The Toronto-Dominion Bank v. Wade Butts / Cyber Contellation, Inc.
Claim Number: FA1509001636207
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Wade Butts / Cyber Contellation, Inc. (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbitcoinbank.com>, registered with 1&1 Internet AG.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2015; the Forum received payment on September 2, 2015.
On September 3, 2015, 1&1 Internet AG confirmed by e-mail to the Forum that the <tdbitcoinbank.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@tdbitcoinbank.com. Also on September 4, 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 October 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <tdbitcoinbank.com> domain name is identical to Complainant’s TD BANK mark.
2. Respondent does not have any rights or legitimate interests in the <tdbitcoinbank.com> domain name.
3. Respondent registered and uses the <tdbitcoinbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the TD BANK mark through its registration 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 connection with banking and related services.
Respondent registered the <tdbitcoinbank.com> domain name on December 11, 2013, and uses it to redirect Internet users to a website featuring links to third-party websites, some of which are directly related to Complainant’s business.
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 Panel finds that Complainant’s registration of the TD BANK mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). 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.”).
Respondent’s <tdbitcoinbank.com> domain name contains Complainant’s mark in full, inserts the generic term “bitcoin,” and attaches the gTLD “.com.” Prior panels have found that adding a generic term does not distinguish a disputed domain name from a complainant’s mark. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark). Past panels also routinely find that the addition of a gTLD does not distinguish a disputed domain name from a mark. See OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Thus, the Panel finds that the <tdbitcoinbank.com> domain name is confusingly similar to Complainant’s TD BANK mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 that Respondent has no rights or legitimate interests in the disputed domain name, and is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “Wade Butts / Cyber Contellation, Inc.” as the registrant of record. Complainant also states that it has never given Respondent permission to use the TD BANK trademark, and Respondent is not sponsored by or affiliated with Complainant in any way. Lacking any contentions from Respondent to demonstrate otherwise, the Panel finds that Respondent lacks rights to 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).
Complainant alleges that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which are directly related to Complainant and Complainant’s business. Complainant demonstrates that the resolving website features multiple third party links for banks and coin counting services, such as “Bank Cash,” “Coin Counter Bank,” and “Coin Counter and Sorter.” Previous panels have found that such competing use is not a bona fide offering of goods or services. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). As Respondent presumably seeks to commercially benefit through use of the hyperlinks, the Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the disputed domain name to create a likelihood of confusion with Complainant for Respondent’s financial gain, as demonstrated by the presence of multiple pay-per-click links posted to Respondent’s resolving website. 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 that features links to third-party websites that generate revenue for a respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Thus, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent has demonstrated knowledge of and familiarity with Complainant’s brand and business, which is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant argues that, by combining Complainant’s mark with the financial term “bitcoin,” Respondent has demonstrated knowledge of Complainant’s business, and that it defies common sense that Respondent might have coincidentally selected the disputed domain name without any knowledge of Complainant. The Panel agrees and finds that Respondent had actual knowledge of the mark and Complainant's rights, which constitutes bad faith under Policy ¶ 4(a)(iii). See 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”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbitcoinbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 6, 2015
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