a bank, the second-largest in Canada and sixth-largest in North America. Complainant is the owner of registrations for the TD BANK mark (e.g., Reg. No. TMA549396 registered Aug. 7, 2001) with the CIPO, the USPTO registration for the TD BANK mark (Reg. No. 3,788,055 registered May 11, 2010), and the registrations with the Indian CGPDT for the TD BANK mark (e.g., Reg. No. 955,941 filed Sept. 14, 2000). The Panel notes that while Complainant does not provide the registration date for its registrations with the CGPDT, Complainant does provide records demonstrating that the mark is, in fact, registered. See Complainant’s Exhibit A. The Panel finds that Complainant has rights in the TD BANK mark pursuant to Policy ¶ 4(a)(i). See 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)).

 

Complainant argues that the <tdbank.info> domain name is identical to the TD BANK mark. Complainant states that, when comparing the disputed domain name to the mark at issue, the relevant comparison to be made is between only the second-level portion of the disputed domain name and the mark. Complainant claims the <tdbank.info> domain name contains the TD BANK mark in its entirety, save for the space between words, and is merely supplemented by the gTLD “.info.” Panels have found that the elimination of a space and addition of a gTLD fails to create a distinction between the disputed domain name and the mark at issue. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The Panel finds that the <tdbank.info> domain name is confusingly similar to the TD BANK mark under Policy ¶ 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel recognizes that 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). The Complainant has met this burden.

 

Complainant contends that Respondent has no rights or legitimate interests in the <tdbank.info> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name, and that the WHOIS record supports this claim, suggesting that Respondent is known as an entity other than one associated with the TD BANK mark. The Panel notes that the WHOIS record lists “Peter Korbel” as the domain name registrant. Complainant further asserts that Respondent has not been given permission to use the TD BANK mark and is not sponsored by or affiliated with Complainant. The Panel finds that Respondent is not commonly known by the <tdbank.info> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), (an unsupportive WHOIS record and a lack of authorization from the complainant to use a mark is evidence of a lack of rights and legitimate interests.).

 

Complainant argues that Respondent’s use of the <tdbank.info> domain name further demonstrates a lack of rights and legitimate interests. Complainant contends that the <tdbank.info> domain name resolves to a website displaying links to third-party websites, some of which directly compete with Complainant’s business. The Panel finds that Respondent’s use of the <tdbank.info> domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel finds that Respondent has not established rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain. 

 

The Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant next alleges that the <tdbank.info> domain name was registered and is being used by Respondent in bad faith. Complainant contends that Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, the owner of the TD BANK mark, for an amount in excess of documented out-of-pocket costs. According to Complainant, Respondent offered to sell the domain name to Complainant for $3,000. Complainant states that it then responded, offering to reimburse Respondent for out-of-pocket costs, but Respondent refused and again demanded $3,000. Several weeks later, Complainant states, Respondent sent Complainant a letter noting that $2,500 was the lowest price that Respondent would accept in a deal to sell the <tdbank.info> domain name. Panels have found that an intent to sell a disputed domain name is evidence of bad faith. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). The Panel finds that Respondent registered and is using the <tdbank.info> domain name in bad faith under Policy ¶ 4(b)(i).

 

Next, Complainant alleges that Respondent’s use of the <tdbank.info> domain name demonstrates bad faith. According to Complainant, Respondent directs Internet users to a website which is littered with competing links to third-party websites, and is presumably receiving pay-per-click fees in the process. Complainant asserts that Respondent is using the fame of Complainant’s mark to improperly increase traffic to the <tdbank.info> domain name for commercial gain, and that this is an obvious demonstration of bad faith. Panels have found that the display of links on an identical or confusingly similar website is meant to create a likelihood of confusion with the complainant’s mark, thus demonstrating bad faith when the result is commercial gain to the respondent. 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). The Panel finds that Respondent registered and uses the <tdbank.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tdbank.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Darryl C. Wilson, Panelist

Dated: May 16, 2013

 

 

 

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