The Toronto-Dominion Bank v. Lulu Chen / Ping Holes King / Soniet Sharma / Joel Anderson
Claim Number: FA2307002051665
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by Jason Hayden of CSC Digital Brand Services Group AB, Sweden. Respondent is Lulu Chen / Ping Holes King / Soniet Sharma / Joel Anderson (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbank-portal.com>, <td-privatebanking.com> and <tdprivate-banking.com>, registered with eNom, LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on July 3, 2023. Forum received payment on July 3, 2023.
On July 3, 2023, eNom, LLC confirmed by e-mail to Forum that the <tdbank-portal.com>, <td-privatebanking.com> and <tdprivate-banking.com> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, 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 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@tdbank-portal.com, postmaster@td-privatebanking.com, postmaster@tdprivate-banking.com. Also on July 10, 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 August 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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
Paragraph 3(c) of 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”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant has shown that the <tdbank-portal.com>, <td-privatebanking.com> and <tdprivate-banking.com> domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. The domain names were registered with the same Registrar within three days of each other and two of them, <td-privatebanking.com> and <tdprivate-banking.com>, were registered on the same day. All three were hosted on the same DNS nameservers on the day of registration; all are in similar suspended states; and their composition is very similar.
Accordingly, this decision refers to Lulu Chen / Ping Holes King / Soniet Sharma / Joel Anderson as “Respondent”.
A. Complainant
Created in 1955, Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada and the sixth largest in North America. It is commonly known as TD and operates as TD Bank Group. Complainant has rights in the TD and TD BANK marks through registrations with multiple trademark organizations including the Canadian Intellectual Property Office (“CIPO”) and the United States Patent and Trademark Office (“USPTO”). The <tdbank-portal.com>, <td-privatebanking.com> and <tdprivate-banking.com> domain names are confusingly similar to Complainant’s marks.
Respondent lacks rights and legitimate interests in the domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed Respondent to use its TD or TD BANK marks in the domain names. Respondent does not use the domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead the domain names resolve to inactive webpages.
Respondent registered the domain names in bad faith with actual knowledge of Complainant’s rights in the TD and TD BANK marks. Although the domain names are not presently in active use, Respondent is creating a likelihood of confusion with Complainant’s marks. Respondent employed a privacy service to hide its identity at the time of filing and failed to respond to a cease-and-desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the TD and TD BANK marks through registrations with multiple trademark organizations including CIPO (e.g., TD, Reg. No. TMA396087, registered on March 20, 1992) and the USPTO (e.g., TD BANK, Reg. No. 3,788,055, registered on May 11, 2010).
The Panel finds Respondent’s <tdbank-portal.com> domain name to be confusingly similar to Complainant’s TD BANK mark because it includes the entirety of the mark with the addition of a hyphen and the term “portal”.
The Panel finds Respondent’s <td-privatebanking.com> and <tdprivate-banking.com> domain names to be confusingly similar to Complainant’s TD mark because each includes the entirety of the mark with the addition of a hyphen and the additional terms “private banking”, which closely relate to Complainant’s business.
In each case the inconsequential generic top-level domain (“gTLD”) “.com” may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <tdbank-portal.com> domain name was registered on January 27, 2023 and the <td-privatebanking.com> and <tdprivate-banking.com> domain names were registered on January 31, 2023, many years after Complainant registered its very well-known TD and TD BANK marks. They resolve to error pages at websites that lack content.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <tdbank-portal.com>, <td-privatebanking.com> and <tdprivate-banking.com> domain names. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Paragraph 4(b) of the Policy sets out some circumstances which shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. As noted in the WIPO Jurisprudential Overview 3.0, Section 3.1, those circumstances are not exclusive and a complainant may demonstrate bad faith under paragraph 4(a)(iii) by showing that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark.
In the absence of any Response, the circumstances set out above in relation to the second element, together with the use of the words “portal” and “private banking” in the domain names, satisfy the Panel that Respondent was fully aware of Complainant’s very well-known TD and TD BANK marks when Respondent registered the <tdbank-portal.com>, <td-privatebanking.com> and <tdprivate-banking.com> domain names and that Respondent did so in bad faith with intent to take unfair advantage of Complainant’s marks.
Although the <tdbank-portal.com>, <td-privatebanking.com> and <tdprivate-banking.com> domain names do not resolve to active websites, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, there is no conceivable active use that could be made of the domain names that would not amount to an infringement of Complainant’s rights in its TD and TD BANK marks. Accordingly, the Panel finds that Respondent’s passive use of the domain names demonstrates registration and use in bad faith.
Complainant has established this element.
DECISION
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 <tdbank-portal.com>, <td-privatebanking.com> and <tdprivate-banking.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 4, 2023
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