The Toronto-Dominion Bank v. vibhash kumar
Claim Number: FA1809001808921
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is vibhash kumar (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbanktoronto.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 known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2018; the Forum received payment on September 25, 2018.
On September 27, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdbanktoronto.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 September 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2018 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@tdbanktoronto.com. Also on September 27, 2018, 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 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, The Toronto-Dominion Bank, provides financial, banking and related businesses, goods, and services. Complainant has rights in the TD BANK mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,788,055, registered Jun. 9, 2009). Respondent’s <tdbanktoronto.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s TD BANK mark, and is only differentiated by the addition of a geographic term and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <tdbanktoronto.com> domain name because Respondent is not authorized to use Complainant’s TD BANK mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent fails to make use of the disputed domain name.
Respondent registered and uses the <tdbanktoronto.com> domain name in bad faith because Respondent fails to make active use of the disputed domain name. Additionally, Respondent attempts to confuse Internet users as to the source, sponsorship, affiliation, or connection with Complainant for Respondent’s commercial gain. Finally, Respondent had actual and/or constructive knowledge of Complainant’s rights in the TD BANK mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <tdbanktoronto.com>domain name.
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 claims rights in the TD BANK mark based upon its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (FORUM Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of the Trademark Electronic Search System (“TESS”) results for the TD BANK mark (e.g., Reg. No. 3,788,055, registered May 11, 2010). The Panel finds that Complainant has sufficiently demonstrated its rights in the TD BANK mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tdbanktoronto.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the TD BANK mark while adding a geographic term and a gTLD. The addition of a geographic term and a gTLD to complainant’s mark does not sufficiently mitigate any confusing similarity between complainant’s mark and a disputed domain name. See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). Here, Respondent wholly incorporates Complainant’s TD BANK mark plus the geographic term “Toronto” and the “.com” gTLD. The Panel finds that Respondent’s <tdbanktoronto.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <tdbanktoronto.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the TD BANK mark. Where a response is lacking, WHOIS information may be used to identify a respondent per 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). Additionally, lack of authorization from complainant to use its mark may support a finding that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides the WHOIS information which identifies Respondent as “Vibhash Kumar.” Furthermore, no information of the record indicates that Respondent was authorized to use Complainant’s TD BANK mark in any fashion. The Panel finds Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges the Respondent fails to use <tdbanktoronto.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent fails to make an active use of the disputed domain name. Failure to make an active use of a disputed domain name may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ (c)(i) or (iii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Here, Complainant provides screenshots of the disputed domain name’s resolving webpage which displays an error page which lacks content. The Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) and has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant alleges that Respondent registered and uses the <tdbanktoronto.com> domain name in bad faith because Respondent attempts to cause confusion among Internet users as to the source of the disputed domain name. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or connection with complainant in order to commercially gain is evidence of bad faith registration under Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues Respondent includes the entire mark and the city “Toronto,” where Complainant is headquartered, in the disputed domain name in an attempt to cause confusion, mistake, and deception by means of the disputed domain name. The Panel finds, per Policy ¶ 4(b)(iv), that Respondent attempts to commercially gain by creating confusion as to the source of the disputed domain name thereby supporting a finding of bad faith and registration.
Complainant contends that Respondent fails to make an active use of the disputed domain name. Failure to actively use a disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant provides screenshots of the disputed domain name’s resolving webpage which displays an error page that contains no content. The Panel finds that Respondent inactively holds the disputed domain name and thus registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the TD BANK mark based upon the notoriety of Complainant’s mark. Complainant provides multiple screenshots regarding its’ international success as a company. Actual knowledge is sufficient for a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees with Complainant and finds from Complainant’s uncontested allegations and evidence that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <tdbanktoronto.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 30, 2018
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