The Toronto-Dominion Bank v. Johanna Hendrika Elfring
Claim Number: FA1312001536888
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Johanna Hendrika Elfring (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbank.us>, registered with united-domains AG.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2013; the National Arbitration Forum received a hard copy of the Complaint on January 7, 2014.
On January 3, 2014, united-domains AG confirmed by e-mail to the National Arbitration Forum that the <tdbank.us> domain name is registered with united-domains AG and that Respondent is the current registrant of the name. united-domains AG has verified that Respondent is bound by the united-domains AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 7, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 27, 2014 by which Respondent could file a Response to the Complainant, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.
Complainant
a) Complainant is the second largest bank in Canada, as measured by market capitalization and deposits, and the sixth largest bank in North America. Complainant has been in business since at least 1955, and Complainant has 79,000 employees and 19 million clients worldwide. Complainant operates multiple websites, including <tdbank.com> and <td.com>.
b) Complainant has rights in the TD BANK mark, used in connection with banking and financial services. Complainant owns registrations for the TD BANK mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA 549,396 registered August 7, 2001) and the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,788,055 registered May 11, 2010).
c) Respondent’s <tdbank.us> domain name is identical to Complainant’s TD BANK mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic top-level domain (“gTLD”) “.us.”
d) Respondent does not have any rights or legitimate interests in the <tdbank.us> domain name.
a. Respondent is not commonly known by the disputed domain name, Complainant has not authorized Respondent to use its TD BANK mark in any way.
b. Respondent has failed to make an active use of the <tdbank.us> domain name. See Complainant’s Exhibit F.
e) Respondent registered or is using the <tdbank.us> domain name in bad faith.
a. Respondent has failed to make an active use of the disputed domain name. See Complainant’s Exhibit F.
b. Respondent had knowledge of Complainant’s TD BANK mark prior to registering the <tdbank.us> domain name because Complainant’s mark it internationally known.
Respondent
a) Respondent did not submit a response in this proceeding.
b) The Panel notes that Respondent registered the <tdbank.us> domain name on July 29, 2005.
1. Respondent’s <tdbank.us> domain name is confusingly similar to Complainant’s TD BANK mark.
2. Respondent does not have any rights or legitimate interests in the <tdbank.us> domain name.
3. Respondent registered or used the <tdbank.us> domain name 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 or 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.”).
Complainant contends it has rights in the TD BANK mark, used in connection with banking and financial services. Complainant states it owns registrations for the TD BANK mark with the CIPO (e.g., Reg. No. TMA549396 registered August 7, 2001). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the UDRP does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the TD BANK mark pursuant to Policy ¶ 4(a)(i) because Complainant owns valid trademark registrations with the CIPO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)).
Respondent’s <tdbank.us> domain name is identical to Complainant’s TD BANK mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the gTLD “.us.” The Panel finds that the addition of the “.us” gTLD to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). The Panel also agrees that the deletion of the mark’s spacing does not sufficiently distinguish this domain name from the underlying TD BANK mark. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <tdbank.us> domain name is identical to Complainant’s TD BANK mark pursuant to Policy ¶ 4(a)(i).
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.”).
The Panel notes that there is no evidence in the record to conclude that Respondent owns any service marks or trademark that reflect the <tdbank.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also PepsiCo, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to UDRP ¶ 4(c)(i).
Complainant claims Respondent does not have any rights or legitimate interests in the <tdbank.us> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, Complainant has not authorized Respondent to use its TD BANK mark in any way. The Panel notes that the WHOIS record lists “Johanna Hendrika Elfring” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the TD BANK mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <tdbank.us> domain name under Policy ¶ 4(c)(iii).
Complainant asserts that Respondent has failed to make an active use of the <tdbank.us> domain name. See Complainant’s Exhibit F. The Panel notes that the disputed domain name resolves to a website featuring German language with what appear to be three links at the bottom of the page, also in German. Id. The Panel agrees and looks to the fact that past panels have found that such use generally does not constitute inactivity of the domain name, so long as some content appears on the page other than phrases such as “under construction.” See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)). Therefore, the Panel only finds that Respondent has failed to make an active use and determines there is no plausible explanation for Respondent’s use of the disputed domain name. See IG Index PLC v. Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that the respondent has rights in the domain name because the respondent’s claimed use of the domain name is a “plausible explanation” to which the panel must give weight). However, the Panel notes that the Respondent’s use of the disputed domain name appears to be unrelated to Complainant or its business, and past panels have held that such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i), nor does it represent a noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a noncommercial or fair use under Policy ¶ 4(c)(iv) because the content on the resolving website is not related to Complainant or its business.
Complainant asserts that Respondent has failed to make an active use of <tdbank.us> domain name. See Complainant’s Exhibit F. The Panel notes that the disputed domain name resolves to a website featuring German language with what appear to be three links at the bottom of the page, also in German. Id. In Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) the panel determined that where the respondent has not attempted to sell domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith. Additionally, in Collegetown Relocation, L.L.C. v. Concept Software & Techs. Inc., FA 96555 (Nat. Arb. Forum Mar. 14, 2001), the panel did not find bad faith because it was conceivable that the respondent could make a legitimate, non-competitive use even though the respondent had not yet done so). Therefore, the Panel only finds bad faith under Policy ¶ 4(a)(iii) and finds that there is no conceivable legitimate non-competitive use for the <tdbank.us> domain name. See, e.g., Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”).
Complainant claims Respondent registered and is using the <tdbank.us> domain name in bad faith. Complainant asserts that Respondent had knowledge of Complainant’s TD BANK mark prior to registering the <tdbank.us> domain name because Complainant’s mark it internationally known. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name and concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbank.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 4, 2014
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