The Toronto-Dominion Bank v. Majid Majidi / N/A
Claim Number: FA1312001536889
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Majid Majidi / N/A (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbankinformation.org> and <tdbank-info.org>, registered with GoDaddy.com, LLC.
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 December 31, 2013; the National Arbitration Forum received payment on December 31, 2013.
On December 31, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tdbankinformation.org> and <tdbank-info.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2014 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@tdbankinformation.org, postmaster@tdbank-info.org. Also on January 2, 2014, 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 January 24, 2014, 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 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 names be transferred from Respondent to Complainant.
1. Complainant is the second largest bank in Canada and the sixth largest bank in North America. Complainant’s business was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, founded in 1855 and 1969. Complainant has been nationally ranked as a leading brand and is thus well recognized by consumers and industry peers.
2. Complainant owns hundreds of trademark registrations in Canada, the United States and elsewhere that consist of the brand TD (abbreviation for Toronto-Dominion).
a. TD BANK
i. United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,788,055 registered May 11, 2010).
ii. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 549,396 registered August 7, 2001).
b. TD BANK GROUP
i. Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 9,564,394 Registered June 10, 2011).
3. Respondent’s <tdbankinformation.org> and <tdbank-info.org> domain names are confusingly similar to Complainant’s TD BANK mark.
a. Respondent adds the generic top-level domain (“gTLD”) “.org” and a non-descriptive term to Complainant’s TD BANK mark. Respondent adds the term “information” to the <tdbankinformation.org> domain name and the word “info” and a hyphen to the <tdbank-info.org> domain name.
4. Respondent has no rights or legitimate interests in the <tdbankinformation.org> and <tdbank-info.org> domain names.
a. Respondent is not commonly known by the disputed domain names. The WHOIS information for the disputed domain names lists “Majid Majidi” as registrant. Further, Respondent is not sponsored by or affiliated with Complainant in any way, and Complainant has not given Respondent permission to use Complainant’s mark.
i. Respondent registered the disputed domain names on August 1, 2012, which is after Complainant’s registrations with the USPTO and CIPO.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
i. Respondent uses the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with complainant’s business. Respondent presumably receives pay-per-click fees from the featured links.
5. Respondent registered and is using the <tdbankinformation.org> and <tdbank-info.org> domain names in bad faith.
a. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet users away from Complainant’s business and to Respondent’s website.
b. Respondent uses the disputed domain names to redirect Internet users to a website featuring advertising links to third-party websites, and thereby receiving pay-per-click fees. Respondent is confusing Internet users with its use of Complainant’s marks as well as profiting from Complainant’s fame and recognition.
c. It is inconceivable that Respondent was unaware of Complainant’s marks when it registered the disputed domain names because of Complainant’s continuous use and recognition since 1969.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For 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 contends that it is the second largest bank in Canada and the sixth largest bank in North America. Complainant states that its business was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, founded in 1855 and 1969. Complainant provides evidence that it has been nationally ranked as a leading brand and is thus well recognized by consumers and industry peers. Complainant asserts that it owns hundreds of trademark registrations in Canada, the United States and elsewhere that consist of the brand TD (abbreviation for Toronto-Dominion). For example, Complainant provides evidence that it owns rights in the TD BANK mark through its registrations with the USPTO (Reg. No. 3,788,055 registered May 11, 2010) and with the CIPO (Reg. No. TMA 549,396 registered August 7, 2001). Complainant also provides evidence of its registration for the TD BANK GROUP mark in Respondent’s place of residence, the UK(OHIM Reg. No. 9,564,394, registered June 10, 2011). Panels have frequently found that providing evidence of a registration with a recognized trademark authority is sufficient to establish rights in a given mark. See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Group plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”). The Panel concludes that Complainant has rights in the TD BANK and TD BANK GROUP marks under Policy ¶ 4(a)(i).
Respondent’s <tdbankinformation.org> and <tdbank-info.org> domain names are confusingly similar to Complainant’s TD BANK mark under Policy ¶ 4(a)(i). Complainant claims that Respondent adds the generic top-level domain (“gTLD”) “.org” and a non-descriptive term to Complainant’s TD BANK mark. See Citizens Financial Group, Inc. v. Albert Kao, FA 1030868 (Nat. Arb. Forum August 21, 2007) (finding that the addition of the gTLD “.org” does nothing to alleviate the confusing similarity as a gTLD is required for all domain names). Additionally, Complainant states that Respondent adds the term “information” to the <tdbankinformation.org> domain name and the word “info” to the <tdbank-info.org> domain name. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel notes that Respondent also removes the space in between complainant’s TD BANK mark and finds that this alteration is irrelevant. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel agrees that the addition of a hyphen is not a distinctive change under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The Panel agrees that adding generic terms such as “information” or “info” to the domain name does nothing to defeat confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel concludes that Respondent’s <tdbankinformation.org> and <tdbank-info.org> domain names are confusingly similar to Complainant’s TD BANK mark under Policy ¶ 4(a)(i).
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 asserts that Respondent has neither rights nor legitimate interests in the <tdbankinformation.org> and <tdbank-info.org> domain names under Policy ¶ 4(c)(ii). Complainant argues that Respondent is not commonly known by the disputed domain names as evidenced by the fact that the WHOIS information for the disputed domain names lists “Majid Majidi” as registrant. Further, Complainant states that Respondent is not sponsored by or affiliated with Complainant in any way, and Complainant has not given Respondent permission to use Complainant’s mark. Complainant also claims that Respondent registered the disputed domain names on August 1, 2012, which is after Complainant’s registrations with the USPTO and CIPO. Panels have continuously found that a respondent is not commonly known by a disputed domain name where there is no indication on the record, including the WHOIS record that suggests that respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel concludes that Respondent has no rights or legitimate interests in the <tdbankinformation.org> and <tdbank-info.org> domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant contends that Respondent uses the disputed domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant states that Respondent also presumably receives pay-per-click fees from the featured links. The Panel notes that the website displays links and advertisements including, “Join the Fee-Free Checking Party and Get a $50 Bonus,” “USAA official Site,” “Interest Bearing Checking Account,” “Bank/ Login,” and “TD bank.” Previous panels have found that using a confusingly similar domain name to resolve to a website featuring links and advertisements relating to and competing with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). The Panel concludes that Respondent has no rights or legitimate interests in the <tdbankinformation.org> and <tdbank-info.org> domain names under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent registered and is using the <tdbankinformation.org> and <tdbank-info.org> domain names in bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent’s use of the disputed domain names to feature links to third-parties disrupts Complainant’s business by diverting Internet users away from Complainant’s business and to Respondent’s website. Panels have previously found that using a confusingly similar domain name in this way indicates bad faith use and registration under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel concludes that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant further claims that Respondent uses the disputed domain names to redirect Internet users to a website featuring advertising links to third-party websites, and thereby receives pay-per-click fees. Complainant asserts that Respondent is confusing Internet users with its use of Complainant’s marks as well as profiting from Complainant’s fame and recognition. Complainant argues that Respondent’s use of Complainant’s mark displayed on the resolving website aids in confusing Internet users and alludes to the idea that Complainant is associated with Respondent’s disputed domain names. Previous panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links that compete with a complainant and create revenue for the respondent. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”). The Panel concludes that Respondent registered and is using the <tdbankinformation.org> and <tdbank-info.org> domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that it is inconceivable that Respondent was unaware of Complainant’s marks when it registered the disputed domain names because of Complainant’s continuous use and recognition since 1969. Complainant therefore alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the TB BANK mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO, CIPO and OHIM. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of 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).
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 <tdbankinformation.org> and <tdbank-info.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 30, 2014
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