The Toronto-Dominion Bank v. George Whitehead
Claim Number: FA1804001784412
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is George Whitehead (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <td-app.top>, <td-app-ssl.top>, <td-auth.top>, <td-authenticate.top>, <td-ca.top>, <td-html.top>, <td-idp.top>, <td-idp-ssl.top>, <tdlogin.top>, <td-login.top>, <td-login-com.top>, <td-online.top>, <td-waw.top>, and <td-waw-ssl.top>, registered with Eranet International Limited.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2018; the Forum received payment on April 30, 2018.
On May 3, 2018, Eranet International Limited confirmed by e-mail to the Forum that the <td-app.top>, <td-app-ssl.top>, <td-auth.top>, <td-authenticate.top>, <td-ca.top>, <td-html.top>, <td-idp.top>, <td-idp-ssl.top>, <tdlogin.top>, <td-login.top>, <td-login-com.top>, <td-online.top>, <td-waw.top>, and <td-waw-ssl.top> domain names are registered with Eranet International Limited and that Respondent is the current registrant of the names. Eranet International Limited has verified that Respondent is bound by the Eranet International Limited 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 May 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 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@td-app.top, postmaster@td-app-ssl.top, postmaster@td-auth.top, postmaster@td-authenticate.top, postmaster@td-ca.top, postmaster@td-html.top, postmaster@td-idp.top, postmaster@td-idp-ssl.top, postmaster@tdlogin.top, postmaster@td-login.top, postmaster@td-login-com.top, postmaster@td-online.top, postmaster@td-waw.top, and postmaster@td-waw-ssl.top. Also on May 7, 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 June 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, The Toronto-Dominion Bank, uses the TD mark to provide and market its financial products and services. Complainant has rights in the TD mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,649,009, registered on June 25, 1991) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA644911, registered on July 26, 2005). See Compl. Ex. A. Respondent’s disputed domain names are identical or confusingly similar as they contain Complainant’s TD mark in its entirety, merely adding hyphens, descriptive, generic or geographical terms, and the generic top level domain (“gTLD”) “.top.”
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the TD mark 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 disputed domain names to redirect Internet users to inactive websites.
iii) Respondent has registered and used the disputed domain names in bad faith. Respondent has engaged in a pattern of bad faith registration. Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s websites 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 is inactively holding the disputed domain names. Respondent has employed a privacy service to hide its identity. Respondent has failed to respond to cease-and-desist letters. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the TD and TD BANK marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. The earliest of the disputed domain names was created on February 12, 2018.
2. Complainant has established its rights in the TD and TD BANK marks based upon its registration with the USPTO (e.g. Reg. No. 1,649,009, registered on June 25, 1991) and CIPO (e.g., Reg. No. TMA644911, registered on July 26, 2005).
3. The disputed domain names were resolved to inactive websites.
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 claims rights in the TD and TD BANK marks based upon its registration with the USPTO (e.g. Reg. No. 1,649,009, registered on June 25, 1991) and CIPO (e.g., Reg. No. TMA644911, registered on July 26, 2005). See Compl. Ex. A. Registrations with USPTO and CIPO are sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also 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). Therefore, the Panel finds that Complainant has rights in the TD mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the disputed domain names are confusingly similar to the TD mark as they contain the mark in its entirety merely adding a hyphen, a descriptive, generic, or geographical term, along with the gTLD “.top.” Panels have consistently found that slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar per Policy ¶ 4(a)(i). See 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 agrees with Complainant and finds that the disputed domain names do not contain changes that would sufficiently distinguish them from the TD mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in a 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 argues that Respondent has no rights or legitimate interests in disputed domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the TD mark in any way. Per Policy ¶ 4(c)(ii), WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The Panel notes that the WHOIS information of record identifies registrant of the disputed domain name as “George Whitehead.” See Compl. Ex. E. Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by their failure to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as, instead, Respondent uses the disputed domain names to redirect Internet users to websites that are inactive. When a respondent is not using the disputed domain name in connection with an active website, such a respondent may not be able to avail itself of Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant submits screenshot evidence of the failure of the disputed domain names to resolve to active websites. See Compl. Ex. F. Therefore, the Panel agrees that disputed domain names are inactively used and as such is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent has registered and uses the disputed domain names in bad faith because Respondent displays a pattern of bad faith registration per Policy ¶4(b)(ii). Registering numerous domain names using a third party registered mark may evince a finding of bad faith registration per Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Here, Complainant contends that Respondent’s registration of 14 domain names that each incorporates the TD mark in its entirety demonstrates a pattern of bad faith registration and cybersquatting. The Panel agrees with Complainant and thus, finds that Respondent has engaged in bad faith per Policy ¶ 4(b)(ii).
Complainant argues that Respondent’s failure to make an active use of the disputed domain name evinces bad faith. Respondent’s disputed domain names resolve to inactive websites. See Compl. Ex. F. Panels have held that inactive uses of domain names that are confusingly similar to Complainant’s mark is considered bad faith under Policy ¶ 4(a)(iii). The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) The Complainant is the second largest bank in Canada and sixth largest bank in North America. Complainant’s marks are famous to countless customers around the world, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Finally, Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark. Per Policy ¶ 4(a)(iii), actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant asserts that it is the second largest bank in Canada and sixth largest bank in North America. Complainant’s marks are famous to countless customers around the world. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the TD and TD BANK marks when it registered the disputed domain names, thereby supporting a finding of bad faith under 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 <td-app.top>, <td-app-ssl.top>, <td-auth.top>, <td-authenticate.top>, <td-ca.top>, <td-html.top>, <td-idp.top>, <td-idp-ssl.top>, <tdlogin.top>, <td-login.top>, <td-login-com.top>, <td-online.top>, <td-waw.top>, and <td-waw-ssl.top> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 11, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page