The Toronto-Dominion Bank v. Los Angeles news film / Los Angeles news
Claim Number: FA1903001835263
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Los Angeles news film / Los Angeles news (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bankoftd.com>, <tdcar.com>, <tdnews.com>, <tdschool.com>, and <tdtickets.com>, registered with Sea Wasp, 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.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2019; the Forum received payment on March 21, 2019.
On March 25, 2019, Sea Wasp, LLC confirmed by e-mail to the Forum that the <bankoftd.com>, <tdcar.com>, <tdnews.com>, <tdschool.com>, and <tdtickets.com> domain names are registered with Sea Wasp, LLC and that Respondent is the current registrant of the names. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 April 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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@bankoftd.com, postmaster@tdcar.com, postmaster@tdnews.com, postmaster@tdschool.com, and postmaster@tdtickets.com. Also on April 2, 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.
A timely Response was received and determined to be complete on April 16, 2019.
On April 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff 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.
Complainant requests that the domain names 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 (e.g. Reg. No. TMA396087, registered Mar. 20, 1992) and TD BANK (e.g. Reg. No. TMA549396, registered Aug. 7, 2001) marks through its registration of the marks with the Canadian Intellectual Property Office (“CIPO”). See Compl. Ex. A. Respondent’s <bankoftd.com>, <tdcar.com>, <tdnews.com>, <tdschool.com>, and <tdtickets.com> domain names are confusingly similar to Complainant’s TD mark as they each add a generic and/or descriptive term (“bankof,” “car,” “news,” “school,” or “tickets”) along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <bankoftd.com>, <tdcar.com>, <tdnews.com>, <tdschool.com>, and <tdtickets.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 <bankoftd.com>, <tdnews.com>, and <tdschool.com> domain names redirect Internet users to websites that resolve to blank pages and lack content. See Compl. Ex. F. Further, Respondent currently uses the <tdcar.com> and <tdtickets.com> domain names, and previously used the <bankoftd.com> domain name, to discuss the shutdown and pending lawsuit associated with the company South32, which is completely unrelated to Complainant. See Compl. Ex. F.
Respondent registered and uses the <bankoftd.com>, <tdcar.com>, <tdnews.com>, <tdschool.com>, and <tdtickets.com> domain names in bad faith. Respondent has exhibited a pattern of registering confusingly similar domain names, as it owns the five domain names at issue in the current proceeding along with other domain names which infringe on famous third-party marks. See Amend. Compl. pg. 9. Next, Respondent registered the domain names to cause confusion among internet users as to the source of the domain names. Additionally, Respondent currently uses the <tdcar.com> and <tdtickets.com> domain names, and previously used the <bankoftd.com> domain name, to discuss a subject matter completely unrelated to Complainant’s business, which causes a disruption. See Compl. Ex. F. Moreover, the <bankoftd.com>, <tdnews.com>, and <tdschool.com> domain names currently resolve to inactive sites and are not being used. See Compl. Ex. F. Further, Respondent, by registering domain names so closely resembling Complainant’s famous and well-known TD mark, knew or should have known of Complainant’s rights in the mark prior to registering the domain names at issue. Finally, Respondent failed to respond to Complainant’s attempts to resolve this matter outside of legal proceedings. See Compl. Ex. I (cease and desist letters sent to Respondent).
B. Respondent
Respondent registered the domain names over sixteen (16) years ago for the reason of showing movie projects. Respondent has no connection with Complainant, and does not compete with Complainant.
Complainant has rights in the TD and TD BANK marks and uses them in connection with bank related services. Respondent registered the disputed domain names which are confusingly similar and may be associated with Complainant’s marks. Respondent has neither filed evidence to prove legitimate interest on the domain name nor a bona fide offering of goods or services or a legitimate noncommercial or fair use.
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.
Complainant owns rights in the TD (e.g. Reg. No. TMA396087, registered Mar. 20, 1992) and TD BANK (e.g. Reg. No. TMA549396, registered Aug. 7, 2001) marks through its registration of the marks with the CIPO. See Compl. Ex. A. Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. Reggie Rags, FA 1778853 (Forum Apr. 19, 2018) (“Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the TD and TD BANK marks for the purposes of Policy ¶ 4(a)(i).
Respondent’s <bankoftd.com>, <tdcar.com>, <tdnews.com>, <tdschool.com>, and <tdtickets.com> domain names are confusingly similar to Complainant’s TD mark as they each add a generic and/or descriptive term (“bankof,” “car,” “news,” “school,” or “tickets”) along with the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). The Panel finds that the at-issue domain names are confusingly similar to the TD mark under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the <bankoftd.com>, <tdcar.com>, <tdnews.com>, <tdschool.com>, and <tdtickets.com> domain name, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Los Angeles news film / Los Angeles news” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. See Compl. Ex. E. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Further, <bankoftd.com>, <tdnews.com>, and <tdschool.com> domain names redirect Internet users to websites that resolve to blank pages and lack content. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the resolving webpages associated with the three domain names, all of which display the error message “Host Not Found.” See Compl. Ex. F. Accordingly, the Panel finds that Respondent fails to make use of the domain names, failing to use the domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Additionally, Respondent currently uses the <tdcar.com> and <tdtickets.com> domain names, and previously used the <bankoftd.com> domain name, to discuss the shutdown and pending lawsuit associated with the company South32, which is completely unrelated to Complainant. Using a confusingly similar domain in connection with services unrelated to a complainant can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). Complainant provides screenshots of the resolving webpages associated with the two domain names, and previously associated with the <bankoftd.com> domain name, which do appear to contain content relating to “South32 shutdown production $10 Billion dollars lawsuit.” See Compl. Ex. F. As such, the Panel finds that Respondent’s use (and previous use) of the domain names in connection with unrelated services fails to amount to any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
First, Respondent has exhibited a pattern of registering confusingly similar domain names, as it owns the five domain names at issue in the current proceeding along with other domain names which infringe on famous third-party marks. The registration of multiple confusingly similar domain names incorporating famous marks can demonstrate bad faith registration. See Deutsche Telekom AG v. Dana Dudones, FA 1798440 (Forum Sep. 7, 2018) (“Here the same registrant registered the seven disputed domain names over a two-day period [. . .] Thus, the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).”); see also Twitter, Inc. v. nono, FA 1798952 (Forum Aug. 30, 2018) (“A pattern of bad faith registration can be established by a showing of the respondent’s registration of other domain names infringing on famous marks, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii).”). Complainant provides a list of other domain names allegedly owned by Respondent, which include domain names such as <abcdnews.com> and <aevisa.com>. See Amend. Compl. pg. 9. Accordingly, the Panel agrees that Respondent’s registration of multiple domain names incorporating famous marks provides evidence of Respondent’s bad faith under Policy ¶ 4(b)(ii).
Next, Respondent currently uses the <tdcar.com> and <tdtickets.com> domain names, and previously used the <bankoftd.com> domain name, to discuss a subject matter completely unrelated to Complainant’s business, which causes a disruption. Using a confusingly similar domain name in a manner which disrupts a complainant’s business can evince bad faith under Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). As noted above, Complainant provides screenshots of the resolving webpages associated with the two domain names, and previously associated with the <bankoftd.com> domain name, which do appear to contain content relating to “South32 shutdown production $10 Billion dollars lawsuit.” See Compl. Ex. F. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Further, Respondent registered the domain names to cause confusion among internet users as to the source of the domain names. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark can evince bad faith under Policy ¶ 4(b)(iv). See Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“The Panel finds that Respondent used the domain names to create confusion with Complainant’s DELL mark for commercial gain and that Respondent registered the domain names in bad faith under Policy ¶ 4(b)(iv).”). Accordingly, the Panel holds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Additionally, the <bankoftd.com>, <tdnews.com>, and <tdschool.com> domain names currently resolve to inactive sites and are not being used. Inactively holding a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel is reminded of Complainant’s provided screenshots of the resolving webpages associated with the three domain names, all of which display the error message “Host Not Found.” See Compl. Ex. F. As such, the Panel agrees that Respondent’s failure to use the domain names demonstrates Respondent’s bad faith under the Policy.
Moreover, Respondent failed to respond to Complainant’s attempts to resolve this matter outside of legal proceedings. Failure to respond to cease and desist letters may contribute towards a finding of bad faith. See Garrison Keillor, Minnesota Public Radio, Inc. v. Paul Stanton, FA 98422 (Forum Aug. 28, 2001) (Respondent’s failure to respond to Complainant's June 12, 2001, letter further demonstrates Respondent's lack of good faith intent in registration and use of the domain name.). Complainant provides the cease-and-desist letter it allegedly sent to Respondent, to which Complainant claims Respondent failed to respond. See Compl. Ex. I. As such, the Panel uses Respondent’s failure to respond to Complainant’s attempts to resolve the matter amicably as further evidence 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 <bankoftd.com>, <tdcar.com>, <tdnews.com>, <tdschool.com>, and <tdtickets.com> domain names be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: April 29, 2019
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