The Toronto-Dominion Bank v. Zane McCaig
Claim Number: FA1812001822351
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Zane McCaig (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadatrust.app>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 24, 2018; the Forum received payment on December 24, 2018.
On December 26, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <tdcanadatrust.app> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 January 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2019 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@tdcanadatrust.app. Also on January 2, 2019, 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 January 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, doing business under the TD and CANADA TRUST marks, is engaged in the provision of financial, banking, trust and related goods and services across Canada and the United States.
Complainant holds a registration for the service mark TD, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,041,792, registered January 10, 2006, renewed as of March 9, 2016, and for the trade mark CANADA TRUST, on file with the Canadian Intellectual Property Office (“CIPO”) as Registry No. TMA447666, registered September 15, 1995, renewed as of September 15, 2010.
Respondent registered the domain name <tdcanadatrust.app> on May 8, 2018.
The domain name is confusingly similar to Complainant’s TD and CANADA TRUST marks.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the TD or CANADA TRUST marks in any manner.
Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to redirect internet users to a website featuring pay-per-click links to third-party websites, some of which compete directly with Complainant’s business.
Respondent has no rights to or legitimate interests in the domain name.
Respondent seeks, for commercial gain, to attract Internet users to its website by creating a likelihood of confusion as to the possibility of Complainant’s affiliation with the domain name and its resolving website.
Respondent knew of Complainant’s rights in the TD and CANADA TRUST marks prior to the registration and use of the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the TD and CANADA TRUST marks sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the marks with national trademark authorities, the USPTO and the CIPO. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015):
Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i).
And, in the case of the TD service mark, this is true without regard to whether Complainant’s rights in its mark arise from registration of it in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Canada). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <tdcanadatrust.app> domain name is confusingly similar to both of Complainant’s TD and CANADA TRUST marks. The domain name contains the marks in their entirety, with only the deletion of the space between the terms of the mark CANADA TRUST and the addition of the generic Top Level Domain (“gTLD”) “.app.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Hewlett-Packard Dev. Co., L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Co. Ltd., FA 1625637 (Forum June 23, 2015), citing Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Forum Oct. 13, 2008) for the proposition that the <hotjobsyahoo.com> domain name was confusingly similar to a UDRP complainant’s HOTJOBS mark because the domain name merely combined that complainant’s HOTJOBS mark with the same complainant’s YAHOO! mark.
Likewise, omitting the space between the terms of the mark of another in forming a domain name does not prevent a finding of confusing similarly between the mark and the domain name under Policy ¶4(a)(i) because spaces are prohibited in domain names. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Forum Jan. 7, 2002) (finding the domain name <hannoverre.com> to be identical to the mark HANNOVER RE, “as spaces are impermissible in domain names ….”
See also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that adding a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <tdcanadatrust.app> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <tdcanadatrust.app> domain name, and that Complainant has not authorized Respondent to use the TD and CANADA TRUST marks in any manner. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Zane McCaig,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <tdcanadatrust.app> domain name to redirect Internet users to a website featuring pay-per-click links to third-party websites, some of which directly compete with Complainant’s business. This employment is neither a bona fide offering of goods and services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate or noncommercial or fair use of it under Policy ¶ 4(c)(iii). See, for example, Ashley Furniture Industries, Inc. v. domain admin / private registrations, FA1506001626253 (Forum July 29, 2015):
Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence in the record that Respondent uses the <tdcanadatrust.app> domain name, which we have found to be confusingly similar to Complainant’s TD and CANADA TRUST marks, to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Staples, Inc. v. HANNA EL HIN / DTAPLES.COM, FA1557007 (Forum June 6, 2014):
Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the TD and CANADA TRUST marks when it registered the <tdcanadatrust.app> domain name. This too demonstrates Respondent’s bad faith in registering the domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018):
Respondent’s prior knowledge [and therefore bad faith registration] is evident from the notoriety of Complainant’s … trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <tdcanadatrust.app> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 31, 2019
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