The Toronto-Dominion Bank v. Leonard Ziolkowski / Tom Dunham
Claim Number: FA1902001830640
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Leonard Ziolkowski / Tom Dunham (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <accesstdbank.com> and <tdbankaccess.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 20, 2019; the Forum received payment on February 20, 2019.
On February 21, 2019, eNom, LLC confirmed by e-mail to the Forum that the <accesstdbank.com> and <tdbankaccess.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. 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 March 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2019 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@accesstdbank.com and postmaster@tdbankaccess.com. Also on March 5, 2019, 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 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant has rights in the TD BANK mark through its registration with the Canadian Intellectual Property Organization (“CIPO”) (e.g. Reg. No. TMA549396, registered Aug. 7, 2001) and with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,788,055, registered May 11, 2010). See Compl. Ex. A. Respondent’s <accesstdbank.com> and <tdbankaccess.com> domain names are confusingly similar to Complainant’s mark as they each add the generic term “access” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <accesstdbank.com> and <tdbankaccess.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the <tdbankaccess.com> domain name redirects to the <accesstdbank.com> domain name, which attempts to duplicate Complainant’s official website. See Compl. Exs. F (Respondent’s domains) and H (Complainant’s domain).
Respondent registered and uses the <accesstdbank.com> and <tdbankaccess.com> domain names in bad faith. Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website located at the disputed domain names. See Compl. Exs. F and H. Further, Respondent clearly had actual knowledge of Complainant’s mark as Respondent incorporated the entire mark in the domain names, and Complainant has generated significant international fame.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Respondent registered the disputed domain names on November 15, 2018.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends the following (1) the domain names were registered on the same date, November 15, 2018; (2) the <tdbankaccess.com> domain name redirects users to the other domain name, <accesstdbank.com>; (3) both domain names were registered with the same registrar; and both domain names used identical name servers.
As such, the Panel finds that Complainant has adduced sufficient evidence to support the conclusion that both disputed domain names herein are controlled by the same entity and, therefore, the Panel will treat Respondents as one.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the dispute domain names by merely adding the generic word “access” and the g TLD “.com” to Complainant’s trademark. This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in or to the dispute domain names. Respondent has no right, permission or license to register the disputed domain names. Respondent is not commonly known by the dispute domain names. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain names amount to attempts to duplicate Complainant’s official website. See Compl. Exs. F (Respondent’s domains) and H (Complainant’s domain).
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain names.
Additionally, Respondent has engaged in bad faith use and registration of the disputed domain names. Complainant claims that Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website located at the disputed domain names. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides a screenshot of Respondent webpage along with its own, both of which display the TD BANK mark along with banking services and a green color scheme. See Compl. Exs. F and H. Complainant also provides evidence of the redirection from one of the disputed domain names to the other. See Compl. Ex. F.
Accordingly, the Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TD BANK mark at the time of registering the disputed domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is further evidence of bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given Respondent’s incorporation of the entire mark in the domain names and that Complainant has generated significant international fame. The Panel finds, therefore, that Respondent had actual knowledge of Complainant’s rights and interests in and to its trademark prior to registering the disputed domain names.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <accesstdbank.com> and <tdbankaccess.com> domain names be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: March 31, 2019
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