The Toronto-Dominion Bank v. MASTER GRANDEUR
Claim Number: FA1508001633966
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is MASTER GRANDEUR (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <td-bank-support.com> ('the Domain Name'), registered with eNom, Inc.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2015; the Forum received payment on August 19, 2015.
On August 20, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <td-bank-support.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2015 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@td-bank-support.com. Also on August 20, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
The Complainant's contentions can be summarised as follows:
The Complainant is the owner of hundreds of registrations in Canada, the USA and elsewhere that consist or include the elements TD (abbreviation of TORONTO DOMINION) and TD BANK as well as the trade names and unregistered trade mark TD and TD BANK in association with financial, banking and related businesses, goods and services. The Complainant is the second largest bank in Canada and the sixth largest bank in North America. It has over 22 million clients worldwide. It has numerous web sites including tdbank.com and td.com. tdbank.com attracts over 3.1 million unique visitors per month. TD was ranked number 1 overall Canadian brand in Interbrand's Best Canadian Brands in 2012 and 2014. The Complainant's brand is well recognised by customers, industry and the broader global community and Complainant owns the exclusive right to use TD and TD Bank for banking and related financial services.
When comparing the Domain Name to Complainant's trade marks the relevant comparison to be made is between only the second level part of the domain and the trade mark.
Complainant provides support to its customer by phone, mobile and on line in relation to its services. By adding the generic term 'support’ to the Complainant's mark in the Domain Name this only serves to underline confusing similarity between the Domain Name and the Complainant's trade mark.
Respondent's addition of a hyphen in between the ‘TD’ and ‘Bank’ and the ‘bank’ and ‘support’ elements of the Domain Name does nothing to distinguish the Domain Name from Complainant's trade marks.
Respondent is not sponsored by or affiliated with the Complainant in any way. Complainant has not given Respondent permission to use the Complainant's trade marks in any manner. Respondent is not commonly known by the Domain Name.
Respondent is using the Domain Name to redirect Internet users to a web site featuring links to third party web sites some of which directly compete with the Complainant's business e.g. multiple third party links for bank account loans and online bank accounts. Monetising domain names using pay per click links is not bona fide use in relation to goods and services,
Respondent registered the Domain Name in 2014, significantly after Complainant's first use in commerce of its TD mark in 1969.
The Domain Name is confusingly similar to the Complainant's TD mark and its tdbank.com domain name. Respondent has demonstrated a knowledge and familiarity with Complainant's brand and business.
Respondent has created a likelihood of confusion with the Complainant and its trade marks by registering a domain that contains the Complainant's famous TD BANK trade mark to confuse unsuspecting users looking for Complainant's services to mislead them as to the source of the web site attached to the Domain Name. This evidences a nefarious intent to capitalise on the fame and goodwill of the Complainant’s mark to increase traffic to the website at the Domain Name for pecuniary gain.
The Respondent has ignored Complainant's attempts to resolve the dispute outside of these proceedings.
Respondent used a privacy service to hide its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of trade mark registrations in Canada, the USA and elsewhere that consist of or include the elements TD (abbreviation of TORONTO DOMINION) and TD BANK for financial and banking services and related goods.
Respondent registered the Domain Name in 2014, significantly after Complainant's first use in commerce of its TD mark in 1969.
Respondent is using the Domain Name to redirect Internet users to a web site featuring links to third party web sites some of which directly compete with the Complainant's business e.g. multiple third party links for bank account loans and online bank accounts.
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 or Confusingly Similar
The Domain Name consists of the Complainant's TD mark and the generic terms 'bank' and 'support' all separated by hyphens and the gTLD .com. The Complainant provides support services in relation to its banking services and therefore the addition of these generic terms increases the likely confusion of the Domain Name and the Complainant's TD trade mark. See Warner Bros Entm't Inc. v Sadler FA 250236 (Nat. Arb. Forum May 19, 2004) (finding that addition of generic terms to Complainant's mark failed to alleviate the confusing similarity between the mark and the domain names).
As a general rule the addition of punctuation related alterations can never distinguish the domain name from the mark at issue. See Teradyne Inc. v 4Tel Tech, D2000-0026 (WIPO May 9, 2000) (Finding that the addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced identically by eliminating the hyphen.)
The gTLD .com does not serve to distinguish the Domain Name from the TD mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Respondent has not responded and given any reasons for its registration and use of the Domain Name. Respondent does not appear to be commonly known by the Domain Name or the name TD. Complainant has not authorised the use of its mark and the Respondent does not appear to be connected with the Complainant in any way. TD does not appear to have any obvious meaning apart from the Complainant and its trade marks.
The Domain Name has been used for a pay-per-click website linking to other third party commercial web sites including banking and financial services. The Panel notes 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 the Complainant's competitors. The Panel finds this to be neither a bona fide offering of goods and services pursuant to Policy 4 (c) (i) nor a legitimate non-commercial or fair use pursuant to Policy 4(c)(iii).
The Panel thus concludes that the Respondent has no rights or legitimate interests in the Domain Name under the Policy.
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <td-bank-support.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 28, 2015
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