The Toronto-Dominion Bank v. v kendall
Claim Number: FA1304001493799
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is v kendall (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdwaterhouse.xxx>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2013; the National Arbitration Forum received payment on April 9, 2013.
On April 9, 2013, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tdwaterhouse.xxx> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 April 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2013 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@tdwaterhouse.xxx. Also on April 10, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <tdwaterhouse.xxx> domain name, the domain name at issue, is confusingly similar to Complainant’s TDWATERHOUSE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The Complainant, The Toronto-Dominion Bank (publicly listed NYSE: TD, TSX: TD, TYO: 8640), is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Commonly known as TD and operating as TD Bank Group, the bank was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant has 10 subsidiaries that collectively employ over 79,000 people and serve over 19 million clients worldwide. TD Waterhouse, an investment and wealth management subsidiary of TD Bank Group, started when TD Bank purchased Waterhouse Securities in 1996. The name TD Waterhouse was formed and was used for TD's British, Canadian and U.S. brokerage activities. The TD Waterhouse brand is still used in Canada to promote its discount brokerage services using the domain names <tdwaterhouse.com> and <tdwaterhouse.ca>. Complainant holds trademark registrations with Canada’s Intellectual Property Office (“CIPO”) for the TD WATERHOUSE mark (e.g., Reg. No. TMA589362 registered September 10, 2003).
Respondent’s <tdwaterhouse.xxx> domain name is identical to Complainant’s TD WATERHOUSE mark. The WHOIS information suggests Respondent is known as an entity other than the trademark associated with Complainant.
Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. The <tdwaterhouse.xxx> domain name does not currently resolve to an active website. Respondent’s registration of the <tdwaterhouse.xxx> domain name demonstrates bad faith under Policy ¶ 4(b)(ii) and Policy ¶ 4(b)(iii). Respondent registered the disputed domain name to attempt to eventually extort money from the Complainant.
Respondent’s failure to make an active use of the disputed domain indicates that Respondent has engaged in bad faith registration and use. The domain name at issue was registered by Respondent on December 14, 2011.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Complainant, The Toronto-Dominion Bank (publicly listed NYSE: TD, TSX: TD, TYO: 8640), is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Commonly known as TD and operating as TD Bank Group, the bank was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant has 10 subsidiaries that collectively employ over 79,000 people and serve over 19 million clients worldwide. TD Waterhouse, an investment and wealth management subsidiary of TD Bank Group, started when TD Bank purchased Waterhouse Securities in 1996. The name TD Waterhouse was formed and was used for TD's British, Canadian and U.S. brokerage activities. The TD Waterhouse brand is still used in Canada to promote its discount brokerage services using the domain names <tdwaterhouse.com> and <tdwaterhouse.ca>. Complainant’s registrations with the CIPO for the TD WATERHOUSE mark (e.g., Reg. No. TMA589362 registered September 10, 2003) establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through the complainant’s national trademark registrations).
Respondent’s <tdwaterhouse.xxx> domain name is identical to Complainant’s TD WATERHOUSE mark under Policy ¶ 4(a)(i). The disputed domain name merely removes the space between words in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.xxx.” Respondent’s removal of a space and addition of a gTLD do not adequately distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. eLove Media LLC., / Ming Li, FA 1429679 (Nat. Arb. Forum March 22, 2012) (finding that the respondent’s failure to make changes beyond the removal of spaces between words in the complainant’s mark and the addition of the top-level domain “.xxx” rendered the disputed domain name identical to the complainant’s mark under Policy ¶ 4(a)(i)); see also Bass Pro Intellectual Prop., LLC v. Stanley, FA 1433158 (Nat. Arb. Forum Apr. 24, 2012) (finding no reason to deviate from the principle of ignoring the gTLD extension when comparing a domain name and a trademark in cases involving the “.xxx” TLD). The Panel therefore concludes that Respondent’s <tdwaterhouse.xxx> domain name is identical to Complainant’s TD WATERHOUSE mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has not been commonly known by the <tdwaterhouse.xxx> domain name. The WHOIS information suggests Respondent is known as an entity other than the trademark associated with Complainant, and that Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. Given Respondent’s failure to satisfy its evidentiary burden in this case, the Panel determines that Respondent is not commonly known by the <tdwaterhouse.xxx> domain name within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is currently using the <tdwaterhouse.xxx> domain name to resolve to an inactive website, demonstrating Respondent’s lack of rights or legitimate interests in the domain. The Panel rules that Respondent has not made an active use of the disputed domain, and such non-use of the domain constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
While Policy ¶ 4(b) sets out four factors that may be considered when analyzing bad faith, this list is not meant to be exclusive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Therefore, the Panel has considered the totality of the circumstances to determine bad faith.
Respondent registered the disputed domain name with knowledge of Complainant and its rights in the TD WATERHOUSE mark. Complainant’s TD WATERHOUSE mark is known internationally, and Respondent’s registration of a domain name containing that exact term “demonstrated a thorough knowledge of the TD brand and business.” While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent’s failure to make an active use of the disputed domain indicates that Respondent has engaged in bad faith registration and use. Accordingly, the Panel holds that Respondent’s registration and use of the <tdwaterhouse.xxx> domain name evidences bad faith under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdwaterhouse.xxx> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 15, 2013
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