The Toronto-Dominion Bank v. James Fotheringham
Claim Number: FA1408001577502
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is James Fotheringham (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbank.ws>, 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 August 29, 2014; the National Arbitration Forum received payment on August 29, 2014.
On August 29, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tdbank.ws> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 September 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@tdbank.ws. Also on September 4, 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 29, 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.
On September 30, 2014, the Forum received an email from Respondent, which was not a proper Response to the Complaint.
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.
Complainant
Complainant owns the TD BANK mark through registrations with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 549396 registered August 7, 2001), and with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,788,055 registered May 11, 2010). Complainant uses the TD BANK mark in furtherance of its banking, investment, and brokerage services. The <tdbank.ws> domain name is confusingly similar to the TD BANK mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <tdbank.ws> name as demonstrated by the WHOIS information. Further, Respondent is using the disputed domain name to promote commercial hyperlinks, some of which compete with Complainant in the financial services sector. This use does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
Respondent’s bad faith is visible through Respondent’s willingness to sell the disputed domain name. Further, by promoting competing links at the resolving page, Respondent is disrupting Complainant’s business. Respondent is also in violation of Policy ¶ 4(b)(iv) as it generates click-through-fees from the linked pages. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the mark.
Respondent
Respondent failed to submit a proper Response in this proceeding.
For the 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 uses the TD BANK mark in furtherance of its banking, investment, and brokerage services. Complainant claims rights in the TD BANK mark through registrations with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 549396 registered August 7, 2001), and with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,788,055 registered May 11, 2010). The Panel agrees that these trademark registrations with the USPTO and CIPO evince Complainant’s rights in the TD BANK mark for 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 the <tdbank.ws> is confusingly similar to the TD BANK mark. Complainant notes the domain name differs from the mark by the inclusion of the country code top-level domain (“ccTLD”) “.ws.” The domain name also omits the space between the two-word mark. Past panels have concluded that the addition of a ccTLD and the omission of spacing are irrelevant to the Policy ¶ 4(a)(i) confusing similarity analysis. 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)). Accordingly, the Panel finds the <tdbank.ws> is confusingly similar to the TD BANK mark pursuant to 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 claims Respondent has no rights or legitimate interests in the disputed domain name. Complainant cites the WHOIS record to show Respondent is not commonly known by the <tdbank.ws> name. The WHOIS record identifies “James Fotheringham” as the domain registrant. Because there is no evidence to infer otherwise, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues Respondent is using the disputed domain name to promote commercial hyperlinks, some of which compete with Complainant in the financial services sector. The resolving page from <tdbank.ws> includes links such as “Online Banking Accounts,” “Bank of America Checking,” and “5.5% APY Bank CD Rates.” Complainant operates in the financial sector and therefore these featured links at the resolving page compete with Complainant. Past panels have found the respondent to lack rights in similar circumstances. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel found that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry. The Panel finds Respondent’s use of the disputed domain name in connection with competing hyperlinks does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).
Complainant has proven this element.
Complainant argues Respondent’s bad faith is visible through Respondent’s willingness to sell the disputed domain name. Complainant notes the “This domain is for sale!” message on the resolving page. The Panel agrees Respondent’s general offer to the sell the disputed domain name weighs against Respondent per Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant argues that by promoting competing links at the resolving page, Respondent is disrupting Complainant’s business. The disputed domain name resolves to feature links to other providers in the financial services industry, with links including “Online Banking Accounts,” “Bank of America Checking,” and “5.5% APY Bank CD Rates.” The Panel concludes that Respondent’s promotion of competing links serves to disrupt Complainant’s business, and finds this is evidence of Policy ¶ 4(b)(iii) bad faith. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims Respondent is in violation of Policy ¶ 4(b)(iv) as it generates click-through-fees from the linked pages. In Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005), the panel stated, “The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” The Panel finds evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iv) as Respondent uses the disputed domain name to promote competing links, from which it likely commercially benefits.
Complainant claims Respondent registered the disputed domain name with knowledge of Complainant’s rights in the mark. Complainant argues that Respondent’s choice in registering the <tdbank.ws> domain name demonstrates awareness of the brand. In Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), the panel wrote, “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” Accordingly, the Panel finds evidence of Policy ¶ 4(a)(iii) bad faith as the circumstances indicate Respondent had knowledge of Complainant’s rights in the TD BANK mark at the time of domain registration.
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <tdbank.ws> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 30, 2014
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