The Toronto-Dominion Bank v. Roman Goddess
Claim Number: FA1910001867354
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Roman Goddess (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <td-bank.world>, registered with NameCheap, Inc..
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2019; the Forum received payment on October 17, 2019.
On October 18, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <td-bank.world> 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 October 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@td-bank.world. Also on October 21, 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 November 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, The Toronto-Dominion Bank, the second largest bank in Canada, uses the TD and TD BANK marks to provide and market its products and services. Complainant has rights in the TD and TD BANK marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. TD—Reg. No. 1,649,009; TD BANK—Reg. No. 3,788,055, registered May 11, 2010). Respondent’s <td-bank.world> is confusingly similar as it contains Complainant’sTD BANK mark in its entirety, merely adding a hyphen and the generic top level domain (“gTLD”) “.world.”
Respondent does not have rights or legitimate interests in the <td-bank.world> domain name. Respondent is not licensed or authorized to use Complainant’s TD BANK mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <td-bank.world> domain name to impersonate Complainant in order to conduct a phishing scheme.
Respondent has registered and uses the <td-bank.world> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by impersonating Complainant as part of a phishing scheme. Respondent has employed a privacy service to hide its identity. Respondent has failed to respond to cease-and-desist letters. Finally, Respondent had actual and/or constructive knowledge of the TD and TD BANK marks when it registered and subsequently used the <td-bank.world> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds, from Complainant’s uncontested allegations and evidence, that Complainant is entitled to the requested relief of transfer of the <td-bank.world> 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.
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”).
Complainant claims rights in the TD and TD BANK marks based upon its registration with the USPTO (e.g., TD—Reg. No. 1,649,009; TD BANK—Reg. No. 3,788,055, registered May 11, 2010). Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel finds that Complainant has rights in the TD and TD BANK marks per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <td-bank.world> domain name is confusingly similar to Complainant’s mark. Specifically, Complainant argues Respondent merely adds a hyphen and a gTLD to Complainant’s TD BANK mark. Additions of a hyphen, and a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds that the <td-bank.world> is confusingly similar to Complainant’s TD BANK mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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)); see also 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”). The Panel finds Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <td-bank.world> as Respondent is not authorized to use Complainant’s TD BANK mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service”was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See 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). A privacy service was used by Respondent but was lifted as a result of the commencement of this proceeding. The WHOIS information of record identifies registrant as “Roman Goddess,” and there is no other evidence to suggest Respondent was authorized to use the TD BANK mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant argues that Respondent is not using the <td-bank.world> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to impersonate Complainant as part of a fraudulent scheme. Use of a domain name to pass off as a complainant in order to conduct a fraudulent scheme is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant claims Respondent uses the disputed domain name to direct Internet users to a website that copies and attempts to duplicate Complainant’s official website by featuring Complainant’s TD and TD BANK marks as well as copying the design, color scheme, pictures and texts found on Complainant’s website. Furthermore, Respondent uses this website to solicit information under false pretenses. The Panel finds that Respondent lacks rights and legitimate interests in respect of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant argues Respondent had actual and constructive knowledge of Complainant’s TD and TD BANK marks. While constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Based upon Respondent’s use of Complainant’s marks and Respondent’s impersonation of Complainant, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the TD and TD BANK marks and this constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent has registered and uses the <td-bank.world> domain name in bad faith. Complainant alleges Respondent attempts to disrupt Complainant’s business and commercially benefit from the disputed domain name. Specifically, Complainant argues Respondent is attempting to impersonate Complainant in order to conduct a fraudulent scheme for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). Complainant claims Respondent uses the disputed domain name to impersonate Complainant and phish for personal information from Complainant’s customers under false pretenses. The Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant has proved this element.
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 <td-bank.world> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
November 21, 2019
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