The Toronto-Dominion Bank v. Ginpachi Tran / Trevor Levine / Mikey Lauren
Claim Number: FA2306002050318
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by Jason Hayden of CSC Digital Brand Services Group AB, Sweden. Respondent is Ginpachi Tran / Trevor Levine / Mikey Lauren (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com>, registered with Tucows Domains 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to Forum electronically on June 23, 2023; Forum received payment on June 23, 2023.
On June 26, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 June 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2023 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@tdbankingservices.com, postmaster@tdbankinglogin.com, postmaster@canadatrust-td.com. Also on June 30, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the disputed domain names are effectively controlled by the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant shows that all three disputed domain names were registered through a privacy service, are registered within 13 days of each other, do not host any active content and resolve to the same screen, and the email address of each named Respondent utilizes “gmail.com” for their mailing services. In the absence of any argument to the contrary, the Panel finds that the disputed domain names are controlled by the same person and/or entity and will refer to them as “Respondent”.
A. Complainant
1. Respondent’s <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names are confusingly similar to Complainant’s TD, TD BANK, and CANADA TRUST marks.
2. Respondent does not have any rights or legitimate interests in the <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names.
3. Respondent registered and uses the <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names in bad faith.
B. Respondent did not file a Response.
Complainant, The Toronto-Dominion Bank, provides financial and related services. Complainant holds registrations for the TD, TD BANK, and CANADA TRUST marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 1,649,009, registered on June 25, 1991) and other trademark agencies worldwide.
Respondent registered the <tdbankingservices.com> domain name on February 13, 2023; the <tdbankinglogin.com> domain name on February 12, 2023; and the <canadatrust-td.com> domain name on February 1, 2023. All of the disputed domain names resolve to inactive webpages.
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”).
The Panel finds that Complainant has rights in the TD, TD BANK, and CANADA TRUST marks based upon registration with the USPTO and other trademark agencies worldwide. See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”)
Respondent’s <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names all use one or more of Complainant’s marks and add the terms “services” or “login” or a hyphen, and the gTLD “.com.” These changes do not sufficiently differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). 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.”); see also Textron Innovations Inc. v. Sheng Liang / Sarawina, FA 1622906 (Forum July 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) where Respondent’s <greenleetextron.com> domain name merely combined Complainant’s TEXTRON and GREENLEE marks and added the “.com” generic top-level domain suffix.); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”) Therefore, the Panel finds that Respondent’s <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names are confusingly similar to Complainant’s TD, TD BANK, and CANADA TRUST marks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), 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”).
Complainant claims that Respondent does not have rights or legitimate interests in the <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names, as Respondent is not commonly known by the disputed domain names and is not licensed or authorized to use Complainant’s marks. The WHOIS information for the disputed domain names lists the registrant as “Ginpachi Tran/Trevor Levine/Mikey Lauren.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights 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).
Complainant argues that Respondent does not use the <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as the disputed domain names resolve to inactive websites. Using a disputed domain name in connection with an active website is not a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”) Complainant offers screenshots showing that the disputed domain names resolve to inactive webpages. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent’s inactive holding of the <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names shows bad faith registration and use. The failure to actively use a disputed domain name is evidence of bad faith registration and use 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).”) Accordinlgy, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names with knowledge of Complainant’s rights in the TD, TD BANK, and CANADA TRUST marks, and highlights the confusing similarity between Complainant’s marks and the disputed domain names, the registrations of Complainant’s marks, and the fame of Complainant’s marks. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”)
The Panel finds that 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 <tdbankingservices.com>, <tdbankinglogin.com>, and <canadatrust-td.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 27, 2023
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