The Toronto-Dominion Bank v. Murphy Andrew
Claim Number: FA1711001759851
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Murphy Andrew (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbkonline.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically November 26, 2017; the Forum received payment November 26, 2017.
On November 28, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <tdbkonline.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 verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 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@tdbkonline.com. Also on November 28, 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 December 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant, The Toronto-Dominion Bank, uses the TD and TD BANK marks to provide and market products and services. Complainant has rights in the TD and TD BANK marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. TD—Reg. No. 1,649,009, registered June 25, 1991; TD BANK—Reg. No. 3,788,055, registered May 11, 2010). See Compl. Ex. A. Respondent’s <tdbkonline.com> is confusingly similar to Complainant’s TD mark as the disputed domain name wholly incorporates the mark, appends the shorthand descriptive term “bkonline” and the “.com” generic top-level-domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <tdbkonline.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the TD and TD BANK marks for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the <tdbkonline.com> domain name in an attempt to pass off as Complainant for Respondent’s commercial gain through Respondent’s appropriation and duplication of Complainant’s logo and website design on the resolving website of the disputed domain name. See Compl. Ex. F.
Respondent registered and uses the <tdbkonline.com> domain name in bad faith. Respondent attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. Respondent had actual knowledge of Complainant’s rights in the TD and TD BANK marks prior to registration of the disputed domain name. Respondent failed to respond to Complainant’s cease and desist letters.
(a) Respondent’s Contentions in this Proceeding:
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <tdbkonline.com> domain name March 9, 2017. See Compl. Ex. E.
Complainant established rights and legitimate interests in its protected mark.
Respondent does not have rights or legitimate interests in Complainant’s protected mark or to the confusingly similar domain name that Respondent registered using that protected mark in its entirety.
Respondent registered and uses the disputed domain name 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 to 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.
Given 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 will draw such inferences as the Panel 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.”)
Identical or Confusingly Similar:
Complainant has legal rights in the TD and TD BANK marks based upon registration with the USPTO (e.g. TD—Reg. No. 1,649,009, registered June 25, 1991; TD BANK—Reg. No. 3,788,055, registered May 11, 2010). See Compl. Ex. A. Registration of a mark with the USPTO is sufficient to establish rights pursuant to Policy ¶ 4(a)(i). 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 per Policy ¶ 4(a)(i).”). The Panel therefore finds that Complainant has rights in the TD and TD BANK marks.
Next, Complainant contends that Respondent’s <tdbkonline.com> is confusingly similar to Complainant’s TD mark as the disputed domain name wholly incorporates the mark, appends the shorthand descriptive term “bkonline” and the “.com” gTLD. Similar changes to a complainant’s mark have been found insufficient to defeat a test for confusing similarity per Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Complainant asserts “bkonline” is a shorthand term for “bank online” and refers to Complainant’s online banking and financial services. The Panel agrees with Complainant and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s marks.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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 <tdbkonline.com> domain name. Where no response is filed, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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). The WHOIS identifies “Murphy Andrew” as the registrant. See Compl. Ex. E. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TD and TD BANK marks. Panels may use these assertions as evidence that a party lacks rights or legitimate interests. See 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 alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and that Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <tdbkonline.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant alleges Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use as, instead, Respondent is using the <tdbkonline.com> domain name in an attempt to pass off as Complainant for Respondent’s commercial gain through Respondent’s appropriation and duplication of Complainant’s logo and website design on the resolving website of the disputed domain name. Use of a disputed domain name by a respondent to pass off as a complainant is not a bona fide offer pursuant to Policy ¶ 4(c)(i) nor is it a noncommercial or fair use under the Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Complainant asserts that Respondent duplicates Complainant’s website in an attempt to pass off and mislead unsuspecting Internet visitors into divulging their personal information. See Compl. Ex. H, F. The Panel agrees with Complainant and finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. Use of a disputed domain name to divert Internet users otherwise seeking a complainant for a respondent’s commercial gain evidences and supports findings of bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant contends Respondent duplicated Complainant’s website to deceive Internet users into providing personal information to Respondent. See Compl. Ex. H, F. The Panel agrees with Complainant and finds that Respondent registered and used the <tdbkonline.com> domain name in bad faith.
Next, Complainant asserts Respondent had actual knowledge of Complainant’s rights in the TD and TD BANK marks prior to registration of the disputed domain name. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional elements in an analysis for bad faith. 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). Actual knowledge of a complainant’s rights in a mark prior to registration of a disputed domain name composed of said mark can be determined by a test of the totality of the circumstances pursuant to Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum 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.”). Complainant asserts Respondent created a confusingly similar domain name and copied Complainant’s own website to an attempt to pass off as Complainant and obtain sensitive personal information from Internet users deceived by Respondent. See Compl. Ex. H, F. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith.
Lastly, Complainant alleges that Respondent failed to respond to Complainant’s cease and desist letters. Failure to respond to a cease and desist letter can support a finding that a respondent registered and used a disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Garrison Keillor, Minnesota Public Radio, Inc. v. Paul Stanton, FA 98422 (Forum Aug. 28, 2001) (Respondent’s failure to respond to Complainant's June 12, 2001, letter further demonstrates Respondent's lack of good faith intent in registration and use of the domain name.). Complainant asserts that it contacted Respondent through cease and desist letters sent by email by Complainant’s representative but that Respondent failed to respond to that communication or any subsequent notices. See Compl. Ex. J. Given that Respondent failed to respond to the Complaint as well, the Panel may consider Respondent’s failure to respond to the cease and desist notice to be further evidence of bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <tdbkonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 5, 2018.
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