The Toronto-Dominion Bank v. Yi Liu
Claim Number: FA1904001838897
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Yi Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbankgroup.app>, registered with West263 International Limited.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2019; the Forum received payment on April 16, 2019.
On April 16, 2019, West263 International Limited confirmed by e-mail to the Forum that the <tdbankgroup.app> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 April 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@tdbankgroup.app. Also on April 19, 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 May 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant operates the second largest bank in Canada and the sixth largest bank in North America under the TD BANK GROUP mark.
Complainant has rights in the TD BANK GROUP mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and the Trademark Office of National Intellectual Property Administration, People’s Republic of China (“SAIC”).
The <tdbankgroup.app> domain name is identical to Complainant’s TD BANK GROUP mark as it incorporates the mark in its entirety with the addition of the “.app” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in respect of the <tdbankgroup.app> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not given Respondent permission to use Complainant’s mark in any manner, including in domain names. Furthermore, Respondent does not used the domain name in good faith and in connection with a bona fide offering of goods or services. Rather, Respondent uses the disputed domain name to redirect internet users to a website that resolves to a blank page and lacks content. Furthermore, the disputed domain name is offered for sale in an amount that far exceeds the Respondent’s expenses in registering the domain.
Respondent registered and uses the <tdbankgroup.app> domain name in bad faith because it is offered for sale. Furthermore, the disputed domain name resolves to an inactive webpage. Additionally, Respondent failed to respond to Complainant’s cease-and-desist letter. Finally, Respondent knew of Complainant’s rights in the TD BANK GROUP mark prior to registering and using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the TD BANK GROUP mark.
Respondent registered the at-issue domain name after Complainant acquired rights in TD BANK GROUP.
Respondent holds the <tdbankgroup.app> domain name inactively and offers it for sale.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel finds that the proceeding should be in English.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for the TD BANK GROUP trademark, as well ownership of other national registrations for such mark, demonstrates its rights in TD BANK GROUP for the purposes of Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “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)”).
Respondent’s <tdbankgroup.app> domain name contains Complainant’s TD BANK GROUP trademark, less spaces, followed by the top-level domain name “.app.” The differences between Complainant’s trademark and Respondent’s domain name are insufficient to distinguish one from the other for the purposes of the Policy ¶ 4 (a)(i). Therefore, the Panel finds that Respondent’s <tdbankgroup.app> domain name to be identical to Complainant’s TD BANK GROUP trademark under the Policy. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at-issue domain name.
The WHOIS information for the at-issue domain name discloses “Yi Lui” as the domain name’s registrant. There is nothing in the record that otherwise suggests Respondent is commonly known by the <tdbankgroup.app> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s confusingly similar domain name addresses an inactive webpage devoid of content. Respondent’s passive holding of the at-issue domain name shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012) (finding 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.”) Likewise, Respondent’s use of the domain name to offer it for sale in amount in excess of Respondent’s out-of-pocket costs is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Offering the trademark identical domain name for sale, here through a thirds party website, demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).
Given the forgoing, Complainant conclusively demonstrates Respondent’s lack of rights and lack of interests in the <tdbankgroup.app> domain name.
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above regarding rights and legitimate interests, Respondent offers to sell the at-issue domain name amount in excess of its reasonable out-of pocket expenses incurred in connection with the domain name. It does so via a listing with the third party domain name auction website <sedo.com>. Respondent’s general offer to sell the domain name suggests bad faith pursuant to Policy 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Next and as also considered above regarding rights and legitimate interests, Respondent holds the <tdbankgroup.app> domain name inactively. Respondent’s domain name addresses a blank webpage. Respondent’s failure to make use of the at-issue domain name indicates its 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).”).
Finally, Respondent registered the <tdbankgroup.app> domain name knowing that Complainant had trademark rights in the TD BANK GROUP mark. Respondent’s prior knowledge of Complainant’s trademark is evident from the notoriety of Complainant’s trademark and Respondent’s incorporation of Complainant’s entire mark into Respondent’s at-issue domain name. Respondent’s knowledge of Complainant's trademark further indicates that Respondent registered and used <tdbankgroup.app> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbankgroup.app> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 14, 2019
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