The Toronto-Dominion Bank v. Montu Chadha / Applications on Networks Inc.
Claim Number: FA1910001864855
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is Montu Chadha / Applications on Networks Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <my-tdbank.com>, registered with easyDNS Technologies Inc..
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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 1, 2019; the Forum received payment on October 1, 2019.
On October 8, 2019, easyDNS Technologies Inc. confirmed by e-mail to the Forum that the <my-tdbank.com> domain name is registered with easyDNS Technologies Inc. and that Respondent is the current registrant of the name. easyDNS Technologies Inc. has verified that Respondent is bound by the easyDNS Technologies 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 October 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@my-tdbank.com. Also on October 9, 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.
A timely Response was received and determined to be complete on October 28, 2019.
On October 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed dr. Katalin Szamosi 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant contends that it has rights in the TD BANK mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,788,055, registered May 11, 2010) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA549396, registered Aug. 7, 2001).
Complainant argues Respondent has only added a hyphen along with the generic, descriptive term “my” to Complainant’s TD BANK trademark, thereby making the disputed domain name <my-tdbank.com> confusingly similar to Complainant’s trademarks.
Respondent has no rights or legitimate interests in the <my-tdbank.com> domain name. Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names. Furthermore, Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests.
Additionally, Respondent is using the disputed domain name to redirect internet users to a website that resolves to an inactive website and lacks content. Respondent has failed to make use of the <my-tdbank.com> domain name and has not demonstrated any attempt to make legitimate use of the domain name and website, which demonstrates a lack of rights or legitimate interests in the <my-tdbank.com> domain name.
Respondent registered and uses the <my-tdbank.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Respondent’s website. Furthermore, Respondent failed to respond to Complainant’s cease and desist letters. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the TD BANK mark prior to registering the disputed domain name.
B. Respondent
Respondent registered and uses the disputed domain name for educational purposes and not with any malicious or infringing intent. Respondent consents to relinquish control of the <my-tdbank.com> domain name for the costs of registration, which it states is $17.20 CDN; however, Respondent requires verification from Complainant via email.
The factual findings pertinent to the decision in this case are that:
1. Complainant is the second largest bank in Canada by reference to the trademark TD BANK which is the subject, inter alia, of USPTO Reg. No. 3,788,055, registered May 11, 2010 and the Canadian Intellectual Property Office (CIPO) Reg. No. TMA549396, registered Aug. 7, 2001(supported by Exhibit A)
2. Complainant has not authorized Respondent to use its TD BANK trademark or to register any domain name incorporating the trademark; and
3. the disputed domain name was registered in January 22, 2019 and Respondent failed to make use of the domain name.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant therefore has rights since it provides proof of its registration of the trademark TD BANK with the USPTO, CIPO and other national trademark authorities.
Complainant next argues Respondent’s <my-tdbank.com> domain name is confusingly similar to the TD BANK mark, as the name incorporates the mark in its entirety, along with the generic term “my,” a hyphen and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel therefore finds that the <my-tdbank.com> domain name is confusingly similar to the TD BANK mark per Policy ¶ 4(a)(i).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests (see, for example, Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <my-tdbank.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TD BANK mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). No information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <my-tdbank.com> domain name.
Complainant also asserts Respondent’s inactive holding of the <my-tdbank.com> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name does not resolve to an active webpage. The Panel therefore finds Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant also contends Respondent’s intended to use the <my-tdbank.com> domain name to create a likelihood of confusion with Complainant’s mark in order to attract Internet users for commercial gain is evidence of Respondent’s bad faith. Use of a confusingly similar domain name for commercial purposes unrelated to a complainant’s business can indicate bad faith registration and use per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel finds the Respondent registered and used the at-issue domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant asserts that Respondent’s failure to use the <my-tdbank.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of 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).”). The Panel notes that the domain name does not resolve to an active website. The Panel finds Respondent’s inactive holding of the domain name to be evidence of its bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <my-tdbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: November 12, 2019
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