The Toronto-Dominion Bank v. Anthony Cinelli
Claim Number: FA1702001716316
Complainant is The Toronto-Dominion Bank ("Complainant"), Canada. Respondent is Anthony Cinelli ("Respondent"), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbanknearme.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2017; the Forum received payment on February 7, 2017.
On February 8, 2017, GoDaddy.com, LLC confirmed by email to the Forum that the <tdbanknearme.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 February 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@tdbanknearme.com. Also on February 8, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 March 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is the second largest bank in Canada, and the sixth largest in North America. Complainant was formed by a merger of two older banks in 1955. Complainant has over 85,000 employees and over 22 million clients worldwide. Complainant has used TD BANK and related marks for its goods and services since 1969. Complainant holds trademark registrations for TD BANK in the United States and Canada. Complainant claims that its brand is well recognized globally, citing various surveys that rank it among the world's most valuable brands.
The disputed domain name <tdbanknearme.com> was registered by Respondent in November 2016. Complainant states that Respondent is not sponsored by or affiliated with Complainant, has not been given permission to use Complainant's mark, and is not commonly known by the disputed domain name. Complainant states further that the disputed domain name redirects Internet users to a website featuring links to third-party websites offering services that compete with those offered by Complainant, from which Respondent presumably receives pay-per-click fees. In addition, Complainant notes that Respondent has registered other domain names that combine well-known trademarks with the term "near me," including <avisnearme.com>, <bpnearme.com>, <chevronnearme.com>, and others.
On these grounds Complainant contends that the disputed domain name is confusingly similar to a mark in which it has rights; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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 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 name <tdbanknearme.com> combines Complainant's registered mark TD BANK with the generic term "near me" (omitting spaces) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Toronto-Dominion Bank v. George Billis, FA 1698128 (Forum Nov. 10, 2016) (finding <tdbanklocations.nyc> confusingly similar to TD BANK); Wal-Mart Stores, Inc. v. Domains by Proxy, LLC / Ryan Durso, Three Phoenix, D2015-1889 (WIPO Dec. 23, 2015) (finding <nearestwalmart.com> confusingly similar to WALMART); Inter Ikea Systems B.V. v. Ellen Feldman, D2011-1960 (WIPO Dec. 20, 2011) (finding <ikeastorelocator.com> confusingly similar to IKEA). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's well-known registered mark, and its sole apparent use has been in connection with a website comprised of sponsored advertising links, including links to competitors of Complainant. The Panel notes that this website appears to be a default parking page generated by the registrar, indicating that Respondent may not have made any active use of the disputed domain name. In any event, Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name clearly refers to Complainant's well-known mark, and it is being used to promote services that compete directly with those offered by Complainant. Respondent has registered other domain names that similarly combine well-known marks with the generic term "near me." Under the circumstances, the Panel infers that Respondent was aware of Complainant or its mark at all relevant times, and that Respondent registered the domain name with the intent to use it to profit from confusion with Complainant's mark. See, e.g., Nutri/System IPHC, Inc. v. Jushita Rahman, FA 1689153 (Forum Sept. 19, 2016) (finding bad faith registration and use under similar circumstances); Toronto-Dominion Bank v. Zhichao Yang, FA 1672938 (Forum June 3, 2016) (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbanknearme.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 7, 2017
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