The Toronto-Dominion Bank v. gilbe yc / sapana shribast
Claim Number: FA2203001990114
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is gilbe yc / sapana shribast (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thetorontodominionbank.com> and <thetoronto-dominionbank.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2022; the Forum received payment on March 29, 2022.
On March 30, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 March 30, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2022 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@thetorontodominionbank.com, postmaster@thetoronto-dominionbank.com. Also on March 30, 2022, 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 April 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the disputed domain names are effectively controlled by the same person or entity, operating under aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the disputed domain names utilize similar words and marks in their makeup, are registered with the same registrar, use the same privacy service, and were registered within 2 days of each other, with similar discrepancies in the WHOIS information. The Panel finds that the named Respondents are one in the same and will be referred to as Respondent.
A. Complainant
1. Respondent’s <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names are confusingly similar to Complainant’s THE TORONTO-DOMINION BANK mark.
2. Respondent does not have any rights or legitimate interests in the <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names.
3. Respondent registered and uses the <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names in bad faith.
B. Respondent did not file a Response.
Complainant is a banking and financial services company, and holds a registration for the THE TORONTO-DOMINION BANK mark with various trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (Reg. No 1,649,009, registered June 25, 1991) and the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 907,489,727, registered July 22, 2009).
Respondent registered the <thetorontodominionbank.com> domain name on July 7, 2021, and the <thetoronto-dominionbank.com> domain name on July 9, 2021, and inactively holds the domain names.
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”).
The Panel finds that Complainant has rights in the THE TORONTO-DOMINION BANK mark through its registration with various trademark agencies, including the USPTO and UKIPO. See Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (Registration with the UKIPO (or any other governmental authority) is sufficient to establish rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”)
Respondent’s <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names use THE TORONTO-DOMINION BANK mark in its entirety, removes the spaces and/or the hyphen, and adds the “.com” gTLD. Removing spaces and punctuation and adding the “.com” gTLD is insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Albertson’s, Inc. v. Bennett, FA 117013 (Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”) Therefore, the Panel finds that Respondent’s <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names are confusingly similar to Complainant’s THE TORONTO-DOMINION BANK mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names, as is not commonly known by the domain name and Complainant has not authorized or licensed Respondent to use it’s the TORONTO-DOMINION BANK mark. The WHOIS of record identifies Respondent as “gilbe yc / sapana shribast.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.).
Complainant also argues that
Respondent does not use the <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names for a bona fide
offering of goods or services or a legitimate noncommercial or fair use. Under
Policy ¶¶ 4(c)(i) and (iii), inactively holding a domain name is not a bona
fide offering of goods or services or a legitimate noncommercial or fair
use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds
that the [failure to make an active use] of a domain name that is identical to
Complainant’s mark is not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).”) Complainant demonstrates that the
disputed domain names resolve to pages with no content. The Panel finds that
this is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use, and thus
Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names in bad faith by inactively holding them. Inactively holding a disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”) Therefore, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent registered the <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names with bad faith actual knowledge of Complainant’s rights in the THE TORONTO-DOMINION BANK mark. Under Policy ¶ 4(a)(iii), actual knowledge is established when a respondent registers a well-known mark in a domain name, demonstrating bad faith. 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).”) The Panel finds that Respondent registered the disputed domain names with knowledge of Complainant’s well-known THE TORONTO-DOMINION BANK, in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <thetorontodominionbank.com> and <thetoronto-dominionbank.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 25, 2022
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