The Toronto-Dominion Bank v. Pearl Admin / Pearl Advertising
Claim Number: FA1801001769755
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Pearl Admin / Pearl Advertising (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <easywebtdcanadatrust.com> (the Domain Name), registered with Tucows Domains 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.
Dawn Osborne 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, Tucows Domains Inc. confirmed by e-mail to the Forum that the Domain Name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 January 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 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@easywebtdcanadatrust.com. Also on January 31, 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 February 22, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 owns a number of trade mark registrations in Canada and the USA consisting of or including TD with first use recorded as 1969. The trade marks CANADA TRUST and EASYWEB are owned by a company in Complainant’s group in Canada and have been registered since 1993 and 1998 respectively. These marks are registered and used in relation to financial services. Complainant owns canadatrust.com.
Previous panels have held that a domain name that combines several trade marks associated with a Complainant must be considered confusingly similar to each of those trade marks.
The relevant comparison is to be made between the second level portion of the Domain Name and Complainant’s trade marks.
Respondent is not affiliated with Complainant in any way and Complainant has not given Respondent permission to use Complainant’s trade marks in any manner.
Respondent is not commonly known by the Domain Name.
The Domain Name redirects Internet users to a web site promoting the services of Norwegian Cruise Line. This is not a bona fide offering of goods and services or a legitimate non commercial or fair use.
The Domain Name was registered significantly after Complainant obtained rights in the TD mark. Respondent does not have any rights or legitimate interests in the Domain Name.
By combining Complainant’s TD mark with EASYWEB and CANADA TRUST Respondent has demonstrated actual knowledge of Complainant’s brand and business.
The Domain Name can only be taken as intending to cause confusion amongst Internet Users as to the source of the Domain Name and must be registered and used in bad faith pursuant to Policy 4 (b)(iv).
The Domain Name occasionally resolves to a web site that attempts to infect internet user’s computers with malware.
Respondent has ignored Complainant’s attempts to resolve the dispute outside of these proceedings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a number of trade mark registrations in Canada and the USA consisting of or including TD with first use recorded as 1969. The trade marks CANADA TRUST and EASYWEB are owned by a company in Complainant’s group in Canada and have been registered since 1993 and 1998 respectively. These marks are registered and used in relation to financial services. Complainant owns canadatrust.com.
The Domain Name registered in 2005 has been pointed to third party commercial web sites not connected with Complainant
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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's TD mark (which is registered, inter alia in USA and Canada for financial services and has been used since 1969), the EASYWEB and CANADA TRUST marks (which are registered in Canada for financial services by a company in Complainant’s group and which have been registered since 1993 and 1998) and the gTLD .com. The Panel agrees that combining three marks associated with Complainant or members of its financial group does not distinguish the Domain Name from Complainant's TD trade mark pursuant to the Policy. In fact it will certainly add to confusion.
The gTLD .com 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 of the Policy to the TD mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its 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).
The web site to which the Domain Name redirects has offered third party commercial services not connected with Complainant. It did not make it clear that there was no commercial connection with Complainant, The Panel finds this use confusing. As such it cannot amount to the bona fide offering of goods and services. See Seiko Kabushiki Keisha v CS into Tech, FA 198795 (Forum Dec 6, 2003) (Diverting customers who are looking for products related to a particular mark with a reputation to a web site unrelated to the mark is not a bona fide offering of goods and services under Policy 4 ( c ) (i) nor does it represent a non commercial or fair use under Policy 4 (c)(iii).)
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
In the opinion of the Panel the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it offers commercial services under a Domain Name containing Complainant’s TD mark and the EASYWEB and CANADA TRUST marks owned by a member of Complainant’s group. The use of Complainant's TD word mark in proximity with the marks owned by another member of Complainant Group shows that it is highly likely that Respondent was aware of Complainant and its business at the time of its acquisition of the Domain Name. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. (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 Respondent was diverting Internet users searching for Complainant to another web site and likely profiting).
As such, the Panel believes 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 under para 4(b)(iv) and 4 (b)(iii). It is not necessary to consider any further alleged grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <easywebtdcanadatrust.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: February 26, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page