The Toronto-Dominion Bank v. Williams Jimenez / Voztu
Claim Number: FA1712001761017
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Williams Jimenez / Voztu (“Respondent”), Dominican Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadatrustquebec.com> (‘the Domain Name’), registered with Network Solutions, LLC.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2017; the Forum received payment on December 4, 2017.
On December 4, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <tdcanadatrustquebec.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 December 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@tdcanadatrustquebec.com. Also on December 8, 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 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarised as follows:
Complainant is the owner of trade mark registrations for TD in, inter alia, Canada and the USA and for CANADA TRUST in Canada for, inter alia, financial services. It owns TDbank.com and TD.com.
Respondent has added the geographical term ‘quebec’ to Complainant’s TD and CANADA TRUST marks. The Domain Name is confusingly similar to Complainant’s marks. The geographical term ‘quebec’ does not distinguish the Domain Name from Complainant’s marks. Indeed it increases confusion as this place is closely linked and associated with Complainant.
Respondent is not affiliated with Complainant in any way and Complainant has not given Respondent any permission to use Complainant’s marks.
Respondent is not commonly known by the Domain Name.
Respondent is using the Domain Name to redirect users to a web site that resolves to a parked page which lacks content which is not a bona fide offering of goods or services or a legitimate non commercial or fair use.
The Domain Name was registered in 2017 significantly after Complainant’s first use of its trade marks in 1969.
The combination of a geographical term in the Domain Name which relates to Complainant and two of its trade marks demonstrates a knowledge of Complainant and its business on the part of Respondent.
Passive holding of a Domain Name can constitute bad faith use and registration under the Policy.
There is no good reason why Respondent has registered the Domain Name and it must be intending to cause confusion on the Internet for commercial gain under Policy 4(b)(iv).
Respondent has used a privacy service and has failed to respond to a cease and desist letter from Complainant which is also an indication of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trade mark registrations for TD in, inter alia, Canada and the USA. It owns TD.com and canadatrust.com.
The Domain Name has not been 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 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 Domain Name consists of Complainant’s TD trade mark (registered in, inter alia, Canada and the USA for financial services with first use in Canada recorded as 1969), the term ‘canada trust’, the geographical term ‘quebec’ and the gTLD .com. Adding the geographical term ‘quebec’ to Complainant’s TD registered mark does not distinguish the Domain Name from the TD mark as it is still clearly recognisable in the Domain Name and the term ‘quebec’ is a place where Complainant operates. Complainant provided trade mark certificates for CANADA TRUST, but has not explained why it does not appear as trade mark owner on those certificates. However the Panel notes that Complainant does own canadatrust.com which resolves to its main site at TD.com.
The addition of terms which are related to Complainant’s business and services supports a finding of confusing similarity. Accordingly, the addition of the geographic term ‘quebec’ and a term used by Complainant in business ‘Canada trust’ does not serve to distinguish the Domain Name from Complainant’s TD mark especially bearing in mind that trusts are a common feature in the field of financial services and Complainant operates in Canada. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms particularly terms pertaining to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i). ) It is commonly held geographical terms such as ‘quebec’ and ‘Canada’ fail to distinguish a Domain Name for the purposes of Policy 4 (a)(i). See General Motors LLC v Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb 12, 2016).
The gTLD .com is a necessary component of a domain name. It forms a functional role in the Domain Name and does not serve to distinguish the Domain Name from the TD mark. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
Rights or Legitimate Interests
Complainant has not authorised the use of its TD mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).
There has been no use of the mark. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005)(Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i). )
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent has not answered this Complaint or explained why he should be allowed to register a domain name containing Complainant’s TD mark.
The combination of geographical terms in the Domain Name which relates to Complainant and two of its trade marks demonstrate a knowledge of Complainant and its business on the part of Respondent.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanadatrustquebec.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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