The Toronto-Dominion Bank v. Manoah Raymond Achterhoff
Claim Number: FA1910001867360
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Manoah Raymond Achterhoff (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbank.host>, registered with NameCheap, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 18, 2019; the Forum received payment on October 18, 2019.
On Oct 18, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <tdbank.host> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 October 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@tdbank.host. Also on October 22, 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 November 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 operates in banking and financial services in the Canada and the United States. Complainant has rights in the TD BANK mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,788,055, registered May 11, 2010) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA549396, registered August 7, 2001). Respondent’s <tdbank.host> is identical and/or confusingly similar to Complainant’s TD BANK mark because it contains Complainant’s TD BANK mark in its entirety.
Respondent has no rights or legitimate interests in the <tdbank.host> domain name. Complainant has not given Respondent permission to use Complainant’s TD BANK mark and Respondent is not commonly known by the disputed domain name. Further, Respondent is not actively using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain name redirects users to a website that lacks content. See Amend.
Respondent has registered and used <tdbank.host> in bad faith. The disputed domain name consists solely of Complainant’s mark, so there is no plausible good-faith reason for Respondent to have registered the disputed domain name. Respondent intends to cause confusion as to the source of the domain name through passive holding of the domain name. Further, Respondent had actual knowledge of Complainant’s trademarks at the time of registration based upon the size of Complainant’s business, Respondent’s other registered domain name relating to Complainant’s TD BANK mark, and previous correspondence.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds, from Complainant’s uncontested allegations and evidence, that Complainant is entitled to the requested relief of transfer of the <tdbank.host> domain name.
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 argues that its rights in the TD BANK mark are based upon registration with the USPTO and CIPO. Registering a mark is sufficient to establish rights in that mark pursuant to Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. DOMAIN CONTROLLER / YOYO EMAIL, FA 1622018 (Forum July 14, 2015) (holding that “Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.”). Complainant provides copies of its registrations with the USPTO (e.g., Reg. No. 3,788,055, registered May 11, 2010) and CIPO (e.g., Reg. No. TMA549396, registered August 7, 2001). The Panel finds that Complainant has rights in the TD BANK mark based on Policy ¶4(a)(i).
Complainant also argues that Respondent’s <tdbank.host> domain name is identical and/or confusingly similar to Complainant’s TD BANK mark because it contains Complainant’s TD BANK mark in its entirety. The disputed domain name adds the “.host” generic top-level domain (“gTLD”) to Complainant’s mark. The addition of a gTLD does not distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Since Respondent’s <tdbank.host> domain contains the TD BANK mark and simply adds the “.host” gTLD, the Panel finds that Respondent’s disputed domain name is identical to the Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then 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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent is not actively using the <tdbank.host> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use and therefore has no rights or legitimate interests in the disputed domain name. Failure to demonstrate actively use a domain name may not reflect a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant demonstrates that the disputed domain name redirects to a website that resolves to a blank page and lacks content. The Panel finds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or as a noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also argues that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests. WHOIS data can support a claim that Respondent is not commonly known by the disputed domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). Respondent’s lack of permission to use the mark in the disputed domain name can further support a claim that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record shows that Respondent is known as “Manoah Raymond Achterhoff.” There is no information of the record to show that Complainant authorized Respondent to use the TD BANK mark. The Panel finds that Respondent lacks rights or legitimate interests in respect of the disputed domain name under Policy ¶ 4(c)(ii).
Complainant has proved this element.
Complainant argues Respondent had actual knowledge of Complainant’s trademarks at the time of registration. Multiple uses of the mark can suggest Respondent’s actual knowledge in a mark. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Further, actual knowledge of the mark can be found based on the fame and notoriety of the mark. See 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).”)., Complainant provides a second domain name used by Respondent that contains the TD BANK mark as well as evidence of the fame and notoriety of the mark. The Panel finds that Respondent had actual notice of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent has registered and used <tdbank.host> in bad faith as the disputed domain name can only be taken as intending to cause confusion among internet users as to the source of the domain name. Registration of a domain name obviously connected to a complainant’s mark, creating a likelihood of confusion for commercial gain can demonstrate bad faith registration and use per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain); see also Indymac Bank v. Ebeyer, FA 0175292 (NAF Sept. 19, 2003) (Panel holding “there is no conceivable way [r]espondent could use the disputed domain names such that they would not infringe on [c]omplainant’s INDYMAC mark, and therefore it is illogical to await [r]espondent’s use of the domain names to find bad faith use”). Complainant argues that Respondent registered the disputed domain name in bad faith consisting solely of Complainant’s mark, so there is no plausible good faith reason for Respondent to have registered the disputed domain name. The Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant has proved this element.
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.host> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
November 18, 2019
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