The Toronto-Dominion Bank v. Andrew Smyth / kapuka
Claim Number: FA1809001808923
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Andrew Smyth / kapuka (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdominion-bank.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 26, 2018; the Forum received payment on September 26, 2018.
On September 27, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdominion-bank.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@tdominion-bank.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. However Respondent did send two e-mails to the Forum, see below.
On October 22, 2018, 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 is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant has over 86,000 employees and over 25 million clients worldwide. Complainant uses the TORONTO DOMINION mark to provide and market banking and financial products and services. Complainant has rights in the TORONTO DOMINION mark based upon registration in Canada in 1970.
Complainant alleges that the disputed domain name is confusingly similar to its mark as it contains the TORONTO DOMINION mark in its entirety, merely abbreviating the word “Toronto” and adding a hyphen, the descriptive term “bank,” and the generic top level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the registrant as “Andrew Smyth.” Complainant has not granted Respondent permission or a license to use the TORONTO DOMINION mark for any purpose. Further, 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, Respondent used the disputed domain name to pass off as Complainant by replicating Complainant’s official website. Currently, the disputed domain name resolves to an inactive website. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and used the disputed domain name in bad faith. Respondent attempted to sell the disputed domain name to Complainant. In addition, Respondent attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Currently, Respondent fails to make an active use of the disputed domain name. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TORONTO DOMINION marks. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. In his e-mails to the Forum Respondent states, in pertinent part (sic): “I have discuss with the complaint before that if they want me to transfer the domain they have to compensate me and bear the cost of transfer but they refuse. They said they don't compensate. I have spent resources in getting the domain and i can't use my funds to transfer it. If they are not ready to compensate me then the domain will be parked and when it expires they can go get it.”
Complainant owns the mark TORONTO DOMINION and uses it to provide banking and financial services.
Complainant’s rights in its mark date back to 1970.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent used the disputed domain name to pass off as Complainant. The resolving website displayed Complainant’s mark, pictures, products and services as found on Complainant’s website.
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.”).
The disputed domain name is confusingly similar to Complainant’s TORONTO DOMINION mark as it contains the dominant component, DOMINION, of the mark in its entirety, merely abbreviates the word “Toronto” and adds a hyphen, the descriptive term “bank,” and the gTLD “.com.” An abbreviation of a complainant’s mark and the addition of words that describe the goods or services in connection with the mark do not distinguish the domain name from the mark incorporated therein. See Modern Props, Inc. v. Wallis, FA 0152458 (Forum June 2, 2003) (Finding that abbreviations of registered marks are protected under Policy ¶ 4(a)(i), and that respondent’s use of a contraction or shorthand of a trademark in the domain name supports a finding of confusing similarity with complainant’s trademark); see also Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”). Similarly, the additions of a hyphen and a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar. See Daniel Handler v. Masanori Toriimoto / PLAN-B Co., Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Accordingly, the Panel finds that the <tdominion-bank.com> domain name does not contain changes that would sufficiently distinguish it from the TORONTO DOMINION mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the TORONTO DOMINION mark in any way. Respondent is not commonly known by the disputed domain name: absent a response, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information of record identifies registrant as “Andrew Smyth / kapuka.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by its failure to use the name to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent initially used the disputed domain name to pass off as Complainant. Specifically, the disputed domain name resolved to a website that copied and attempted to duplicate Complainant’s official website by displaying Complainant’s TORONTO DOMINION marks, pictures, products and services as found on Complainant’s website. Passing off behavior is generally not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Thus, the Panel finds that Respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Further, Respondent currently fails to make an active use of the disputed domain name. Failure to make active use of a domain name can constitute a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) & (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). (In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.”). Accordingly, the Panel finds that this passive holding does not confer rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) & (iii).
For all the reasons given above, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent has not presented any plausible explanation for its use of Complainant’s mark. 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 did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent used the disputed domain name to intentionally attempt to attract—for commercial gain—Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s TORONTO DOMINION mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to mislead users can evince bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: as already noted, the resolving website displayed Complainant’s TORONTO DOMINION marks, pictures, products and services as found on Complainant’s website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent attempted to sell the disputed domain name to Complainant. However, the record shows that Respondent did not request an amount in excess of out-of-pocket costs, so the offer to sell did not violate the Policy. However, bad faith registration and use is established for the reasons given above.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdominion-bank.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 22, 2018
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