The Toronto-Dominion Bank v. I S / Internet Consulting Services Inc.
Claim Number: FA1903001835356
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is I S / Internet Consulting Services Inc. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbankonlinebaking.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2019; the Forum received payment on March 22, 2019.
On March 25, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdbankonlinebaking.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2019 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@tdbankonlinebaking.com. Also on March 28, 2019, 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 April 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant has rights in the TD BANK mark through its registration with the Canadian Intellectual Property Organization (“CIPO”) (e.g. Reg. No. TMA549396, registered Aug. 7, 2001). See Compl. Ex. A. Respondent’s <tdbankonlinebaking.com> domain name is confusingly similar to Complainant’s mark as it merely adds the generic and/or descriptive terms “onlinebaking” along with the “.com” generic top-level domain (“gTLD”). The term “baking” in the domain name is a misspelled version of the term “banking” which describes Complainant’s services.
Respondent has no rights or legitimate interests in the <tdbankonlinebaking.com> domain name. Respondent is not commonly known by the domain name, as the WHOIS information lists the registrant as “I S / Internet Consulting Services Inc.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to various unrelated third-party websites. See Compl. Ex. F. Further, Respondent offers to sell the domain name for an amount which far exceeds Respondent’s out-of-pocket expenses incurred when registering the domain name. See Compl. Ex. E.
Respondent registered and uses the <tdbankonlinebaking.com> domain name in bad faith. First, Respondent is currently offering to sell the domain name. See Compl. Ex. E. Next, Respondent has been involved in numerous prior UDRP proceedings in which it has been ordered to transfer confusingly similar domain names. See Amend. Compl. pg. 9. Further, Respondent uses the domain name to redirect Internet users to various third-party websites for its own commercial gain, thereby disrupting Complainant’s business. See Compl. Ex. F. Additionally, Respondent engages in typosquatting by creating a slight misspelling of Complainant’s own <tdbankonlinebanking.com> domain name. See Compl. Ex. G. Moreover, Respondent, by registering a domain name so closely resembling Complainant’s famous and well-known TD BANK mark, knew or should have known of Complainant’s rights in the mark prior to registering the domain name at issue. Finally, Respondent failed to respond to Complainant’s attempts to resolve this matter outside of legal proceedings. See Compl. Ex. I (cease and desist letters sent to Respondent).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is the second largest bank in Canada by market capitalization and deposits and the sixth largest bank in North America.
2. Complainant has established its trademark rights in the TD BANK mark through its registration with the Canadian Intellectual Property Organization (“CIPO”) (e.g. Reg. No. TMA549396, registered Aug. 7, 2001).
3. Respondent registered the <tdbankonlinebaking.com> domain name on April 16, 2018.
4. Respondent uses the domain name to redirect users to various unrelated third-party websites and is offering to sell the domain name in breach of the Policy.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the TD BANK mark through its registration of the mark with the CIPO (e.g. Reg. No. TMA549396, registered Aug. 7, 2001). See Compl. Ex. A. Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of 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.”). Accordingly, the Panel finds that Complainant has established rights in the TD BANK mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TD BANK mark. Complainant argues that Respondent’s <tdbankonlinebaking.com> domain name is confusingly similar to Complainant’s mark as it merely adds the generic and/or descriptive terms “onlinebaking” along with the “.com” gTLD. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of 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). Complainant notes that the term “baking” in the domain name is a misspelled version of the term “banking” which describes Complainant’s services. The Panel therefore finds that the <tdbankonlinebaking.com> domain name is confusingly similar to the TD BANK mark under Policy ¶4 (a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TD BANK trademark and to use it in its domain name, adding merely the generic and/or descriptive word “online” and the generic and/or descriptive word “baking” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <tdbankonlinebaking.com> domain name on April 16, 2018;
(c) Respondent uses the domain name to redirect users to various unrelated third-party websites and is offering to sell the domain name in breach of the Policy;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <tdbankonlinebaking.com> domain name, as Respondent is not commonly known by the domain name and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. 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 Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “I S / Internet Consulting Services Inc.” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. See Amend. Compl. Ex. E. Accordingly, the Panel agrees that Respondent is not commonly known by the <tdbankonlinebaking.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent uses the <tdbankonlinebaking.com> domain name to redirect users to various unrelated third-party websites. Using a confusingly similar domain to promote services unrelated to a complainant can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). Complainant provides a screenshot of the resolving webpage, which shows that the domain name redirects users to websites such as <realtor.com>. See Compl. Ex. F. As such, the Panel finds that Respondent’s use of the domain name to promote unrelated services fails to amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii);
(g) Complainant argues that Respondent offers to sell the domain name for an amount which far exceeds Respondent’s out-of-pocket expenses incurred when registering the domain name. Offering a confusingly similar domain name for sale can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides the WHOIS information, which displays the message “tdbankonlinebaking.com is available $299.00 + $17.99/yr.” See Compl. Ex. E. As such, the Panel agrees and finds that Respondent offers the disputed domain name for sale, indicative of possessing no rights and legitimate interests for the purposes of Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Complainant submits that Respondent is currently offering to sell the domain name. Offering to sell a confusingly similar domain name can evince bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). As noted above, Complainant provides the WHOIS information, which displays the message “tdbankonlinebaking.com is available $299.00 + $17.99/yr.” See Compl. Ex. E. Accordingly, the Panel accepts that Respondent’s general offer to sell the domain name is evidence of bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant contends that Respondent has been involved in numerous prior UDRP proceedings in which it has been ordered to transfer confusingly similar domain names. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding as evidence of bad faith under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant provides various prior UDRP proceedings which list the respondent as “I S / Internet Consulting Services Inc.” where the domain names were transferred to the complainant in the proceeding. See Amend. Compl. pg. 9. Complainant lists a total of six (6) prior cases. Id. Accordingly, the Panel accepts that Respondent’s prior adverse UDRP decisions are evidence of bad faith under Policy ¶ 4(b)(ii).
Thirdly, Complainant submits that Respondent uses the domain name to redirect Internet users to various unrelated third-party websites for its own commercial gain, thereby disrupting Complainant’s business. Using a confusingly similar domain name to redirect users to third-party websites can evince bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel notes that Complainant provides a screenshot of the resolving webpage, which shows that the domain name redirects users to websites such as <realtor.com>. See Compl. Ex. F. Accordingly, the Panel agrees that Respondent’s redirection of Internet users provides evidence of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Fourthly, Complainant avers that Respondent engages in typosquatting by creating a slight misspelling of Complainant’s own <tdbankonlinebanking.com> domain name. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Complainant provides evidence of its registration of the above-mentioned domain name, which it registered on October 8, 2009. See Compl. Ex. G. Thus, as the Panel agrees, the Panel finds that Respondent’s changes of Complainant’s domain name in the disputed domain name further demonstrates Respondent’s bad faith.
Fifthly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s TD BANK mark at the time of registering the <tdbankonlinebaking.com> domain name. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and that actual knowledge evinces bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent, by registering a domain name so closely resembling Complainant’s famous and well-known TD BANK mark, must have been aware of Complainant’s rights in the mark prior to registering the domain name at issue. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the TD BANK mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbankonlinebaking.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 19, 2019
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