The Toronto-Dominion Bank v. Katharina Duecker
Claim Number: FA1711001759559
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Katharina Duecker (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbanktransfer.com> (the Domain Name’) , registered with PSI-USA, Inc. dba Domain Robot.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 21, 2017; the Forum received payment on November 21, 2017.
On November 27, 2017, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <tdbanktransfer.com> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 November 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 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@tdbanktransfer.com. Also on November 27, 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 December 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarised as follows:
Complainant is the owner of trade mark registrations for TD in, inter alia, Canada, the USA and the EU, for TD BANK registered, inter alia in Canada and the USA and for TD BANK GROUP in the EU for, inter alia, financial services. It owns TDbank.com and TD.com.
Respondent has added the generic term ‘transfer’ to Complainant’s TD BANK mark. The Domain Name is confusingly similar to Complainant’s marks. The generic terms ‘transfer’ is a term that closely relates to financial services and does not distinguish the Domain Name from Complainant’s marks.
Respondent is not affiliated with Complainant in any way and Complainant has not given Respondent any permission to use Complainant’s marks.
Respondent is not commonly known by the Domain Name.
Respondent is using the Domain Name to redirect users to a web site that resolves to a blank page which is not a bona fide offering of goods or services or a legitimate non commercial or fair use.
The Domain Name was registered in 2017 significantly after Complainant’s first use of its trade marks in 1969.
The combination of terms in the Domain Names which relate to Complainant and its financial services demonstrate a knowledge of Complainant and its business on the part of Respondent.
Passive holding of a Domain Name can constitute bad faith use and registration under the Policy.
There is no good reason why Respondent has registered the Domain Name and it must be intending to cause confusion on the Internet for commercial gain under Policy 4(b)(iv).
Respondent failed to respond to a cease and desist letter from Complainant which is also an indication of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trade mark registrations for TD in, inter alia, Canada, the USA and the EU, for TD BANK registered, inter alia in Canada and the USA and for TD BANK GROUP in the EU for, inter alia, financial services. It owns TDbank.com and TD.com. First use of the TD BANK mark is recorded as 1969 in Canada.
The Domain Name registered in 2017 has not been used other than for a holding page.
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 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.”).
The Domain Name consists of Complainant’s TD BANK trade mark (registered in, inter alia, Canada and the USA for financial services with first use in Canada recorded as 1969), the generic term ‘transfer’ and the gTLD .com. Adding the generic term ‘transfer’ to Complainant’s TD BANK registered mark does not distinguish the Domain Name from it as the TD BANK mark is still clearly recognisable in the Domain Name and the term ‘transfer’ is associated with financial services, the field in which Complainant operates. Complainant clearly has a reputation for its marks in the field of financial services including but not limited to the EU, where Respondent is based.
The addition of terms which are related to Complainant’s business and services supports a finding of confusing similarity. Accordingly the addition of this generic word ‘transfer’ does not serve to distinguish the Domain Name from Complainant’s TD BANK mark, especially bearing in mind that transfers are a normal part of banking, Complainant’s business. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms particularly terms pertaining to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i). )
The gTLD .com is a necessary component of a domain name. It forms a functional role in the Domain Name and does not serve to distinguish the Domain Name from the TD BANK mark. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights. It is, therefore, not necessary to compare the Domain Name to other marks owned by Complainant.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).
There has been no use of the mark. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005)(Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i). )
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing Complainant’s mark. Complainant alleges that Respondent was aware of Complainant and its business at the time of registration and Respondent has not spoken up to say this is not the case.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy. As such, it is not necessary to consider further allegations of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbanktransfer.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 21. 2017
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