The Toronto-Dominion Bank v. Sergey Asmik / NA
Claim Number: FA1408001575331
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Sergey Asmik / NA (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbanking.com>, registered with RegisterMatrix.com Corp.
The undersigned certifies that he 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2014; the National Arbitration Forum received payment on August 21, 2014.
On August 29, 2014, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <tdbanking.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com Corp. 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 August 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@tdbanking.com. Also on August 29, 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 September 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant owns the TD BANK mark through its trademark registrations with the Canadian Intellectual Property Office (“CIPO”) and United States Patent and Trademark Office (“USPTO).
Complainant uses the TD BANK mark in connection with its business, Toronto-Dominion Bank, which deals with banking and related financial services. Complainant operates online through <tdbank.com> and other similar websites.
The <tdbanking.com> domain name is confusingly similar to Complainant’s TD BANK mark because Respondent has simply added the general suffix “ing” to the mark.
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <tdbanking.com> domain name. Respondent is neither licensed nor authorized to use the TD BANK mark. Respondent uses the disputed domain name to redirect Internet users to websites that feature generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent uses the disputed domain name for commercial gain in a pay-per-click system.
Respondent is a serial cybersquatter as evidenced by prior UDRP decisions. Respondent is using a closely similar domain name to disrupt the business of the Complainant by diverting Internet users to a website that offered services that compete with those offered by the Complainant. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring advertising links to third-party websites and receiving pay-per-click fees. Complainant’s TD BANK mark is so well known internationally and Respondent a registered domain name that is nearly identical to Complainant’s mark, Respondent must have had actual or constructive knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TD BANK mark through its registration of such mark with the CIPO and the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address to direct Internet users to a website displaying pay-per-click links to third-party websites some of which compete with Complainant.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a national trademark registration for the TD BANK trademark demonstrates its rights in the TD BANK mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
In forming the at-issue domain name Respondent adds the suffix “ing” to Complainant’s TD BANK trademark less its space and then appends the top-level domain name “.com” to the resulting string. These alterations to Complainant’s TD BANK trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <tdbanking.com> domain name is confusingly similar to Complainant’s TD BANK mark. See Regions Bank v. Rachel Hofstatter v. AjmalHost, FA 1510683 (Nat. Arb. Forum Sept. 11, 2013) (finidng that the <regions-banking.com> domain name was confusingly similar to the REGIONS BANK mark as the addition of the suffix “-ing” did not sufficiently distinguish the name from the mark).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Sergey Asmik / NA” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <tdbanking.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to usTLD Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply).
Respondent uses the at-issue confusingly similar domain name to direct Internet users to its own web page that contains generic links to third-party websites, some of which are in direct competition with Complainant. Respondent likely generates click-through fees from these links. Using the domain name in this manner 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). H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that using a domain name to promote related advertising was a commercial use that was not bona fide). 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).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent has a history of bad faith as demonstrated by prior adverse UDRP decisions. See Univision Commc’ns Inc. v. Sergey Asmik, FA 1558994 (Nat. Arb. Forum June 27, 2014); Compagnie Générale des Etablissements Michelin (Michelin) v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Sergey Asmik, D2014-1015 (WIPO Aug. 4, 2014); Volkswagen Group of America, Inc. v. Sergey Asmik, D2014-0616 (WIPO June 26, 2014); Univision Communications Inc. v. Sergey Asmik, FA 1558994 (NAF June 27, 2014); and see Apple Inc. v. Domain Admin / Sergey Asmik, D2014-0398 (WIPO May 13, 2014). Respondent’s pattern of domain abuse suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). 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).
Furthermore, Respondent uses the at-issue domain name to address a website that mimics Complainant’s web page and offers links to some of Complainant’s competitors. Doing so disrupts Complainant’s business. Thereby, Respondent demonstrates bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii)).”
Additionally, Respondent uses the confusingly similar at-issue domain to lure Internet users to Respondent’s webpage in order to gain revenue, presumably through pay-per-click fees. Using the domain name in the manner demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Finally, Respondent registered the <tdbanking.com> domain name knowing that Complainant had trademark rights in the TD BANK mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s overt use of the TD BANK trademark in forming the at-issue domain name. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign purpose. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <tdbanking.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbanking.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 29, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page