The Toronto-Dominion Bank v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2004001894062
Complainant is The Toronto-Dominion Bank ("Complainant"), represented by CSC Digital Brand Services AB, Sweden. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbanknrth.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 April 28, 2020; the Forum received payment on April 28, 2020.
On April 29, 2020, GoDaddy.com, LLC confirmed by email to the Forum that the <tdbanknrth.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 April 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2020 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@tdbanknrth.com. Also on April 30, 2020, 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 May 24, 2020, 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. Complainant's U.S. subsidiary was formerly known as TD Banknorth.
Respondent registered the disputed domain name <tdbanknrth.com> via a privacy registration service in October 2019. The domain name is being used to display a page consisting of pay-per-click links related to banking. The domain name is listed for sale on the Sedo marketplace. Complainant states that Respondent is not sponsored by or affiliated with Complainant, has not been given permission to use Complainant's marks, and is not commonly known by the disputed domain name. Complainant notes that Respondent has been involved in many prior proceedings under the Policy in which Respondent has been found to have registered domain names in bad faith, and that Respondent currently holds registrations for several other domain names that incorporate well-known trademarks.
Complainant contends on the above grounds that the disputed domain name <tdbanknrth.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 <tdbanknrth.com> incorporates Complainant's registered TD BANK trademark, adding a misspelling of the generic term "north" (a term associated with Complainant's U.S. subsidiary) and the ".com" generic top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Toronto-Dominion Bank v. Above.com Domain Privacy, FA 1540025 (Forum Mar. 10, 2014) (finding <tdbanknh.com> confusingly similar to TD BANK); Toronto-Dominion Bank v. Wanzhongmedia / Zhong Wan; WhoisPrivacy Limited / Whois Privacy, FA 1536890 (Forum Feb. 14, 2014) (finding <tdbanknorrth.com> confusingly similar to TD, TD BANK, or BANKNORTH); Ashley Furniture Industries, Inc. v. BSI Inc, FA 1213011 (Forum Aug. 7, 2008) (finding <ashleynorth.com> confusingly similar to ASHLEY). 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 registered mark without authorization. It is being offered for sale through a domain name marketplace and is being used to display pay-per-click links to competitors of Complainant. Neither of these uses is likely to give rise to rights or legitimate interests under the Policy. See, e.g., Toronto-Dominion Bank v. Milen Radumilo, FA 1845434 (Forum July 7, 2019) (finding lack of rights or interests where domain name was used to display links to competitors of complainant and was offered for sale).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. 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)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." 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."
Respondent used a privacy registration service to register a domain name incorporating Complainant's mark and obviously intended to create confusion with Complainant. The domain name is being offered for sale through a domain name marketplace, presumably for an amount in excess of Respondent's out-of-pocket costs, and is being used to display pay-per-click links to competitors of Complainant, presumably for Respondent's commercial benefit. Such conduct is indicative of bad faith registration and use under the provisions cited above. See, e.g., Toronto-Dominion Bank v. Amanosi Dick / Tdsavings, FA 1889816 (Forum Apr. 23, 2020) (finding bad faith based on use of privacy service to register domain name combining Complainant's TD BANK mark with generic term related to Complainant's business); MTD Products Inc v. Milen Radumilo, FA 1861380 (Forum Oct. 5, 2019) (finding bad faith based on use of privacy service to register domain name with obvious association with trademark, general offer to sell domain name, and use of domain name to redirect Internet users to third-party websites). The Panel also notes Respondent's record as a serial cybersquatter. See, e.g., Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018). 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 <tdbanknrth.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 24, 2020
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