The Toronto-Dominion Bank v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA2002001882696
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbankfitloan.com>, registered with Dynadot, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2020; the Forum received payment on February 11, 2020.
On February 12, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <tdbankfitloan.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2020 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@tdbankfitloan.com. Also on February 12, 2020, 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 March 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 <tdbankfitloan.com> domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant has rights in the TD and TD BANK marks based upon registration with the Canadian Intellectual Property Office (“CIPO”) (e.g., TD—Reg. No. TMA396087, registered Mar. 20, 1992; TD BANK—Reg. No. TMA549396, registered Aug. 7, 2001).
2. Respondent’s <tdbankfitloan.com>[i] domain name is confusingly similar to Complainant’s marks as it contains the TD BANK mark in its entirety, merely adding the generic and/or descriptive terms “fit,” and “loan” along with the generic top-level domain (“gTLD”) “.com.”
3. Respondent does not have rights or legitimate interests in the <tdbankfitloan.com> domain name. Respondent is not licensed or authorized to use Complainant’s TD or TD BANK marks and is not commonly known by the domain name.
4. Additionally, Respondent is not using the <tdbankfitloan.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business.
5. Respondent has registered and uses the <tdbankfitloan.com> domain name in bad faith. Respondent is attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on Respondent’s website or location.
6. Respondent has employed a privacy service to hide its identity. Respondent has failed to respond to cease-and-desist letters.
7. Finally, Respondent registered the <tdbankfitloan.com> domain name with actual knowledge of Complainant’s rights in the TD and TD BANK marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TD and TD BANK marks. Respondent’s domain name is confusingly similar to Complainant’s TD and TD BANK marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tdbankfitloan.com> domain name and that Respondent registered and uses the domain name 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:
(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 has rights to the TD and TD BANK marks based upon registration with the CIPO. Registration with the CIPO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. Reggie Rags, FA 1778853 (Forum Apr. 19, 2018) (“Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its CIPO registrations for the TD and TD BANK marks (e.g., TD—Reg. No. TMA396087, registered Mar. 20, 1992; TD BANK—Reg. No. TMA549396, registered Aug. 7, 2001). Therefore, the Panel holds that Complainant has rights in the TD and TD BANK marks per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <tdbankfitloan.com> domain name is confusingly similar to Complainant’s TD BANK mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a domain name and the mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Respondent merely adds the terms “fit,” and “loan” along with a “.com” gTLD to Complainant’s TD BANK mark. The Panel agrees with Complainant and finds that the <tdbankfitloan.com> domain name does not contain changes that would sufficiently distinguish it from the TD BANK mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <tdbankfitloan.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <tdbankfitloan.com> domain name as Respondent is not authorized to use Complainant’s TD or TD BANK marks and is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a 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 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. As a result, the WHOIS information of record identifies the registrant as “Super Privacy Service LTD c/o Dynadot” Furthermore, there is no evidence in the record to suggest Respondent was authorized to use Complainant’s TD or TD BANK marks. Therefore, under Policy ¶ 4(c)(ii) Respondent has not been commonly known by the <tdbankfitloan.com> domain name.
Next, Complainant contends that the Respondent fails to use the <tdbankfitloan.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant has provided evidence that Respondent uses the domain name to host a parked webpage that contains links to third party websites which compete with Complainant’s business. Use of a domain name incorporating the mark of another to host a parked webpage that contains third party links to a Complainant’s competitors may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides screenshots of the <tdbankfitloan.com> domain name’s resolving websites which shows Respondent is using the domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business. For instance, the website at which the <tdbankfitloan.com> domain name resolves includes multiple third-party links such as “Debt Consolidation Loan” and “Cash Out Refinance Loan” that compete with Complainant’s own offerings. Therefore, Respondent lacks rights or legitimate interests with respect to the <tdbankfitloan.com> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and uses the <tdbankfitloan.com> domain name in bad faith. Specifically, Complainant claims Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the domain name’s resolving website which features click-through advertisements that redirect users to Complainant’s competitors. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links, shows bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Complainant contends that Respondent’s use of the <tdbankfitloan.com> domain name is intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site to Respondent’s website. Complainant has provided evidence that Respondent hosts links to third party websites that compete directly with Complainant’s business to generate click-through advertisement revenue. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage to support its allegations. Therefore, the Panel agrees that Respondent registered and uses the <tdbankfitloan.com> domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues Respondent must have had actual knowledge of Complainant’s TD and TD BANK marks when it registered the <tdbankfitloan.com> domain name. Actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See 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.). In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the <tdbankfitloan.com> domain name, Complainant is one of the top 10 North American banks, the second largest bank in Canada, and the sixth largest bank in North America. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the TD and TD BANK marks when it registered the <tdbankfitloan.com> domain name thus constituting bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <tdbankfitloan.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 12, 2020
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