The Toronto-Dominion Bank v. George Billis
Claim Number: FA1610001698128
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is George Billis (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbankfinancialadvisor.nyc>, <tdbanklocations.nyc>, <tdbankprivateclients.nyc>, and <tdbankprivateclient.nyc>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2016; the Forum received payment on October 14, 2016.
On October 14, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdbankfinancialadvisor.nyc>, <tdbanklocations.nyc>, <tdbankprivateclients.nyc>, and <tdbankprivateclient.nyc> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 October 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2016 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@tdbankfinancialadvisor.nyc, postmaster@tdbanklocations.nyc, postmaster@tdbankprivateclients.nyc, postmaster@tdbankprivateclient.nyc. Also on October 18, 2016, 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 November 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. The bank was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. The Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, the retail bank operates as TD Canada Trust and serves more than 12 million customers at over 1,100 branches. In the United States, the company operates as TD Bank (the initials are used officially for all U.S. operations). TD Bank now serves more than 8 million customers with a network of more than 1,300 branches, primarily located in the eastern United States. TD also ranks among the world’s leading online financial services firms. The Complainant is ranked number 71 on the 2013 Forbes Global 2000 listing. Brand Finance® Brand Directory, which ranks the world’s most valuable brands, ranks TD as number 89 on its 2013 Global 500 list. Complainant has registered the TD BANK mark in the United States in 2010. The mark is also registered elsewhere around the world. Complainant’s brand is well recognized by consumers, industry peers, and the broader global community.
According to Complainant, the disputed domain names are confusingly similar to Complainant’s mark as they wholly incorporate Complainant’s mark and merely add the descriptive terms “financial advisor,” “locations,” or “private client/private clients,” and the “.nyc” top-level domain (“TLD”). Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the domain names, and Complainant has not given Respondent permission to use its TD BANK mark in any manner, including in domain names. Further, Respondent is not using the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent initially used the domain names to host competing hyperlinks. Respondent currently uses the domain names to redirect Internet users to websites that resolve to blank pages and lack content. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent registered and is using the domain names in bad faith. First, Respondent has been subject to numerous UDRP proceedings where panels ordered the transfer of the disputed domain names containing the trademarks of the complainants. Second, Respondent initially used the domain names to host competing hyperlinks. Third, Respondent currently fails to make any active use of the domain names. Finally, because of Respondent’s numerous trademarks and the fact that it is the second largest bank by market capitalization, and the sixth largest bank in North America, it is clear that Respondent registered the domain names with at least constructive knowledge of Complainant’s mark and rights therein. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark TD BANK dating back to at least 2010.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent has been subject to numerous UDRP proceedings where panels ordered the transfer of the disputed domain names containing the trademarks of the complainants. Further, Respondent used the disputed domain names to host competing hyperlinks.
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(f), 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 (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 disputed domain names are confusingly similar to Complainant’s mark as they wholly incorporate Complainant’s mark and merely add the descriptive terms “financial advisor,” “locations,” or “private client/private clients,” and the “.nyc” TLD. The disputed domain names also eliminate the space between the words of Complainant’s mark. Panels have decided that these changes do not serve adequately to distinguish a respondent’s disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (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)). As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the domain names. Complainant has not given Respondent permission to use its TD BANK mark in any manner, including in domain names. Respondent is not commonly known by the domain names: the Panel notes that the WHOIS information merely lists “George Billis” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Respondent is not using the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent initially used the domain names to host competing hyperlinks. Respondent currently uses the domain names to redirect Internet users to websites that resolve to blank pages and lack content. Panels have held that neither a respondent’s use of a domain name to host competing hyperlinks nor a respondent’s failure to make any active use of a domain name constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent is not using the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Respondent has been subject to numerous UDRP proceedings where panels ordered the transfer of the disputed domain names containing the trademarks of the complainants. Complainant cites the following UDRP proceedings: The Trustees of Columbia University in the City of New York v. George Billis, FA 1671587 (Forum May 23, 2016), Virgin Enterprises Limited v. George Billis et al., FA 1670610 (Forum May 3, 2016), and Deutsche Lufthansa AG v. George Billis et al., FA 1669596 (Forum Apr. 21, 2016). Panels have decided that a respondent engages in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii) where it has been the subject of previous adverse UDRP rulings. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith pursuant to Policy ¶ 4(b)(ii).
Respondent used the domain names to host competing hyperlinks. Panels have routinely held that such use of a domain name by a respondent is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Thus, the Panel finds that Respondent’s use of the domain names constitutes bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbankfinancialadvisor.nyc>, <tdbanklocations.nyc>, <tdbankprivateclients.nyc>, and <tdbankprivateclient.nyc> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 10, 2016
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