The Toronto-Dominion Bank v. Jeff Albrecht
Claim Number: FA1404001554875
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Jeff Albrecht (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadabank.net>, registered with Domain.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2014; the National Arbitration Forum received payment on April 21, 2014.
On April 21, 2014, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tdcanadabank.net> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 April 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@tdcanadabank.net. Also on April 21, 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 May 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.
1. Complainant has rights in its TD BANK family of marks under Policy ¶ 4(a)(i).
a. Complainant provides evidence of its registrations for the TD and TD BANK marks with both the United States Patent and Trademark Office (“USPTO”) as well as with the Canadian Intellectual Property Office (“CIPO”).
i. TD: USPTO (e.g., Reg. No. 1,649,009 registered June 25, 1991); CIPO (e.g., Reg. No. TMA644911 registered July 26, 2005).
ii. TD BANK: USPTO (Reg. No. 3,788,055 registered May 11, 2010); CIPO (Reg. No. TMA549396 registered August 7, 2001).
b. Respondent’s <tdcanadabank.net> domain name is confusingly similar to Complainant’s TD BANK mark.
i. Respondent’s disputed domain name displays complainant’s entire mark. Respondent adds the geographic term “Canada” and the generic top-level domain (“gTLD”) “.net.”
2. Respondent has no rights or legitimate interests in the <tdcanadabank.net> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent is not sponsored by or affiliated with Complainant in any way.
ii. Complainant has not granted Respondent permission or authorization to use Complainant’s marks.
iii. The WHOIS information for the disputed domain name lists “Jeff Albrecht” as Registrant.
iv. Respondent registered the disputed domain name on September 11, 2013, which is significantly after Complainant’s registrations for its trademark.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent uses the disputed domain name to direct Internet users to a website that features links to third-party websites and businesses, some of which directly compete with Complainant.
ii. Respondent presumably receives pay-per-click fees from the links featured on the resolving website.
3. Respondent registered and is using the <tdcanadabank.net> domain name in bad faith.
a. Respondent has a pattern of bad faith registrations resulting in the transfer of domain names in prior UDRP proceedings.
b. Respondent’s use of the disputed domain name disrupts Complainant’s business by resolving to a website displaying links that redirect Internet users to Complainant’s competitors.
c. Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark, as to the source or endorsement of the website.
i. Respondent’s resolving website uses Complainant’s famous mark and adds a geographical term related to Complainant’s business, thereby suggesting that Respondent intends to confuse Internet users.
ii. Respondent’s website displays a plethora of pay-per-click links from which Respondent commercially gains.
d. Respondent had knowledge of Complainant and Complainant’s trademarks when it registered the disputed domain name.
1. Respondent claims to have no knowledge of the <tdcanadabank.net> domain name, and has no interest in pursuing anything having to do with it.
1. Respondent’s <tdcanadabank.net> domain name is confusingly similar to Complainant’s TD BANK mark.
2. Respondent does not have any rights or legitimate interests in the <tdcanadabank.net> domain name.
3. Respondent registered or used the <tdcanadabank.net> domain name in bad faith.
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 asserts that it has rights in its TD BANK family of marks under Policy ¶ 4(a)(i). Complainant provides evidence of its registrations for the TD and TD BANK marks with both the USPTO as well as with the CIPO. The Panel notes that Complainant’s registrations for the TD BANK mark include; USPTO (Reg. No. 3,788,055 registered May 11, 2010) and CIPO (Reg. No. TMA 549,396 registered August 7, 2001). Panels have continuously found that registering a mark with a recognized trademark authority is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). 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).”). The Panel thus concludes that Complainant has established its rights in the TD BANK mark under in accordance with the Policy.
Complainant next asserts that Respondent’s <tdcanadabank.net> domain name is confusingly similar to Complainant’s TD BANK mark. Complainant explains that Respondent’s disputed domain name displays Complainant’s entire mark while adding the geographic term “Canada” and the gTLD “.net.” The Panel notes that Respondent also removes the space in Complainant’s TD BANK mark. Prior panels have found that adding a geographic term and a gTLD does not differentiate a disputed domain name from a given mark. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Panels have also concluded that removing spaces in marks are irrelevant changes in a disputed domain name. 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 concludes that Repsondent’s <tdcanadabank.net> domain name is confusingly similar to Complainant’s TD BANK mark under Policy ¶ 4(a)(i).
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 no rights or legitimate interests in the <tdcanadabank.net> domain name. Complainant elaborates stating that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that Respondent is not sponsored by or affiliated with Complainant in any way and that Complainant has not granted Respondent permission or authorization to use Complainant’s marks. Complainant points to the WHOIS information as evidence of these allegations claiming that the WHOIS information for the disputed domain name lists “Jeff Albrecht” as Registrant and states that Respondent registered the disputed domain name on September 11, 2013. Complainant points out that this date is significantly after Complainant’s registrations for its trademark. Prior panels have concluded that a respondent is not commonly known by a disputed domain name where there is no evidence in the record suggesting that respondent was commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <tdcanadabank.net> disputed domain name. Complainant asserts that Respondent uses the disputed domain name to direct Internet users to a website that features links to third-party websites and businesses, some of which directly compete with Complainant. Additionally, Complainant claims that Respondent presumably receives pay-per-click fees from the links featured on the resolving website. The Panel notes Exhibit F to see the website that resolves from the disputed domain name. The Panel sees that some of the links featured on Respondent’s resolving website include “Small Business Loans,” “Foreclosed RVs for Sale,” “Earn Awesome Rewards,” “Business Plan Writing,” and “Business Plan Template.” Prior panels have frequently found that using a disputed domain name to resolve to a website displaying competing links does not convey rights or legitimate interests to a respondent. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel concludes that Respondent has no rights or legitimate interests in the <tdcanadabank.net> disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant contends that Respondent registered and is using the <tdcanadabank.net> domain name in bad faith. Complainant alleges that Respondent has a pattern of bad faith registrations resulting in the transfer of domain names in prior UDRP proceedings. Complainant states that Respondent was previously involved in Tire Co. v. Jeff Albrecht, D2003-0846 (WIPO Dec. 15, 2003), which resulted in the transfer of Respondent’s disputed domain name. Prior panels have concluded that when a respondent is involved in prior UDRP cases involving the transfer of a previous domain name, that indicates bad faith use and registration. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel therefore concludes that Respondent registered and is using the <tdcanadabank.net> domain name in bad faith under Policy ¶ 4(b)(ii).
Next, Complainant contends that Respondent’s use of the disputed domain name disrupts Complainant’s business by resolving to a website displaying links that redirect Internet users to Complainant’s competitors. See Complainant’s Exhibit F. The Panel notes that some competing links include “Small Business Loans,” and “Online Banking.” Prior panels have found bad faith use and registration where a respondent uses a disputed domain name to compete with a complainant and thereby disrupt a complainant’s business. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel concludes that Respondent registered and is using the <tdcanadabank.net> domain name in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant asserts that Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark, as to the source or endorsement of the website. Complainant explains that Respondent’s resolving website uses Complainant’s famous mark and adds a geographical term related to Complainant’s business, thereby suggesting that Respondent intends to confuse Internet users. Complainant also contends that Respondent’s website displays a plethora of pay-per-click links from which Respondent commercially gains. Prior panels have frequently concluded that using a disputed domain name in this fashion indicates bad faith use and registration under ¶ 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).”). The Panel concludes that Respondent registered and is using the <tdcanadabank.net> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent had knowledge of Complainant and Complainant’s trademarks when it registered the disputed domain name. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See 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).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanadabank.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 28, 2014
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