The Toronto-Dominion Bank v. Nathan Haules / Muia
Claim Number: FA1612001710116
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Nathan Haules / Muia (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbank-ca.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 30, 2016; the Forum received payment on December 30, 2016.
On December 31, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <tdbank-ca.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2017 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-ca.com. Also on January 3, 2017, 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 January 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
The Toronto-Dominion Bank is the owner of hundreds of trademark registrations in Canada, the United States and elsewhere that consist of, or include, the elements TD (abbreviation of TORONTO- DOMINION) and TD BANK, as well as the trade names and unregistered trademarks TD and TD BANK in association with financial, banking and related businesses, goods, and services. Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as “Complainant’s Marks.” The trademarks relevant to this instant matter are detailed in the Annexes to the Complaint.
Complainant, The Toronto-Dominion Bank (publicly listed NYSE: TD, TSX: TD, TYO: 8640), is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Commonly known as TD and operating as TD Bank Group, 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.
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). The U.S. subsidiary was created through Complainant’s acquisition of Banknorth and Commerce Bank, and for many years was known as TD Banknorth. 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.
Complainant operates numerous websites, chief among them http://www.tdbank.com/ and http://www.td.com/. According to Compete.com, <tdbank.com> attracts over 2.61 million unique visitors per month, making it the 404th most popular website in the United States. Alexa.com ranks <td.com> as the 21st most popular website in Canada, 5,282nd most popular website in the United States, and 1,202nd most popular website globally.
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. The Toronto-Dominion Bank is one of a few banks in the world rated AAA by Moody’s.
In addition, in 2013, brandZ ranked Complainant as number 46 on its list of the Top 100 most valuable global brands and as number 6 on its list of Top 10 Regional Banks in the world. Furthermore, TD has also been named one of Canada’s Top 100 Employers for the fifth year in a row. This recognition followed announcements of inclusion on the lists of Financial Post’s Ten Best Companies to Work For (2011), and as one of the Great Place to Work Institute’s Best Workplaces in Canada (2011).
The inaugural 2012 Ipsos Influence Index Study recently asked Canadians to rate 100 leading global brands on a wide variety of attributes, and TD ranked #17 on the list.
Interbrand’s Best Canadian Brands, published every two years, ranks the top 25 Canadian brands according to value and provides insight into their ability to manage brands effectively as a contributor to business performance. TD was ranked as the number 1 overall Canadian brand in the 2012 and 2014 editions of the publication.
In summary, Complainant’s brand is well recognized by consumers, industry peers, and the broader global community.
Complainant owns the Marks cited in Section 6(c) above for which it has obtained numerous trademark registrations. None of the listed registrations have been abandoned, cancelled, or revoked. Complainant has made significant investments over the years to advertise, promote, and protect Complainant’s Marks through various forms of media, including the Internet. Based on its extensive use and trademark registrations, Complainant owns the exclusive right to use the TD and TD BANK marks for banking and related financial services.
A. The Disputed Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights
(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
By virtue of its federal trademark and service mark registrations as shown in Exhibit A, Complainant is the owner of Complainant’s trademarks. See United Way of America v. Alex Zingaus, FA 1036202 (FORUM Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”). Furthermore, a complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (FORUM April 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 0622122 (FORUM Apr. 14, 2006).
When comparing the Disputed Domain Name to Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and Complainant’s trademarks. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 0153545 (FORUM May 27, 2003) (“[t]he 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”).
The Disputed Domain Name incorporates Complainant’s TD BANK trademark in its entirety while merely adding the geographically descriptive term “ca,” which is a common abbreviation for Canada, to such trademark, thus rendering the Disputed Domain Name confusingly similar to this trademark. It is well established that the addition of a geographic term or place name does not alter the underlying trademark or negate the confusing similarity, and numerous Panels have established that the mere addition of geographical terms to a complainant’s trademark does not sufficiently differentiate the disputed domain name from that trademark. See Trip Network Inc. v. Alviera, FA 0914943 (FORUM Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the CHEAPTICKETS mark in the cheapticketscancun.com> domain name, among others, does not overcome a finding of confusing similarity under Policy ¶4(a)(i)). See also Skype Ltd. v. Sacramento, FA 0747948 (FORUM Aug. 30, 2006) (“The addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶4(a)(i)”). See also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark”).
Moreover, Respondent’s use of this particular geographically descriptive term in conjunction with Complainant’s trademark only serves to underscore and increase the confusing similarity between the Disputed Domain Name and Complainant’s trademark as this specific term is closely linked and associated with Complainant. More specifically, it is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. In Canada, the retail bank operates as TD Canada Trust and serves more than 12 million customers at over 1,100 branches. Thus, by adding this particular geographically descriptive term to Complainant’s trademark, Respondent seeks to create the impression that the Disputed Domain Name is somehow connected to Complainant and its trademark and brand, which thereby enhances the confusing similarity with Complainant’s trademark. See Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org, D2013-1323 (WIPO Sept. 10, 2013) (finding that “the addition of the word ‘London’ to the trademarks [SANDERSON and SANDERSON HOTEL] as part of the Domain Name [sandersonlondonhotel.org] does not negate confusing similarity but rather enhances it in that London is a geographic term that identifies the place where Complainant’s Sanderson Hotel is located).
B. Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Name
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The granting of registrations by the European Union Intellectual Property Office (EUIPO), the Canadian Intellectual Property Office (CIPO) and the U.S. Patent and Trademark Office (USPTO) to Complainant for the TD, TD BANK and TD BANK GROUP trademarks is prima facie evidence of the validity of the terms “TD,” “TD BANK” and “TD BANK GROUP” as trademarks, of Complainant’s ownership of these trademarks, and of Complainant’s exclusive right to use the TD, TD BANK and TD BANK GROUP trademarks in commerce on or in connection with the goods and/or services specified in the registration certificates.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests. See Policy, ¶4(c)(ii). Where “the Whois information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s…mark,” a Panel should find that Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, FA 1036202 (FORUM Aug. 30, 2007). In the instant case, the pertinent Whois information identifies the Registrant as “Nathan Haules / Muia,” which does not resemble the Disputed Domain Name in any manner – thus, where no evidence, including the Whois record for the Disputed Domain Name, suggests that Respondent is commonly known by the Disputed Domain Name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name within the meaning of ¶4(c)(ii). See Instron Corp. v. Kaner, FA 0768859 (FORUM Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the Whois information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). See also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 0715089 (FORUM July 17, 2006) (respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶4(c)(ii), where there was no evidence in the record, including the relevant Whois information, suggesting that respondent was commonly known by the disputed domain name).
Respondent is using the Disputed Domain Name to redirect internet users to a website that resolves to a page that reads, in part, “This Domain Name is Suspended. The domain name you have entered is not available. It has been taken down because the email address of the domain holder (Registrant) has not been verified” and lacks content. Respondent has failed to make use of this Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name, as confirmed by numerous past Panels. See Nenê f/k/a Maybyner Rodney Hilario v. Master, Host, FA 0924563 (FORUM Apr. 10, 2007) (Holding that absence of content at website evinced a lack of rights or legitimate interests in the disputed domain name). See also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (FORUM Sept. 2, 2004) (Respondent is using the Disputed Domain Name to resolve to an empty page featuring no substantive content or links is further evidence that Respondent's failure to actively use the Disputed Domain Name(s) suggests a lack of rights and legitimate interests in the Disputed Domain Name(s) as blank pages are 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)).
Respondent registered the Disputed Domain Name on April 7, 2016, which is significantly after Complainant filed for registration of its relevant trademarks with CIPO and the USPTO, and also significantly after Complainant’s first use in commerce of the TD trademark in 1969.
Respondent registered the Disputed Domain Name on April 7, 2016, which is significantly after Complainant’s registration of its TD.COM on April 15, 1998 and TDBANK.COM on April 14, 1995.
C. The Disputed Domain Name was Registered and is Being Used in Bad Faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Complainant and its TD and TD BANK trademarks are known internationally. Complainant has marketed and sold its goods and services using this trademark since 1969, which is well before Respondent’s registration of the Disputed Domain Name on April 7, 2016.
By registering a domain name that incorporates Complainant’s famous TD and TD BANK trademarks in their entirety while adding the geographically descriptive term “ca,” which has an obvious connection to Complainant, Respondent has created a domain name that is confusingly similar to Complainant’s trademark, as well as its <td.com> and <tdbank.com> domains. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which Respondent would have been unaware of” Complainant’s brands at the time the Disputed Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, TD and TD BANK are so closely linked and associated with Complainant that Respondent’s use of these marks, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Further, where the Disputed Domain Name incorporates Complainant’s famous TD and TD BANK trademarks in their entirety while adding the geographically descriptive term “ca,” which has an obvious connection to Complainant, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415 (WIPO Dec. 10, 2007)
Further, at the time of registration of the Disputed Domain Name, Respondent knew, or at least should have known, of the existence of Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the Disputed Domain Name, Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, Complainant serves more than 12 million customers at over 1,100 branches. In the United States Complainant serves more than 8 million customers with a network of more than 1,300 branches, primarily located in the eastern United States, which demonstrates Complainant’s fame. Further, performing searches across a number of internet search engines for “tdbank ca” returns multiple links referencing Complainant and its business. See Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“given Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”). See also Victoria's Secret v. Hardin, FA 096694 (FORUM Mar. 31, 2001) (Finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith). Further, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past Panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding, as is the case here. See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (NAF Mar. 13, 2012) (“a finding of bad faith hinges squarely on the probability that it was more likely than not that respondent knew of, and targeted, complainant’s trade mark”). See also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (NAF 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”). See also Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., D2014-0878 (WIPO Aug. 5, 2014) (“Knowledge and targeting [of a trademark] may be proven inferentially”).
The Disputed Domain Name currently resolves to an inactive site that resolves to a page that reads, in part, “This Domain Name is Suspended. The domain name you have entered is not available. It has been taken down because the email address of the domain holder (Registrant) has not been verified” and is not being used, though past Panels have noted that the word bad faith "use" in the context of ¶4(a)(iii) does not require a positive act on the part of Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy ¶4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith"). See also Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose). See also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (FORUM May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names”). In this case, the Disputed Domain Name is confusingly similar to Complainant’s trademarks, and Respondent has made no use of the Disputed Domain Name, factors which should be duly considered in assessing bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy). See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). See also Caravan Club v. Mrgsale, FA 95314 (FORUM Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
The Disputed Domain Name can only be taken as intending to cause confusion among internet users as to the source of the Disputed Domain Name, and thus, the Disputed Domain Name must be considered as having been registered and used in bad faith pursuant to Policy ¶4(b)(iv), with no good faith use possible. More specifically, where the Disputed Domain Name that incorporates Complainant’s famous TD and TD BANK trademarks in their entirety while adding the geographically descriptive term “ca,” which has an obvious connection to Complainant, there is no plausible good-faith reason or logic for Respondent to have registered the Disputed Domain Name, and “…the only feasible explanation for Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith.” See Vevo LLC v. Ming Tuff, FA 1440981 (FORUM May 29, 2012). Further, considering these circumstances, any use of the Disputed Domain Name whatsoever, whether actual or theoretical, would have to be in bad faith. See Indymac Bank v. Ebeyer, FA 0175292 (FORUM Sept. 19, 2003) (Panel holding “there is no conceivable way [r]espondent could use the disputed domain names such that they would not infringe on [c]omplainant’s INDYMAC mark, and therefore it is illogical to await [r]espondent’s use of the domain names to find bad faith use”).
Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”). See also RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
Finally, on balance of the facts set forth above, it is more likely than not that Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Disputed Domain Name in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., FA D2014-1754 (WIPO Jan 12, 2014) (“the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.”)
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant uses the TD BANK mark in connection with its business as one of North America’s largest banks. Complainant owns the mark through its numerous trademark registrations with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3788055, registered May 11, 2010). Registration with the USPTO (or any other governmental authority) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even where a respondent operates and/or resides in a different country. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i).).
Complainant claims Respondent’s disputed domain name is confusingly similar to Complainant’s TD BANK mark. The disputed domain name contains the TD BANK mark in its entirety, less the space, adds a hyphen and the geographical term “ca” and the gTLD “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. See 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)); see also Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also NAED Education and Research Foundation, Inc. v. Domain Administrator / Marketing Express, FA 1602497 (Forum March 23, 2015) (“The Panel agrees that the disputed domain name is identical to the NAED mark, and that the addition of a gTLD to the mark is not sufficient to rebut a finding of confusing similarity under Policy ¶4(a)(i).”). The disputed domain name is confusingly similar to Complainant’s TD BANK mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 lacks rights or legitimate interests in the disputed domain name. The WHOIS information lists “Nathan Haules” as the disputed domain name registrant, which bears no obvious relation to the disputed domain. The Panel may look to the WHOIS information and use common sense to determine Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii) because Respondent has failed to submit a Response. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶4(c)(ii)). This Panel concludes Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Respondent has failed to make any active use of the disputed domain name. The domain’s registration was suspended because Respondent did not verify its email address as required by the domain name hosting company. Respondent is not providing a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(i) and 4(c)(iii), respectively. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out).
The Panel finds Policy ¶4(a)(ii) satisfied.
Policy ¶4(b) is meant to be merely illustrative of how bad faith may be proven, and not an exhaustive listing of the only permissible ways to prove bad faith. Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (FORUM Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant claims Respondent has registered and is using the disputed domain name in bad faith. There is no doubt Complainant’s marks are famous, particularly throughout Canada. Respondent must have had actual notice of Complainant’s marks due to their fame and notoriety. There is no other rational explanation on how Respondent devised this particular combination of letters for a domain name. Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (FORUM Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”).
Complainant claims Respondent has failed to make any active use of the disputed domain name. The domain name indicates it was suspended because Respondent has failed to verify its email address. This is very odd for someone who would have purchased a domain name a little more than 300 days ago. The only reason such a registrant would not confirm how their domain name appears to the public (by simply taking a look at it through a web browser) is someone who doesn’t really intend to use the domain name (but rather intends to resell it). The failure to make an active use of a disputed domain name indicates bad faith under Policy ¶4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”). Respondent’s failure to make an active use of the disputed domain name demonstrates Respondent’s bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tdbank-ca.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, February 2, 2017
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