DECISION

 

The Toronto-Dominion Bank v. td bank

Claim Number: FA1504001615370

 

PARTIES

Complainant is The Toronto-Dominion Bank (“Complainant”), Canada.  Respondent is td bank (“Respondent”), represented by John J. Reidy of AT&T Services Inc., Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <tdbankofhomestead.com> and <tdfinancialservicesofhomestead.com>, registered with Melbourne IT Ltd.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 20, 2015; the Forum received payment on April 20, 2015.

 

On April 26, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <tdbankofhomestead.com> and <tdfinancialservicesofhomestead.com> domain names are registered with Melbourne IT Ltd and that Respondent is the current registrant of the names.  Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2015 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@tdbankofhomestead.com, postmaster@tdfinancialservicesofhomestead.com.  Also on April 27, 2015, 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 May 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in TD and TD BANK and alleges that the disputed domain names are confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant provides banking and financial services by reference to the trademarks, TD and TD BANK;

2.    Complainant owns United States Trademark Reg. No. 3,788,055, registered May 11, 2010 for the trademark TD BANK;

3.    Complainant owns United States Trademark Reg. No. 1,649,009, registered June 25, 1991 for the trademark TD;

4.    the disputed domain names were registered on February 28, 2014;

5.    the domain names redirect Internet users to websites which are under construction; and

6.    there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.

 

DISCUSSION

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(e), 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 (Nat. Arb. 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.”).

 

Identical or confusingly similar trademark

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.  Since Complainant provides evidence of its United States national registrations for the trademarks TD and TD BANK the Panel is satisfied that it has trademark rights in those terms (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

 

For the purposes of assessing the confusing similarity of the trademark and the domain names, the gTLD, “.com”, can be either ignored (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The most relevant comparisons then reduce to the trademark TD BANK with the term, tdbankofhomestead, and the trademark TD with the term, tdfinancialservicesofhomestead.  In both cases the terms are confusingly similar to the respective trademark.  In the former case the trademark is merely combined with the placename of a township in Florida, USA. In the latter case the trademark is combined with a descriptive term “financial services” and the same placename (see Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) finding addition of the term “batteries,” which described the complainant’s products insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark; see also BPM Prods., Inc. v. Bog, FA 125814 (Nat. Arb. Forum Nov. 14, 2002) (“Respondent’s addition of “Salem” does not distinguish the domain name from Complainant’s mark because ‘Salem’ is the city where Complainant’s Halloween festival takes place.”)). 

 

Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).

 

The domain names are not meaningfully used and so there is no evidence that they have been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  There is no evidence that Respondent has any trademark rights.

 

Some attention must be given to the fact that the publicly available WHOIS information identifies Respondent as “td bank”.  Complainant operates a branch of its bank in Homestead, Florida. Details show that Respondent as having given the address in Florida of that branch.  Nevertheless, Complainant denies any association with the holder of the domain name. There is no other evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization. Panel assumes then that the WHOIS details do not honestly identify the true owner or true address and so there is no convincing evidence that Respondent might be commonly known by the disputed domain names. 

 

Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names.  In the absence of a Response, those cases are not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Panel notes that Complainant does not reply on those scenarios and argues that the domain names were registered in bad faith and used in bad faith (see Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).

 

Panel finds bad faith registration and bad faith use.  The (false) WHOIS data shows that Respondent was aware of and targeted Complainant and its trademarks (see Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); see also McDonald’s Corp. v. Holy See, FA 155458 (Nat. Arb. Forum June 27, 2003) holding that the respondent’s use of falsified registration information was evidence that the domain name was registered in bad faith).

 

Further, the use has been in bad faith in keeping with either the line of argument that in certain circumstances, such as these here, passive holding is enough (see Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) or in line with the argument that the redirection of Internet users to meaningless sites still under construction is bad faith use.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tdbankofhomestead.com> and <tdfinancialservicesofhomestead.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  June 1, 2015

 

 

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