The Toronto-Dominion Bank v. TD-Dominion Bank / TD Canada Trust Easyweb
Claim Number: FA1810001813502
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is TD-Dominion Bank / TD Canada Trust Easyweb (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <td-easyweb.email> (‘the Domain Name’), registered with Google LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 25, 2018; the Forum received payment on October 25, 2018.
On October 28, 2018, Google LLC confirmed by e-mail to the Forum that the <td-easyweb.email> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@td-easyweb.email. Also on October 30, 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 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant owns a number of trade mark registrations registered in Canada and the USA consisting of or including TD used since 1969. The trade mark EASYWEB is owned by a company in the Complainant’s group in Canada and has been registered since 1998. These marks are registered in relation to financial services. The Complainant owns td.com and tdbank.com.
The Domain Name registered in 2017 is confusingly similar to the Complainant’s trade marks containing the Complainant’s TD and EASYWEB marks in their entirety adding only a hyphen and the gTLD .email which do not prevent confusing similarity.
Respondent is not commonly known by the Domain Name and has not been authorised by the Complainant.
The Domain Name has not been used which is not a bona fide offering of goods and services or a legitimate non commercial fair use. The Respondent does not have rights or a legitimate interest in the Domain Name.
The combination of two of the Complainant’s marks in the Domain Name shows that the Respondent was aware of the Complainant and its business at the time of registration of the Domain Name. Respondent’s use of a false name and contact information in The Who is is evidence of bad faith registration and use. Passive holding of a domain name containing third party marks with a reputation can be bad faith registration and use. The Respondent failed to answer a cease and desist letter from the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns a number of trade mark registrations registered in Canada and the USA consisting of or including TD used since 1969. The trade mark EASYWEB is owned by a company in the Complainant’s group in Canada and has been registered since 1998. These marks are registered in relation to financial services. The Complainant owns td.com and tdbank.com.
The Domain Name registered in 2017 has not been used.
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.”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines the TD and EASYWEB marks owned by the Complainant’s group (registered in, inter alia, Canada for financial services with first use recorded as 1969 and 1998 respectively), a hyphen and the gTLD .email.
The gTLD .email does not serve to distinguish the Domain Name from the Complainant’s marks. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark). Nor does the addition of a hyphen. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003)(The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).)
Accordingly, the Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorised the use of its marks. The Respondent has not answered this Complaint and has used false contact details on the WhoIS database. As such, there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.
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 Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing two of the Complainant’s marks. The use of two of the Complainant’s marks in the same Domain Name shows the Respondent was aware of the Complainant and its business at the time of registration of the Domain Name.
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 marks of another. Passive holding of a domain name containing marks 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 the 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <td-easyweb.email> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 20, 2018
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