The Toronto-Dominion Bank v. GEORGE WASHERE
Claim Number: FA1805001785311
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is GEORGE WASHERE (“Respondent”), Panama
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <esecuretdbank.com>, registered with eNom, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2018; the Forum received payment on May 7, 2018.
On May 7, 2018, eNom, LLC confirmed by e-mail to the Forum that the <esecuretdbank.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 May 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@esecuretdbank.com. Also on May 14, 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 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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 contends as follows:
Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada and has been doing business under the TD and TD BANK marks since 1955.
Complainant asserts rights in the TD and TD BANK marks through registration of such marks with the Canadian Intellectual Property Office (“CIPO”) and/or registration with the U.S. Patent and Trade Mark Office (“USPTO”).
Respondent’s <esecuretdbank.com> domain name is confusingly similar to Complainant’s marks because it merely adds the generic descriptive term “esecure,” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <esecuretdbank.com> domain name because Respondent is not commonly known by the domain name, nor has Complainant given Respondent permission to register a domain name incorporating Complainant’s marks. Further, Respondent has failed to use the domain name in connection with a bona fide offering or legitimate noncommercial or fair use. Instead, the <esecuretdbank.com> domain name addresses a website that features third party links offering products and services in direct competition with those offered by Complainant, as well as other links. Additionally, Respondent is offering to sell the domain name for an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain name.
Respondent registered and is using the <esecuretdbank.com> domain name in bad faith. Respondent offered to sell the domain name for excess out-of-pocket expenses and has refused to respond to Complainant’s cease-and-desist letter. Further, Respondent’s domain name creates a likelihood of confusion with Complainant’s marks and the <esecuretdbank.com> website hosts a variety of third party links that likely create revenue for the Respondent. Additionally, due to the fame and notoriety of Complainant’s marks, Respondent had actual knowledge of Complainant’s rights in the mark prior its registration of the <esecuretdbank.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the TD and TD BANK marks.
Respondent registered the at-issue domain name after Complainant acquired rights in TD and TD BANK.
Respondent’s at-issue domain name is offered for sale and used to display third party links some of which compete 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 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of CIPO or USPTO registrations for its TD and TD BANK trademarks are equally sufficient to demonstrate its rights in such marks for the purposes of Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”).
Respondent’s <esecuretdbank.com> domain name contains Complainant’s TD and/or TD BANK mark, less its space, proceeded by the term “esecure” and then concluded with the top-level domain name “.com.” The alterations to Complainant’s trademarks are insufficient to distinguish the domain name from such trademarks for the purposes of the Policy ¶ 4 (a)(i). In fact, the inclusion of the term “esecure” suggests Complainant’s banking related business and thus adds to any confusion caused by the incorporation of Complainant’s trademarks in the at-issue domain name. Notably, Complainant operates a web address at <https://esecure.tdbank.com> devoted to customer service. Therefore, the Panel finds that Respondent’s <esecuretdbank.com> domain name is confusingly similar to one or more of Complainant’s trademarks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also, Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also, 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).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name list “George Washere” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the at-issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Additionally, Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also, Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Given the forgoing, Complainant’s unrebutted showing that Respondent lacks rights or interests in the at-issue domain name satisfies Complainant’s burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each domain name.
The <esecuretdbank.com> domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding the <esecuretdbank.com> domain name.
First, Complainant shows evidence in the form of <esecuretdbank.com> website screen shots. The screen shots exhibit that Respondent is offering the at-issue domain name for sale in amount in excess of Respondent’s reasonable out-of-pocket expenses. Offering to sell a confusingly similar domain name for more than out of pocket costs indicates Respondent’s bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i)).
Next and as discussed above regarding rights and legitimate interests, Respondent uses the at-issue domain to display webpages which include what appear to be pay-per-click links to third parties, some of whom compete with Complainant. Respondent’s use of <esecuretdbank.com> in this manner shows Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit”).
Finally, Respondent registered the <esecuretdbank.com> domain name knowing that Complainant had trademark rights in the TD and TD BANK marks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks as well as from Respondent’s inclusion of the suggestive term “esecurity” in the domain name. Respondent’s actual knowledge of Complainant's trademarks further indicates that Respondent registered and used the <esecuretdbank.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <esecuretdbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 7, 2018
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