The Toronto-Dominion Bank v. Lisa Katz / Domain Protection LLC
Claim Number: FA1509001636479
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), represented by Gary N. Schepps, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbusinessbanking.com>, registered with Fabulous.com Pty Ltd.
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 Forum electronically on September 4, 2015; the Forum received payment on September 4, 2015.
On September 7, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <tdbusinessbanking.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@tdbusinessbanking.com. Also on September 10, 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 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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’s Contentions
1. Complainant owns the TD BANK mark through its registration with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 549,396, registered Aug. 7, 2001). Complainant is the second largest bank in Canada and the sixth largest bank in North America, and Complainant uses the TD BANK mark in connection with its banking, financial advisory, credit card, securities brokerage, real estate, and data processing services. The <tdbusinessbanking.com> domain name is confusingly similar to the TD BANK mark. The domain name includes the generic term “business,” changes “BANK” to “banking,” and adds the generic top-level domain (“gTLD”) “.com” to the domain name.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Respondent is not sponsored by or affiliated with Complainant in any way, nor has Complainant given Respondent permission to use Complainant’s trademarks in any manner. Respondent’s lack of rights or legitimate interests in the <tdbusinessbanking.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <tdbusinessbanking.com> domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. See Compl., at Attached Ex. F. In addition, the disputed domain name occasionally redirects Internet users to a third party website that claims to offer the user an opportunity to participate in an anonymous survey. Id.
3. Respondent has engaged in bad faith registration and use of the <tdbusinessbanking.com> domain name. Respondent has offered the disputed domain name for sale to Complainant, which violates Policy ¶ 4(b)(i). Additionally, Respondent uses the domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Finally, Respondent had knowledge of Complainant’s rights in the TD BANK mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <tdbusinessbanking.com> domain name is confusingly similar to Complainant’s TD BANK mark.
2. Respondent does not have any rights or legitimate interests in the <tdbusinessbanking.com> domain name.
3. Respondent registered or used the <tdbusinessbanking.com> 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 contends that it owns the TD BANK mark through its registration with the CIPO (e.g., Reg. No. 549,396, registered Aug. 7, 2001). Complainant states that it is the second largest bank in Canada and the sixth largest bank in North America, and Complainant uses the TD BANK mark in connection with its banking, financial advisory, credit card, securities brokerage, real estate, and data processing services. Prior Panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, even though Respondent reportedly resides in Dallas, Texas, the Panel finds that Complainant’s CIPO registration is sufficient under Policy ¶ 4(a)(i).
Complainant argues that the <tdbusinessbanking.com> domain name is confusingly similar to the TD BANK mark. The domain name includes the generic term “business,” changes “BANK” to “banking,” and adds the gTLD “.com” to the domain name. Past panels have found that the addition of generic terms such as “business” does not sufficiently distinguish the disputed domain name from the registered mark. Further, past panels have also found that the addition of a gTLD does nothing to negate confusing similarity. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Additionally, prior panels have held that the removal of one term, such as BANK, replaced by another, such as “banking” here, does not create requisite distinctiveness. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). As such, this Panel determines that the disputed domain name is confusingly similar 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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists “Lisa Katz / Domain Protection LLC” as the registrant of record. See Compl., at Attached Ex. E. Further, Complainant alleges that Respondent is not sponsored by or affiliated with Complainant in any way, nor has Complainant given Respondent permission to use Complainant’s trademarks in any manner. The Panel notes that Respondent has not submitted any contentions that might refute Complainant’s allegations. As such, the Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the <tdbusinessbanking.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant argues that Respondent uses the <tdbusinessbanking.com> domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. See Compl., at Attached Ex. F. The Panel sees that users may click on hyperlinks such as “Business Banking,” “Visa,” and “Small Business Checking.” Id. Past panels have held that use of a disputed domain name to feature competing third-party hyperlinks is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use. 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). Thus, the Panel finds that Respondent has not established a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
In addition, Complainant contends that the disputed domain name occasionally redirects Internet users to a third party website that claims to offer the user an opportunity to participate in an anonymous survey. See Compl., at Attached Ex. F. Previous panels have found that prize surveys are neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a disputed domain name. See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to 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 finds that Respondent’s use of a prize survey is additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent has offered the disputed domain name for sale to Complainant, which violates Policy ¶ 4(b)(i). Complainant explains that after Respondent received Complainant’s third and final cease and desist letter, Respondent replied and demanded $1600 in exchange for the domain name. See Compl., at Attached Ex. H. Past panels have found bad faith registration where a respondent seeks reimbursement in exchange for the disputed domain name. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(i).
Additionally, Complainant asserts that Respondent uses the domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Complainant contends that the confusingly similar nature of the disputed domain name demonstrates that Respondent is using the domain name to confuse unsuspecting Internet users looking for Complainant’s services for its own pecuniary gain. Past panels have agreed that the presence of pay-per-click links on a confusingly similar domain name is evidence of bad faith under Policy ¶ 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 therefore finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the TD BANK mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). While Complainant believes that constructive notice is sufficient, the Panel may agree that the trend in UDRP proceedings is to find bad faith only through actual knowledge. See, e.g., BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). However, Complainant argues that since Respondent uses the terms “business” and “banking” in its domain name, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. As such, Complainant asserts that it is impossible to conceive of a situation in which Respondent would have been unaware of Complainant’s brands at the time the domain name was registered. Accordingly, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although 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.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbusinessbanking.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 26, 2015
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