The Toronto-Dominion Bank v. Todd Huttenstine
Claim Number: FA1908001860100
Complainant is The Toronto-Dominion Bank ("Complainant"), represented by CSC Digital Brand Services AB, Sweden. Respondent is Todd Huttenstine ("Respondent"), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbankcoins.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 29, 2019; the Forum received payment on August 29, 2019.
On August 30, 2019, GoDaddy.com, LLC confirmed by email to the Forum that the <tdbankcoins.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 August 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@tdbankcoins.com. Also on August 30, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 September 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is the second largest bank in Canada and the sixth largest in North America. Complainant has over 86,000 employees and over 25 million clients worldwide. Complainant has used TD, TD BANK, and related marks for its goods and services since 1969. Complainant owns U.S. and Canadian trademark registrations for both TD and TD BANK. Complainant claims that its brand is well recognized globally, citing various surveys that rank it among the world's most valuable brands.
Respondent registered the disputed domain name <tdbankcoins.com> in June 2019. The domain name is being used for a web page that contains links to third-party websites relating to banks or coins, some of which compete directly with Complainant. Complainant states that Respondent is not sponsored by or affiliated with Complainant, and is not commonly known by the disputed domain name.
Complainant contacted Respondent by email in July 2019, asserting its trademark rights. In response, Respondent claimed to have registered the domain name for a business endeavor unrelated to Complainant, and offered to transfer the domain name to Complainant for $7,000.
Complainant contends on the above grounds that the disputed domain name <tdbankcoins.com> is confusingly similar to its TD BANK mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <tdbankcoins.com> incorporates Complainant's registered TD BANK trademark, omitting the space and adding the generic term "coins" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Toronto-Dominion Bank v. Carlo Mormina, FA 1677457 (Forum July 5, 2016) (finding <tdbankbitcoin.com> confusingly similar to TD BANK). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's well-known registered mark, and its sole apparent use has been in connection with a website comprised of sponsored advertising links, including links to competitors of Complainant. The Panel notes that this website appears to be a default parking page generated by the registrar, indicating that Respondent may not have made any active use of the disputed domain name. In any event, Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and Respondent has failed to come forward with any evidence of such rights or interests. See, e.g., Toronto-Dominion Bank v. Anthony Cinelli, FA 1716316 (Forum Mar. 7, 2017) (finding lack of rights or interests under similar circumstances). Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name clearly refers to Complainant's well-known mark, and its sole apparent use has been to promote services that compete directly with those offered by Complainant. While the Panel places little weight on Respondent's offer to transfer the domain name to Complainant for $7,000 (the offer having been made only in response to Complainant's cease-and-desist correspondence, and characterized by Respondent as a "settlement" offer), Respondent's vague explanation does little to dispel the inference that his actual intent was to profit from confusion with Complainant's mark, either by selling the domain name or by using it to attract Internet users seeking Complainant. See, e.g., State Farm Mutual Automobile Insurance Co. v. Moser, Troy, FA 1829743 (Forum Mar. 14, 2019) (inferring bad faith in similar circumstances). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbankcoins.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 21, 2019
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