The Toronto-Dominion Bank v. kai kai
Claim Number: FA1710001752004
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is kai kai (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is<tdbank-transfer.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2017; the Forum received payment on October 3, 2017.
On October 04, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdbank-transfer.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@tdbank-transfer.com. Also on October 6, 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 October 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the TD BANK mark to market its products and services.
Complainant holds a registration for the TD BANK service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,788,055, registered May 11, 2010.
Respondent registered the domain name <tdbank-transfer.com> on or about June 06, 2017.
The domain name is confusingly similar to Complainant’s TD BANK mark.
Respondent has not been commonly known by the domain name.
Complainant has not granted Respondent a license or other permission to use the TD BANK mark for any purpose.
Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Rather, the domain name does not currently resolve to an active website.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has employed a privacy service to hide its identity, and has failed to respond to Complainant’s cease-and-desist letters.
Respondent registered the domain name with actual knowledge of Complainant’s rights in the TD BANK mark.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the TD BANK service mark for purposes of Policy ¶ 4 (a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registration for a mark sufficiently demonstrated its rights in that mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <tdbank-transfer.com> domain name is confusingly similar to Complainant’s TD BANK service mark. The domain name contains the mark in its entirety, minus only the space between its terms, and adds the descriptive term “transfer,” which relates to an aspect of Complainant’s business, and which is separated from the mark by a hyphen, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010), finding confusing similarity under Policy ¶ 4(a)(i), notwithstanding that:
Respondent’s disputed domain name contains Complainant’s … mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.”
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).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged domain name
<tdbank-transfer.com>, and that Complainant has not authorized Respondent to use the TD BANK mark in any way. Moreover, the pertinent WHOIS information
identifies the registrant of the domain name only as “kai kai,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired right to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).
See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (finding that a respondent was not commonly known by a disputed domain name, as demonstrated by the relevant WHOIS information, and where a UDRP complainant had not licensed or otherwise authorized that respondent to use its mark.). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent is not using the <tdbank-transfer.com> domain name in connection with an active website. In the circumstances described in the Complaint, we conclude that Respondent’s failure actively to use the domain name in the five months since it was registered demonstrates that is neither a
bona fide offering of goods or services by means of it under Policy ¶¶ 4(c)(i) nor a legitimate non-commercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See Kohler Co. v xi long chen, FA 1737910 (Forum August 4, 2017):
Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s [domain name] resolves to an inactive webpage displaying the message “website coming soon!”
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s apparent failure to make any active use of the <tdbank-transfer.com> domain name in the five months since its registration stands, under Policy ¶ 4(a)(iii), as proof of Respondent’s bad faith in registering and using it. See Dermtek Pharaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum November 19, 2013) (finding, under Policy ¶ 4(a)(iii), that because a respondent’s website contained no content related to a contested domain name and instead generated the error message “Error 400- Bad Request,” that respondent had registered and used the domain name in bad faith).
We are also convinced by the evidence that Respondent registered the <tdbank-transfer.com> domain name while knowing of Complainant and its rights in the TD BANK mark. This further exhibits Respondent’s bad faith in registering the domain name. On the point, see, for example, Google Inc. v. Ahmed Humood, FA1411001591796 (Forum January 7, 2015).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <tdbank-transfer.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 6, 2017
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