The Toronto-Dominion Bank v. Milen Radumilo
Claim Number: FA1905001845434
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <td-banks.com>, registered with Tucows Domains Inc.
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 May 29, 2019; the Forum received payment on May 29, 2019.
On May 30, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <td-banks.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. 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 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@td-banks.com. Also on June 3, 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 June 26, 2019, 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
Complainant uses their trademark TD BANK in connection with banking services. Complainant has rights in the TD BANK trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,788,055, registered May 11, 2010). Respondent’s <td-banks.com> domain name is confusingly similar to Complainant’s TD BANK trademark as it wholly incorporates the trademark, merely adding the letter “s” and a hyphen.
Respondent has no rights or legitimate interests in the <td-banks.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TD BANK trademark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to redirect users to a website hosting links to third party websites that directly compete with Complainant’s business. Respondent’s lack of rights or legitimate interests in the disputed domain name is also demonstrated by its offer to sell the disputed domain name in excess of out-of-pocket expenses.
Respondent registered and is using the <td-banks.com> domain name in bad faith. Respondent intentionally seeks to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent has exhibited a pattern of bad faith registration and typosquatting. Respondent had actual or constructive knowledge of Complainant’s rights in the TD BANK trademark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following trademark registrations:
Canadian trademark No. TMA549396 TD BANK (word), registered August 7, 2001 for services in classes 35, 36 and 37;
Canadian trademark No. TMA396087 TD (word), registered March 20, 1992 for services in classes 35, 36 and 37;
Canadian trademark No. TMA644911 TD (fig), registered July 26, 2005 for goods and services in classes 9, 16, 35 and 36;
United States trademark No. 3788055 TD BANK (word), registered May 11, 2010 for services in class 36;
United States trademark No. 1649009 TD (fig), registered June 25, 1991 for services in class 36;
United States trademark No. 3041792 TD (word), registered January 10, 2006 for services in class 36;
European Union Trade Mark No. 001942069 TD (word), registered July 31, 2001 for goods and services in classes 16, 35 and 36; and
European Union Trade Mark No. 009564394 TD BANK GROUP (word), registered June 10, 2011 for goods and services in classes 16, 35 and 36.
The disputed domain name <td-banks.com> was registered on July 31, 2018.
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 rights in the TD BANK trademark based upon registration of the trademark with the USPTO (e.g. Reg. No. 3,788,055, registered May 11, 2010). Registration of a trademark with the USPTO is sufficient to establish rights in that trademark under Policy ¶ 4(a)(i). 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).”). The Panel therefore holds that Complainant’s registration of the TD BANK trademark with the USPTO is sufficient to establish rights in the trademark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <td-banks.com> domain name is confusingly similar to the TD BANK trademark, as it wholly incorporates the trademark, merely adding the letter “s” and a hyphen.
Generally, the addition of letters and/or hyphens is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”). The Panel notes that Respondent’s addition of the generic top-level domain “.com” is irrelevant under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
Further, Respondents addition of the letter “s” and a hyphen to Complainant’s trademark is not enough to differ from Complainant’s trademark – especially as technical reasons only give two options to use a two letter trademark as a domain name, namely either by writing the two words as one word, or by (as in the present case) use a hyphen. The Panel agrees that the disputed domain name is confusingly similar to Complainant’s TD BANK trademark 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 that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by <td-banks.com>, nor has Complainant authorized Respondent to use the TD BANK trademark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its trademark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). 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 of record identifies the owner of <td-banks.com> as “Milen Radumilo” and no information on record indicated that Respondent was authorized to register a domain name with Complainant’s trademark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <td-banks.com> domain name.
Complainant further argues Respondent’s lack of rights and legitimate interests in the <td-banks.com> domain name is demonstrated by its failure to use the domain name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the domain name resolves to a website that is being used to redirect users to a website hosting links to third party websites that directly compete with Complainant’s business. Generally, use of a domain name to host links that compete with a complainant is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, the Panel notes that Complainant has provided a screenshot of the resolving website associated with the disputed domain name to support this contention. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <td-banks.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant also asserts Respondent’s lack of rights or legitimate interests in the <td-banks.com> domain name is demonstrated by its offer to sell the disputed domain name for an excess of out-of-pocket costs. Generally, a respondent’s offer to sell a disputed domain name is not a use indicative of rights or legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <td-banks.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 7, 2019
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