The Toronto-Dominion Bank v. Usher Raymond
Claim Number: FA1508001635462
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Usher Raymond (“Respondent”), CA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <td-easywebcustomersupport.com>, registered with TLD Registrar Solutions Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 28, 2015; the Forum received payment on August 28, 2015.
On August 30, 2015, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <td-easywebcustomersupport.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions 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 August 31, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@td-easywebcustomersupport.com. Also on August 31, 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 September 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it owns trademark registrations for the TD mark with the United States Patent and Trademark Office dating back to 1989; as well as the EASYWEB mark with the Canadian Intellectual Property Office (“CIPO”), dating back to 1998. The marks, and related marks such as TD BANK, are used in connection with banking and financial services. The disputed domain name is confusingly similar to both the TD and EASYWEB trademarks because the domain name contains both marks in their entirety and makes only a few minor alterations, such as: adding a hyphen in between both marks, adding the generic phrase “customer support,” and adding the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(iii). Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent’s failure to actively use the disputed domain name shows that the domain name is not being used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has engaged in bad faith registration and use. Respondent has created a likelihood of confusion from which commercial profit is sought. Further, Respondent had actual knowledge of Complainant’s trademark rights in both marks at the time the disputed domain name was registered. The disputed domain name resolves to an inactive site and is not being used; such passive holding of a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the registered trademarks TD and EASYWEB, with rights dating back, respectively, to 1989 and 1998. The marks are well known and are used to market banking services around the world.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise granted permission to Respondent to use its mark
The disputed domain name resolves to a page stating that the web site is not available.
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.”).
Complainant argues that the disputed domain name is confusingly similar to both the TD and EASYWEB trademarks. The domain name contains both marks in their entirety and makes only a few minor alterations, such as: adding a hyphen in between both marks, adding the generic phrase “customer support,” and adding the gTLD “.com.” Panels have been overwhelmingly consistent in holding that the addition of the gTLD “.com” or punctuation-related alterations (such as adding hyphens) cannot distinguish a domain name from the trademark(s) at issue. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). The addition of generic phrases has also been found by prior panels to be of no consequence. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Further, prior panels have also established a confusing similarity where the domain name combines two marks in which the complainant has established rights. See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks).
Thus, the Panel finds that the disputed domain name is confusingly similar to both the TD and EASYWEB trademarks under Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known by the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use Complainant’s marks in domain names. The record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The disputed domain name resolves to a webpage containing a message reading “This webpage is not available.” Prior panels have found that, in such situations, the respondent is not actively using the domain name and does not have rights under Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Further, where a respondent has registered and used a domain name in bad faith (see the discussion below), that respondent cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002 0701 (WIPO, Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO, Oct. 13, 2000).
Thus, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent has not responded. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent registered the disputed domain name because of the reputation of the Complainant’s trademark and that Respondent did not have a legitimate use in mind.
But the Panel must still determine whether Respondent has registered and is using the disputed domain name in bad faith. Since there is no direct evidence of what Respondent intends to do with the disputed domain name, nor on how it will be using the e-mails associated with the disputed domain name, the Panel will have to make inferences from the available facts.
The guiding precedent is Telstra Corporation Limited v. Nuclear Marshmallows, D2000‑0003 (WIPO, Feb. 18, 2000). See also paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Although there are significant differences in the facts of the present case and the facts of the Telstra case, nevertheless the inferences made by the panel in the Telstra case do appear relevant for the present case. (The reasoning and wording below are directly derived from those of the Telstra case.)
In particular, this Panel, as did the Telstra panel, must determine whether, in the circumstances of this particular case, the passive holding of the disputed domain name by Respondent amounts to Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) the Complainant’s trademark has a strong reputation and is widely known,
(ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name,
(iii) it is difficult to conceive of any plausible actual or contemplated active use of the disputed domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, an infringement of Complainant’s rights under trademark law, or a violation of paragraph 4(b)(iv) of the Policy.
In light of these particular circumstances, the Panel concludes that Respondent’s passive holding of the disputed domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name is being used in bad faith by Respondent.
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-easywebcustomersupport.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 25, 2015
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