The Toronto-Dominion Bank v. Pat Baeza
Claim Number: FA1701001714182
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Pat Baeza (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <biz-tdbank.com>, registered with Google Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2017; the Forum received payment on January 25, 2017.
On January 27, 2017, Google Inc. confirmed by e-mail to the Forum that the <biz-tdbank.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. 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 January 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2017 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@biz-tdbank.com. Also on January 30, 2017, 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 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant uses the TD BANK mark in connection with its business in financial, banking and related businesses. Complainant owns the TD BANK mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3788055, registered June 9, 2009). The <biz-tdbank.com> domain name[1] is confusingly similar to Complainant’s TD BANK mark, as Respondent has simply attached the generic abbreviation “biz,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
2. Respondent lacks rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, as evidenced by the available WHOIS information.
3. Further, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <biz-tdbank.com> domain name. Rather, Respondent uses the domain name to redirect Internet users to a website that resolves to a blank page and lacks content.
4. Respondent has engaged in bad faith under Policy ¶ 4(a)(iii). Respondent has failed to make an active use of the domain name.
5. Further, due to the fame of Complainant’s mark and its multiple trademark registrations, it is inconceivable that Respondent registered the <biz-tdbank.com> domain name without actual and/or constructive knowledge of Complainant and its rights in the TD BANK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TD BANK mark. Respondent’s domain name is confusingly similar to Complainant’s TD BANK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <biz-tdbank.com> domain name and that Respondent registered and uses the domain name in bad faith.
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.”).
Complainant uses the TD BANK mark in connection with its business in financial, banking and related businesses. Complainant owns the TD BANK mark through numerous trademark registrations, including with the USPTO (e.g., Reg. No. 3788055, registered June 9, 2009). Thus, Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant argues that the <biz-tdbank.com> domain name is confusingly similar to the TD BANK mark under Policy ¶ 4(a)(i), as Respondent has utilized the mark in its entirety and additionally simply attached the generic abbreviation “biz,” a hyphen, and the generic top-level domain (“gTLD”) “.com.” Such changes are insufficient to distinguish a domain name from a mark in which a complainant has rights. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that the <biz-tdbank.com> domain name is confusingly similar to Complainant’s TD BANK mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <biz-tdbank.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights or legitimate interests in the <biz-tdbank.com> domain name. Complainant asserts that Respondent is not commonly known by the domain name. To support this argument, Complainant points to the available WHOIS information for the domain name, which lists “Pat Baeza” as registrant. Complainant also notes that Respondent is neither licensed nor authorized to use the TD BANK mark in any way. Thus, given the lack of evidence to find otherwise, the Panel holds that Respondent is not commonly known by the <biz-tdbank.com> domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant also argues that Respondent has failed to provide a bona fide offering of goods and services, or a legitimate noncommercial or fair use of the domain name. Rather, Complainant has shown that Respondent uses the domain name to redirect Internet users to a website with no content. Under these circumstances Complainant has shown that Respondent’s use of the domain name lacks a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has shown that Respondent has failed to make any active use of the <biz-tdbank.com> domain name. Such behavior has been found to amount to bad faith under Policy ¶ 4(a)(iii). Past panels have agreed with similar arguments. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Finally, Complainant argues that due to the fame of Complainant’s mark and its multiple trademark registrations, it is inconceivable that Respondent registered the <biz-tdbank.com> domain name without actual knowledge of Complainant and its rights in the TD BANK mark. The Panel agrees and holds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”).
The Panel finds Complainant has satisfied 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 <biz-tdbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 6, 2017
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