The Toronto-Dominion Bank v. Ibraom Jovita
Claim Number: FA2001001880995
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Ibraom Jovita (“Respondent”), Unknown.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbcantrust.com>, registered with Registrar of Domain Names REG.RU LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2020; the Forum received payment on January 28, 2020.
On January 30, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <tdbcantrust.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 February 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2020 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@tdbcantrust.com. Also on February 4, 2020, 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 February 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Language of the Proceeding
In the ordinary course, UDRP Rule 11(a) prescribes that this proceeding be conducted in the language of the controlling Registration Agreement for the contested domain name. That language is Russian. However, Complainant requests that we conduct the proceeding in English. In support of its request, Complainant proffers that the domain name in issue, <tdbcantrust.com>, is rendered in English, signaling that Respondent is familiar with the English language, and that English is Complainant’s language, as well as that to compel Complainant to proceed in Russian would subject Complainant to the undue expense of translating all relevant documents into Russian, with attendant prejudicial delay.
Inasmuch as Respondent does not object to Complainant’s request or counter any of the contentions offered in support of it, we look to the proviso of Rule
11(a) permitting the Panel to proceed in a language other than that of the relevant registration agreement, “having regard to the circumstances” of the case. In so doing, we conclude that it is in the interests of justice to grant Complainant’s request.
See, for example, The Argento Wine Co. Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a UDRP proceeding should be English, notwithstanding the different language of the pertinent registration agreement, in light of evidence that a respondent had command of English).
See also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that a UDRP proceeding should be conducted in English, in that:
It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
Accordingly, this proceeding will be conducted, in its entirety, and for all purposes, in the English language.
A. Complainant
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America.
Complainant holds a registration for the TD BANK service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,788,055, registered May 11, 2010.
Complainant also holds a registration for the CANADA TRUST trademark, which is on file with the Canadian Intellectual Property Office (“CIPO”) as Registry No.
TMA409300, registered March 12, 1993, and renewed as of March 12, 2008.
Respondent registered the domain name <tdbcantrust.com> on or about October 17, 2019.
The domain name is confusingly similar to Complainant’s TD BANK and CANADA TRUST marks.
Respondent has not been commonly known by the domain name.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not granted Respondent a license or other permission to use either of the TD BANK or CANADA TRUST marks in any manner.
Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Rather, Respondent fails to make any active use of the domain name.
Respondent has not demonstrated any attempt to make a legitimate use of the domain name.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has engaged in a pattern of bad faith registration and use of domain names.
Respondent has employed a privacy service to hide its identity while registering the domain name.
Respondent has failed to respond to cease-and-desist letters issued by Complainant.
Respondent registered the domain name while knowing of Complainant’s rights in the TD BANK and CANADA TRUST marks.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in the TD BANK and CANADA TRUST marks sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of those marks with national trademark authorities, the USPTO and CIPO. See, for example, THE TORONTO-DOMINION BANK v. Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho, FA 1724017 (Forum May 17, 2017) (finding registrations with the USPTO and CIPO satisfactory to demonstrate the standing requirements of Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its marks arise from registration of the marks in a jurisdiction (here the United States and Canada) other than that in which Respondent resides or does business (residence and business site here indeterminate, but we note a registration agreement in the Russian language). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <tdbcantrust.com> domain name is confusingly similar to Complainant’s TD BANK and CANADA TRUST marks.
The domain name is constructed of common abbreviations for each of the marks, with only deletion of the spaces between their terms and the addition of the generic Top-Level Domain (“gTLD”) “.com.” These alterations of the marks, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum Mar. 17, 2014) (finding a UDRP Respondent’s <kisskay.com> domain name confusingly similar to a complainant’s KAY and EVERY KISS BEGINS WITH KAY marks).
See also Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that the affixation of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD or other TLD.
Finally, under this head of the Policy, Respondent’s elimination of the spaces between the terms of Complainant’s marks in constructing the challenged domain name is of no consequence to our analysis for the reason that domain name syntax does not permit the use of blank spaces.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <tdbcantrust.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <tdbcantrust.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the TD BANK and CANADA TRUST marks in any manner. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Ibraom Jovita,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the <tdbcantrust.com> domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair use, in that Respondent fails to make any active use of the domain name and has not demonstrated tangible preparations to use it in a bona fide or legitimate undertaking. This failure either to employ or prepare to employ the domain name over the period of its registration shows neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum August 7, 2012), the panel there concluding that inactive use (called “passive holding”) of a disputed domain name by a UDRP respondent:
permits the inference that … [respondent] … lacks rights and legitimate interests in the [challenged] domain names.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The Complaint filed in this proceeding spells out five previous instances in which Respondent registered and used domain names that were confusingly similar to the marks of prominent enterprises, principally banking institutions like the instant Complainant, without their consent. This pattern of behavior may be taken as evidence that Respondent registered and uses the <tdbcantrust.com> domain name in bad faith. See, for example, Am. Online, Inc. v. iDomainNames.com, FA 93766 (Forum March 16, 2000) (finding a pattern of bad faith registration and use where a UDRP respondent registered several domain names unrelated to its business that mimicked prominent marks).
It is also plain from the evidence that Respondent registered the challenged <tdbcantrust.com> domain name while knowing of Complainant and its rights in the TD BANK and CANADA TRUST marks. This further demonstrates Respondent’s bad faith in registering the domain name. See, for example, Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1599884 (Forum February 25, 2014) (finding that a respondent knew of a UDRP complainant and its rights in a mark incorporated in a disputed domain name when it registered that domain name, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii). See also Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith registration where a respondent was "well-aware of” a UDRP complainant's mark at the time its confusingly similar domain name was registered).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <tdbcantrust.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 2, 2020
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