The Toronto-Dominion Bank v. S Jon Grant
Claim Number: FA2108001960599
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by Jason Hayden of CSC Digital Brand Services AB, Sweden. Respondent is S Jon Grant (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbank.fit>, registered with Dynadot, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2021; the Forum received payment on August 23, 2021.
On August 23, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <tdbank.fit> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2021 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.fit. Also on August 30, 2021, 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 September 24, 2021, 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
The Complainant is the second largest bank in Canada and the sixth largest bank in North America. Complainant has rights in the TD BANK trademark through its registration of the trademark with the multiple governmental agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,788,055, registered May 11, 2010) as well as the Canadian Intellectual Property Office (e.g., Reg. No. TMA549396, registered Aug. 7, 2001). Respondent’s <tdbank.fit> domain name is identical or confusingly similar to Complainant’s trademark as Respondent merely adds the “.fit” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <tdbank.fit> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s trademark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is hosting competing and unrelated hyperlinks.
Respondent registered and uses the <tdbank.fit> domain name in bad faith. Specifically, Respondent attempting to sell the disputed domain name. Next, Respondent is attempting to attract Internet users for commercial gain by hosting competing and unrelated hyperlinks. Also, Complainant sent cease and desist letter, which went unanswered. Finally, Respondent had constructive or actual knowledge of Complainant’s trademark at the time of registration.
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; and
United States trademark No. 3041792 TD (word), registered January 10, 2006 for services in class 36.
The <tdbank.fit> domain name was registered on January 9, 2021.
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 through its registration of the trademark with the multiple governmental agencies around the world, including the USPTO (e.g., Reg. No. 3,788,055, registered May 11, 2010) as well as the Canadian Intellectual Property Office (e.g., Reg. No. TMA549396, registered Aug. 7, 2001). Registration of a trademark within many governmental agencies around the world, including USPTO, is sufficient to demonstrate rights in a trademark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also 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).”). Therefore, the Panel finds that the Complainant has rights in the TD BANK trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <tdbank.fit> domain name is identical or confusingly similar to Complainant’s trademark as Respondent merely adds the “.fit” gTLD. Adding a gTLD to a complainant’s trademark is generally not sufficient to distinguish a disputed domain name from a trademark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”). Here, the Panel notes that although “.fit” is a generic top-level domain targeted to the fitness industry, and other fitness-related companies and enthusiasts, “fit” is also an English verb meaning “to be suitable for something” and thereby – if considered at all – could be seen as a quality statement of the services provided by the Complainant. Therefore, the Panel finds that Respondent’s <tdbank.fit> domain name is in fact identical (also considering that a two worded trademark for pure technical reasons needs to be written as one word when used as a domain name) to Complainant’s trademark under 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 <tdbank.fit> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s trademark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 to use a complainant’s trademark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. 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 Panel note that the WHOIS of record identifies the Respondent as “S Jon Grant” and no information in the record indicates that Respondent was authorized to use Complainant’s trademark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <tdbank.fit> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <tdbank.fit> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is hosting competing and unrelated hyperlinks. Hosting hyperlinks and advertisements, whether competing or unrelated to the complainant’s business, may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant provides screenshots of the <tdbank.fit> domain name’s resolving webpages, which shows a variety of hyperlinks, some which offer competing financial services. Therefore, the Panel finds that Respondent fails to use the <tdbank.fit> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <tdbank.fit> domain name in bad faith. Specifically, Respondent attempting to sell the disputed domain name. Registering a disputed domain name to then offer for sale may be evidence of bad faith under Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i). ”). Here, Complainant provides a screenshot of the disputed domain name listed in a GoDaddy shopping cart, with a price of $299. Therefore, the Panel finds that Respondent registered and uses the <tdbank.fit> domain name in bad faith under Policy ¶ 4(b)(i).
Next, Complainant argues that Respondent is attempting to attract Internet users for commercial gain by hosting competing and unrelated hyperlinks. As noted, registering a disputed domain name to host hyperlinks, either competing or noncompeting hyperlinks, may be evidence of bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Here, the Panel again refers to the fact that Complainant has provided screenshots of the <tdbank.fit> domain name’s resolving webpages, which shows a variety of hyperlinks, some which offer competing financial services and others offer unrelated services. Therefore, the Panel finds that Respondent registered and uses the <tdbank.fit> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent’s failure to respond to its cease and desist letters indicates bad faith. Bad faith may be found in a Respondent who does not reply to a cease-and-desist letter. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides a series of demand letters and follow-ups it sent to Respondent. There is no evidence in the record that Respondent corresponded back. Therefore, the Panel finds this behavior constituted bad faith by Respondent under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the TD BANK trademark at the time of registering the <tdbank.fit> domain name. The Panel disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel choose instead to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. The Panel finds it highly likely that the Respondent did have actual knowledge of Complainant’s right in its mark, which support a finding of bad faith under Policy ¶ 4(a)(iii).
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.fit> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 8, 2021
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