DECISION

 

The Toronto-Dominion Bank v. Liam Schneider / Cape Tolum / Viral Corp / Year Water / bishop mark

Claim Number: FA2308002058400

 

PARTIES

Complainant is The Toronto-Dominion Bank ("Complainant"), represented by Jason Hayden of CSC Digital Brand Services Group AB, Sweden. Respondent is Liam Schneider / Cape Tolum / Viral Corp / Year Water / bishop mark ("Respondent"), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <tdbanking-portal.com>, <tdonlinebankingservices.com>, <tdbankingclient-restore.com>, and <tdapp-client.com>, registered with eNom, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 22, 2023; Forum received payment on August 22, 2023.

 

On August 23, 2023, eNom, LLC confirmed by e-mail to Forum that the <tdbanking-portal.com>, <tdonlinebankingservices.com>, <tdbankingclient-restore.com>, and <tdapp-client.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 August 29, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@tdbanking-portal.com, postmaster@tdonlinebankingservices.com, postmaster@tdbankingclient-restore.com, and postmaster@tdapp-client.com. Also on August 29, 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 September 19 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.

 

RELIEF SOUGHT

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 the disputed domain names were registered in the same 2-week period with the same registrar, using the same DNS, purportedly by entities in Canada, referencing false Whois information. The disputed domain names also share a similar composition. The Panel therefore finds that the domain names are commonly owned/controlled by a single entity or person and will refer to the named Respondents as Respondent.

 

PARTIES' CONTENTIONS

A. Complainant

1.       Respondent's <tdbanking-portal.com>, <tdonlinebankingservices.com>, <tdbankingclient-restore.com>, and <tdapp-client.com> domain names are confusingly similar to Complainant's TD BANK mark.

 

2.       Respondent does not have any rights or legitimate interests in the disputed domain names.

 

3.       Respondent registered and uses the disputed domain names in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant is the well-known Toronto-Dominion Bank and holds registrations for the TD BANK mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,788,055, registered May 11, 2010), and the TD mark (Reg. No. 1,649,009, registered June 25, 1991).

 

Respondent registered the disputed domain names between December 19, 2022, and January 2, 2023, and fails to make an active use of the domain names.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the TD and TD BANK marks through registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <tdbanking-portal.com>, <tdonlinebankingservices.com>, <tdbankingclient-restore.com>, and <tdapp-client.com> domain names use Complainant's TD and/or TD BANK marks and simply add generic or descriptive words, a hyphen and the ".com" gTLD. These changes do not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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.) The Panel finds that Respondent's <tdbanking-portal.com>, <tdonlinebankingservices.com>, <tdbankingclient-restore.com>, and <tdapp-client.com> domain names are confusingly similar to Complainant's TD and TD BANK marks.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 contends that Respondent lacks rights and legitimate interests in the disputed domain names as Respondent is not commonly known by the domain names and Complainant has not authorized or licensed to Respondent any rights in the TD or TD BANK marks. The WHOIS information for the disputed domain names lists the registrant as "Liam Schneider / Cape Tolum / Viral Corp / Year Water / bishop mark". 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 Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same); see also 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)").

 

Complainant contends that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain names do not resolve to an active webpage. Using a disputed domain name to resolve to an inactive webpage is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (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 shows that the disputed domain names resolve to an inactive webpage. 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 (iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and uses the disputed domain names in bad faith by failing to make an active use of the domain names. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) ("Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website."). 

 

Complainant claims that Respondent registered the disputed domain names with knowledge of Complainant's rights in the TD and TD BANK marks, due to its widespread use of the marks since 1969. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also 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).").

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tdbanking-portal.com>, <tdonlinebankingservices.com>, <tdbankingclient-restore.com>, and <tdapp-client.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

        Sandra J. Franklin, Panelist

Dated: September 20, 2023