The Toronto-Dominion Bank v. inc
Claim Number: FA2007001906370
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is inc (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadatrusteasywebnotice.app>, registered with Google 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2020; the Forum received payment on July 29, 2020.
On July 30, 2020, Google LLC confirmed by e-mail to the Forum that the <tdcanadatrusteasywebnotice.app> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 July 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@tdcanadatrusteasywebnotice.app. Also on July 30, 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 August 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is the second largest bank in Canada and the sixth largest bank in North America. Complainant has rights in the TD, CANADA TRUST, and EASYWEB trademarks through their registration with the Canadian Intellectual Property Office (“CIPO”) (TD – e.g. Reg. No. TMA 396,087, registered March 20, 1992, CANADA TRUST – e.g. Reg. No. TMA 447,666, registered September 15, 1995, and EASYWEB – e.g. Reg. No. TMA 493,469, registered November 6, 1996). Respondent’s <tdcanadatrusteasywebnotice.app> domain name is confusingly similar to Complainant’s TD, CANADA TRUST, and EASYWEB trademarks. Respondent incorporates the trademarks in their entirety, combining them and adding the generic term “notice” along with the “.app” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <tdcanadatrusteasywebnotice.app> domain name as Respondent is not commonly known by the disputed domain name, nor did Complainant authorized Respondent to use any of the TD, CANADA TRUST, and EASYWEB trademarks in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a blank webpage that lacks content.
Respondent registered and used the <tdcanadatrusteasywebnotice.app> domain name in bad faith as Respondent’s domain name resolves to an inactive webpage. Respondent also had actual knowledge of Complainant’s rights in the TD, CANADA TRUST, and EASYWEB trademarks due to the use of the trademarks in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following Canadian trademark registrations:
No. TMA644,911 TD (fig), registered July 26, 2005 for goods and services in classes 9, 16, 35 and 36;
No. TMA396,087 TD (word), registered March 20, 1992 for services in classes 35, 36, 37 and 39
No. TMA549,396 TD BANK (word), registered August 7, 2001 for services in classes 35, 36 and 37
No. TMA447,666 CANADA TRUST (word), registered September 15, 1995 for services in class 36
No. TMA409,300 CANADA TRUST (word), registered March 12, 1996 for services in class 35, 36, 39 and 41; and
No. TMA493,469 EASYWEB (word), registered November 6, 1996 for services in class 36.
The Complainant is also the owner of the following U.S. trademark registrations:
No. 1,649,009 TD (fig), registered June 25, 1991 for services in class 36;
No. 3,041,792 TD (word), registered January 10, 2006 for services in class 36; and
No. 3,788,055 TD BANK (word), registered May 11, 2010 for services in class 36.
The <tdcanadatrusteasywebnotice.app> domain name was registered on February 14, 2020
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 to have rights in the TD, CANADA TRUST, and EASYWEB trademarks through its registration with the Canadian Intellectual Property Office (CIPO). Registration of a trademark with the CIPO or other trademark agency is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”). Here, Complainant has provided the Panel with copies of its registration for the trademarks (TD – e.g. Reg. No. TMA 396,087, registered March 20, 1992, CANADA TRUST – e.g. Reg. No. TMA 447,666, registered September 15, 1995, EASYWEB – e.g. Reg. No. TMA 493,469, registered November 6, 1996). Therefore, the Panel find that Complainant has rights in the trademarks per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tdcanadatrusteasywebnotice.app> domain name is confusingly similar to Complainant’s TD, CANADA TRUST, and EASYWEB trademarks. Registration of a domain name that includes a trademark in its entirety and adds a generic term and gTLD does not distinguish the domain name from the trademark per Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). Here, Complainant argues that Respondent incorporates the marks in their entirety combining them and adding the generic term “notice” along with the “.app” gTLD. The Panel notes that creating a domain name by including several trademarks from the same trademark owner is not enough distinguish the domain name from any of the included trademarks. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark/s per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
Complainant argues Respondent lacks rights or legitimate interest in the <tdcanadatrusteasywebnotice.app> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the TD, CANADA TRUST and/or EASYWEB trademarks or register a domain name using Complainant’s trademarks. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “inc” and there is no other evidence to suggest that Respondent was authorized to use the TD, CANADA TRUST and/or EASYWEB trademarks or was commonly known by the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a blank webpage that lacks content. Use of a disputed domain name to resolve to an inactive or blank webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided the Panel with screenshots of the Respondent’s <tdcanadatrusteasywebnotice.app> domain name that shows a message that the “page isn’t working.” Therefore, the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel notes that Complainant does not make any specific arguments that would fall under Policy ¶ 4(b). However, these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). As such, the Panel find that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.
The Complainant argues that Respondent registered and used the <tdcanadatrusteasywebnotice.app> domain name in bad faith as Respondent’s domain name resolves to an inactive webpage. Use of a disputed domain name to resolve to an inactive webpage may be evidence of bad faith per 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).”). As noted above, the Complainant has provided the Panel with screenshots of the Respondent’s <tdcanadatrusteasywebnotice.app> domain name that shows a message that the “page isn’t working.” Although this is not active use, it is indeed a message connected to the disputed domain name that communicate to the users that the page is not working, and thereby indicating that there is something wrong with the Complainant’s services. Therefore, the Panel find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
The Complainant argues that Respondent had knowledge of Complainant’s rights in the TD, CANADA TRUST and EASYWEB trademarks at the time of registering the <tdcanadatrusteasywebnotice.app> domain name. The Panel disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademarks prior to registering the disputed domain name, as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX 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”).
To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. On the top of that, the Panel notes that the Respondent has used not one, but in total three of the Complainant’s trademarks to create the disputed domain name. As such, the Panel concludes that it is rather clear that Respondent did have actual knowledge of Complainant’s right in the related trademarks, which support a finding of bad faith under 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 <tdcanadatrusteasywebnotice.app> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 27, 2020
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