The Toronto-Dominion Bank v. DAVID BUFFY
Claim Number: FA1707001741433
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is DAVID BUFFY (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <tdbank-validation.com> and <tdcanadapersonal-updates.com>, registered with Fastdomain Inc. and Namecheap Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2017; the Forum received payment on July 25, 2017.
On July 26, 2017 and July 28, 2017, Fastdomain Inc. and Namecheap Inc. confirmed by e-mail to the Forum that the <tdbank-validation.com> and <tdcanadapersonal-updates.com> domain names are registered with Fastdomain Inc. and Namecheap Inc., and that Respondent is the current registrant of the names. Fastdomain Inc. and Namecheap Inc. have verified that Respondent is bound by the Fastdomain Inc. and Namecheap Inc. registration agreements 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 July 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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-validation.com, postmaster@tdcanadapersonal-updates.com. Also on July 31, 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 August 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <tdbank-validation.com> and <tdcanadapersonal-updates.com> domain names are confusingly similar to Complainant’s TD and TD BANK marks.
2. Respondent does not have any rights or legitimate interests in the <tdbank-validation.com> and <tdcanadapersonal-updates.com> domain names.
3. Respondent registered and uses the <tdbank-validation.com> and <tdcanadapersonal-updates.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the TD and TD BANK marks for financial services, and has registered the TD mark (Reg. No. TMA396087, registered Mar. 20, 1992) and the TD BANK mark (Reg. No. TMA549396, registered Aug. 7, 2001) with the Canadian Intellectual Property Office (“CIPO”).
Respondent registered both the <tdbank-validation.com> and the <tdcanadapersonal-updates.com> domain names on February 4, 2017, and used them to resolve to a website offering competing services. The disputed domain names now resolve to an inactive site.
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 Panel finds that Complainant has established rights in the TD and TD BANK marks through registration with the CIPO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights).
Respondent’s <tdbank-validation.com> and <tdcanadapersonal-updates.com> domain names each contain one of Complainant’s marks and add generic terms and hyphens, along with the generic top-level domain (“gTLD”) “.com.”. These changes do not sufficiently distinguish a domain name from a mark for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s marks.
The Panel finds that Complainant has satisfied Policy ¶4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 contends that Respondent has no rights or legitimate interests in the <tdbank-validation.com> and <tdcanadapersonal-updates.com> domain names. Complainant alleges that Respondent is not affiliated with Complainant, is not known by the disputed domain names, and has no permission to use the disputed domain names. The WHOIS identifies “David Buffy” as the registrant of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (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); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant argues that 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 as the domain names resolved to a website that contains links to services that directly compete with Complainant, presumably to commercially benefit from pay-per-click fees. Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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.”). Complainant provides a screenshot of the previously resolving webpage that contains links such as “Online Banking Services.” Therefore, the Panel finds that Respondent’s offering of competing hyperlinks fails to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant contends that the disputed domain names currently redirect users to a website that lacks any content, and provides a screenshot showing the message “Domain is parked.” The Panel finds that Respondent’s inactive use fails to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). 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).”).
The Panel finds that Complainant has satisfied Policy ¶4(a)(ii).
Complainant demonstrates that Respondent registered and uses the <tdbank-validation.com> and <tdcanadapersonal-updates.com> domain names in bad faith as the resolving webpage previously displayed links to Complainant’s competitors, presumably for commercial gain. Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iv). 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)). Consequently, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant shows that Respondent currently inactively holds the disputed domain names, which also constitutes bad faith registration and use 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).”).
Complainant contends that Respondent must have had actual knowledge of the marks due to the fact that Complainant is the second largest bank in Canada, and the sixth largest bank in North America. The Panel agrees, also noting the direct competition with Complainant, and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names, further bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbank-validation.com> and <tdcanadapersonal-updates.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 28, 2017
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