The Toronto-Dominion Bank v. Ashot
Claim Number: FA1810001811964
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Ashot (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 16, 2018; the Forum received payment on October 16, 2018.
On October 18, 2018 and Oct 30, 2018, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names are registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the names. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com 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 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@tdbank-account.com, postmaster@tdbank-account.info, postmaster@account-td.com, postmaster@td-validation.com, postmaster@td-canada.info, and postmaster@td-account.info. Also on October 31, 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 November 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant has rights in the TD (e.g. Reg. No. TMA396087, registered Mar. 20, 1992) and TD BANK (e.g. Reg. No. TMA549396, registered Aug. 7, 2001) marks through the registration of the marks with the Canadian Intellectual Property Organization (“CIPO”). Respondent’s <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names are confusingly similar to Complainant’s TD and TD BANK marks as they all add a generic/descriptive term (“account,” “validation,” or “canada”) along with a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names. Respondent is not commonly known by the domain names, as the WHOIS information lists the registrant as “Hacker Damson.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to redirect Internet users to a blank webpage that lacks content.
Respondent registered and uses the <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names in bad faith. Given the sheer number of confusingly similar domain names registered by Respondent, it has engaged in a pattern of bad faith otherwise known as cybersquatting. Further, Respondent fails to make any use of the domain names. Additionally, Respondent, by registering domain names so closely resembling Complainant’s famous and well-known TD and TD BANK marks, knew or should have known of Complainant’s rights in the marks prior to registering the domain names at-issue.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant has rights in the TD (e.g. Reg. No. TMA396087, registered Mar. 20, 1992) and TD BANK (e.g. Reg. No. TMA549396, registered Aug. 7, 2001) marks through the registration of the marks with the CIPO. Respondent’s <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names are confusingly similar to Complainant’s TD and TD BANK marks.
Respondent registered the domain names on January 23, 2018.
Respondent has no rights or legitimate interests in the <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names. Respondent uses the domain names to redirect Internet users to a blank webpage that lacks content.
Respondent registered and uses the <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names 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 owns rights in the TD and TD BANK marks under Policy ¶ 4(a)(i) through the registration of the marks with the CIPO. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”).
Respondent’s <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names are confusingly similar to Complainant’s marks as they all add a generic/descriptive term (“account,” “validation,” or “canada”) along with a gTLD.
Respondent has no rights or legitimate interests in the <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names. Complainant has not authorized Respondent to use its TD and TD BANK marks. The WHOIS identifies “Ashot” as the registrant for all of the domain names. The Panel finds that Respondent is not commonly known by the at-issue domain names under Policy ¶ 4(c)(ii).See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Respondent uses the domain names to redirect Internet users to a blank webpage that lacks content. Failure to make active use of a confusingly similar domain name shows a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving webpages associated with the disputed domain names, each of which display the error message “This site can’t be reached.” Accordingly, the Panel finds that Respondent fails to use the domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Given the number of confusingly similar domain names it registered, Respondent has engaged in a pattern of bad faith known as cybersquatting. The registration of multiple confusingly similar domain names incorporating a complainant’s mark can demonstrate bad faith per Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Respondent registered six domain names currently at-issue in this proceeding. Accordingly, the Panel finds that Respondent’s registration of multiple domain names incorporating the TD or TD BANK marks provides evidence of bad faith under Policy ¶ 4(b)(ii).
Respondent fails to make any use of the domain names. Inactively holding a confusingly similar domain name shows bad faith under 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).”).
Further, Respondent had actual or constructive knowledge of Complainant’s TD and TD BANK marks prior to registering the <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names. Actual knowledge shows bad faith under 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).
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 <tdbank-account.com>, <tdbank-account.info>, <account-td.com>, <td-validation.com>, <td-canada.info>, and <td-account.info> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 5, 2018
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