The Toronto-Dominion Bank v. DAVID BRAXTON / D Braxton Enterprise
Claim Number: FA1706001734245
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is DAVID BRAXTON / D Braxton Enterprise (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdcanada-trustgroups.com> and <tdcanada-trustgroup.com>, registered with Enom, Llc and 1&1 Internet SE, respectively.
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 June 2, 2017; the Forum received payment on June 2, 2017.
On June 2, 2017 Enom, Llc confirmed by e-mail to the Forum that the <tdcanada-trustgroups.com> domain name is registered with Enom, Llc and that Respondent is the current registrant of the name. Enom, Llc has verified that Respondent is bound by the Enom, 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 June 5, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <tdcanada-trustgroup.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On June 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 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@tdcanada-trustgroups.com, and postmaster@tdcanada-trustgroup.com. Also on June 6, 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 June 28, 2017, 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 provides banking and financial services throughout North America. 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. 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. 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. In conjunction with its business, Complainant uses the marks TD and CANADA TRUST. Complainant registered the TD mark in the United States in 2006 and the CANADA TRUST mark in Canada in 1995. The marks are also registered in other countries around the world.
According to Complainant, the disputed domain names are confusingly similar to Complainant’s TD and CANADA TRUST marks because both domain names incorporate Complainant’s marks in their entirety and merely insert hyphens and add the generic term “group(s)”, which is a reference to Complainant’s business “TD Bank Group”. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its marks. Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial fair use. Instead, Respondent is using the <tdcanada-trustgroups.com> to redirect Internet users to a website that features links to third-party websites, some of which directly compete with Complainant’s business. Further, some of the links on the website directly reference Complainant’s website. Respondent is not using using the <tdcanada-trustgroup.com> domain name. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and is using the disputed domain names in bad faith. The notoriety of Complainant’s mark and associated business allows the inference that Respondent had either actual or constructive notice of Complainant’s rights in the TD and CANADA TRUST marks. A simple Google search would have notified Respondent of Complainant’s rights. Respondent’s attempt to create a likelihood of confusion as to the source, sponsorship and affiliation of its website, for the purpose of attracting Internet users for commercial gain, is also evidence that Respondent has registered the disputed domain name <tdcanada-trustgroups.com> in bad faith. Additionally, the <tdcanada-trustgroup.com> domain name does not resolve to an active website. Furthermore, Respondent used a privacy shield to register the <tdcanada-trustgroups.com> which corroborates a finding of bad faith registration. Finally, Respondent has failed to respond to cease-and-desist letters from Complainant. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks TD and CANADA TRUST and uses them to market financial services around the world. The marks are well known.
Complainant’s rights in its marks date back to at least 2006.
The disputed domain names were registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
One of the disputed domain names resolves to a web site that features links to Complainant’s competitors. The other disputed domain name is not being used.
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 TD and CANADA TRUST marks because both domain names incorporate Complainant’s marks in their entirety and merely insert hypens and add the generic term “group(s)”, which is a reference to Complainant’s business, “TD Bank Group”. The combination of Complainant’s marks has previously been found to elicit confusing similarity. See The Toronto-Dominion Bank v. Trader Inc., FA 1673064 (Forum May 31, 2016) (finding that, “The disputed domain name [<tdcanadatrust.online>] combines Complainant's TD and CANADA TRUST marks, omitting the space and appending the ".online" top-level domain. Such a domain name is confusingly similar to the corresponding marks for purposes of the Policy”). Inserting hyphens cannot eliminate confusing similarity. See Gen. Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding that placing a hyphen in domain name between “General” and “Electric” is confusingly similar to the complainant’s mark). Furthermore, the addition of generic terms, especially when those terms reference Complainant’s business, cannot distinguish the disputed domain names from Complainant’s marks. See Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business). Therefore, the Panel finds that the disputed domain names are confusingly similar, in the sense of the Policy, to Complainant’s marks.
Complainant has not authorized Respondent to use its marks. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “David Braxton” as the registrant name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names.
Respondent is using the <tdcanada-trustgroups.com> to redirect Internet users to a website hosting both links to third party websites and links to Complainant’s website. Using a website to host links to competitors’ websites is not a bona fide offering of goods or services. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that Respondent is not using the disputed domain <tdcanada-trustgroups.com> for a bona fide offering of goods or services or a legitimate noncommercial fair use.
The other disputed domain name, <tdcanada-trustgroup.com> is not being used. Failure to make an active use of a domain name demonstrates that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”). Therefore, the Panel finds that Respondent is not using the <tdcanada-trustgroup.com> domain name for a bona fide offering of goods or services either.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his 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 names.
Indeed, as already noted, the <tdcanada-trustgroups.com> domain name resolves to a website hosting competing links, presumably for pay-per-click referral fees. Hosting competing links at a confusingly similar domain name is evidence that Respondent is using the domain name to attract Internet users for commercial gain and therefore that Respondent has registered and is using the disputed domain name in bad faith. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel finds that Respondent is attempting to create a likelihood of confusion as to the source, sponsorship and affiliation of its website, for the purpose of attracting Internet users for commercial gain. Consequently, the Panel finds that Respondent has registered and is using the <tdcanada-trustgroups.com> domain name in bad faith.
The disputed domain name <tdcanada-trustgroup.com> is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanada-trustgroups.com> and <tdcanada-trustgroup.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 28, 2017
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