The Toronto-Dominion Bank v. Steve Gold
Claim Number: FA1801001769724
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Steve Gold (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbank.review>, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2018; the Forum received payment on January 31, 2018.
On January 31, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdbank.review> 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, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2018 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.review. Also on February 8, 2018, 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 March 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, The Toronto-Dominion Bank, is the second largest bank in Canada by market capitalization and deposits and the sixth largest bank in North America. Complainant uses its TD BANK mark to promote its products and services and established rights in the mark through registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA549396, registered Aug. 7, 2001) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,788,055, registered May 11, 2010. Respondent’s <tdbank.review> domain name is identical to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) “.review” to the fully incorporated TD BANK mark.
Respondent does not have rights or legitimate interests in the <tdbank.review> domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion. Respondent is not commonly known by the disputed domain name as the WHOIS information of record lists “Steve Gold” as the registrant. Respondent is not using the <tdbank.review> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a website featuring pay-per-click hyperlinks that are unrelated to Complainant’s business.
Respondent registered and used the <tdbank.review> domain name in bad faith. Respondent creates a likelihood of confusion between the domain name and Complainant’s TD mark for Respondent’s financial gain by using the domain name to resolve to a parked website. Expressly hosting a parked webpage also fails to use the domain name in connection with an active site. Further, Respondent registered the domain name with full knowledge of Complainant’s rights in the TD BANK mark. Finally, Respondent failed to respond to Complainant’s attempts to resolve this dispute outside of formal legal proceedings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <tdbank.review> domain name.
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.”).
Complainant contends it has established rights in its TD BANK mark through registration with the CIPO (Reg. No. TMA549396, registered Aug. 7, 2001) and the USPTO (Reg. No. 3,788,055, registered May 11, 2010. Registration of a mark with a trademark authority, such as the CIPO or the USPTO, confers rights in a mark. See THE TORONTO-DOMINION BANK v. Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho, FA 1724017 (Forum May 17, 2017) (finding registrations with the USPTO and CIPO are satisfactory demonstrations of Policy ¶ 4(a)(i) rights). The Panel finds that Complainant has established rights in the TD BANK mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tdbank.review> domain name is identical to Complainant’s mark because it merely appends the gTLD “.review” to the fully incorporated TD BANK mark. The addition of a gTLD does not negate the similarity between a disputed domain name and a mark. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Accordingly, the Panel finds that Respondent’s <tdbank.review> domain name is identical to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the <tdbank.review> domain name, as Complainant has not licensed or otherwise authorized Respondent to use its TD BANK mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by a disputed domain name, the respondent is presumed to lack rights and legitimate interests in a domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <tdbank.review> lists “Steve Gold” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <tdbank.review> domain name.
Complainant contends that Respondent is not using the <tdbank.review> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to resolve to a website featuring pay-per-click hyperlinks that are unrelated to Complainant’s business. Use of a domain name to resolve to a parked webpage that features unrelated pay-per-click hyperlinks may be considered a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the <tdbank.review> domain name’s resolving website, which display hyperlinks such as “Ankara,” “Vehicle Financing,” and “Squash and Racquetball Equipment.” The Panel finds that Respondent used the domain name to resolve to a parked webpage displaying unrelated hyperlinks and finds that Respondent lacks rights and legitimate interests in the at-issue domain name.
Complainant has proved this element.
Complainant alleges that Respondent registered and used the <tdbank.review> domain name in bad faith to create a likelihood of confusion between the domain name and Complainant’s TD mark to host a parked webpage for Respondent’s financial gain. Use of a disputed domain name to cause confusion as to the source, sponsorship, affiliation or endorsement of the content therein for a respondent’s own commercial benefit may be considered bad faith use. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). As previously stated, Complainant provides screenshots of the disputed domain name’s resolving website, which indicate that the site features unrelated pay-per-click hyperlinks. Therefore, the Panel finds that Respondent uses the <tdbank.review> domain name to create confusion with the TD BANK mark and to resolve to a parked website and hold that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the domain name with full knowledge of Complainant’s rights in the TD BANK mark. Actual knowledge of a Complainant’s rights in a mark may evidence bad faith registration. 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 contends that Respondent must have known about Complainant’s rights in the TD BANK mark at the time of registration due to the fame of the mark. A respondent may have actual knowledge of a complainant’s rights in a mark where a mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant contends that its mark is famous because Complainant is the second largest bank in Canada, has more that 85,000 employees and over 22 million clients worldwide. The Panel finds Respondent had actual knowledge of Complainant’s rights in the TD BANK mark at the time of registration and Respondent registered and used the domain name in bad faith.
Complainant has proved this element.
DECISION
Complainant 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.review> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 8, 2018
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