The Toronto-Dominion Bank v. baal / N/A
Claim Number: FA1403001550326
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is baal / N/A (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadatrustl.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2014; the National Arbitration Forum received payment on March 31, 2014.
On March 25, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <tdcanadatrustl.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2014 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@tdcanadatrustl.com. Also on March 31, 2014, 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 April 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
i. Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada by market capitalization and deposits and the sixth largest bank in North America.
ii. Complainant owns trademark registrations with Canada’s Intellectual Property Office (“CIPO”) for the TD mark (e.g., Reg. No. 1,649,009, registered June 25, 1991) and for the CANADA TRUST mark (e.g., Reg. No. TMA409300, registered March 12, 1993).
iii. Respondent’s <tdcanadatrustl.com> domain name is made up of a collection of Complainant’s marks with the addition of the single letter “l” at the end.
iv. Respondent has not been commonly known by the disputed domain name.
v. Respondent is using the <tdcanadatrustl.com> domain name to direct Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
vi. The domain name should be considered as having been registered and being used in bad faith.
vii. Respondent is a cybersquatter and has previously registered domain names containing names of famous persons or trademarks in order to capitalize on the goodwill developed by others.
viii. Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for Complainant’s services.
ix. Respondent knew, or at least should have known, of the existence of Complainant’s trademarks.
x. Respondent registered the <tdcanadatrustl.com> domain name on June 19, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TD and CANADA TRUST marks. Respondent’s domain name is confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tdcanadatrustl.com domain name, and that Respondent registered and uses the 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 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.”).
Complainant argues that it is the second largest bank in Canada by market capitalization and deposits and the sixth largest bank in North America. Complainant owns trademark registrations with CIPO for the TD mark (e.g., Reg. No. 1,649,009, registered June 25, 1991) and for the CANADA TRUST mark (e.g., Reg. No. TMA409300, registered March 12, 1993). The Panel may find that although Respondent appears to reside in China, it is irrelevant under Policy ¶ 4(a)(i) whether Complainant registers its mark in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel concludes that Complainant’s CIPO registration of the TD and CANADA TRUST marks sufficiently proves its rights in the marks under Policy ¶ 4(a)(i). See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <tdcanadatrustl.com> domain name is made up of a collection of Complainant’s marks with the addition of the single letter “l” at the end. Respondent’s combination of Complainant’s marks does not distinguish the domain name from the marks pursuant to Policy ¶ 4(a)(i). See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark). Moreover, Respondent’s inclusion of an additional letter does little to differentiate the domain name from the marks under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)).
Finally, Respondent adds the generic top-level domain (“gTLD”) “.com” to its domain name. Respondent’s addition of a gTLD to a mark is inconsequential to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Consequently, the Panel finds that Respondent’s <tdcanadatrustl.com> domain name is confusingly similar to Complainant’s TD and CANADA TRUST marks under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has not been commonly known by the <tdcanadatrustl.com> domain name. Complainant asserts that Respondent and its disputed domain name are not sponsored by or affiliated with Complainant in any way. Complainant argues that it has not granted Respondent permission or authorization to use Complainant’s marks in any manner, including in domain names. The WHOIS information identifies “baal / N/A” as the registrant of the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Consequently, the Panel finds that Respondent is not commonly known under the <tdcanadatrustl.com> domain name according to Policy ¶ 4(c)(ii).
Complainant claims that Respondent is using the <tdcanadatrustl.com> domain name to direct Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s domain name provides competing advertisements titled “Online Banking,” “Credit Card Deals,” “Bank Account,” and others. Complainant contends that Respondent receives pay-per-click fees from its display of the linked websites on its disputed domain name. Accordingly, the Panel holds that Respondent has not used the <tdcanadatrustl.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is a cybersquatter and has previously registered domain names containing names of famous persons or trademarks in order to capitalize on the goodwill developed by others. E.g., Wells Fargo & Company v. baal, FA 1507685 (Nat. Arb. Forum Aug. 9, 2013). In Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007), the panel held that prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations. Thus, the Panel determines that Respondent’s past UDRP proceedings resulting in findings of bad faith and transfer show bad faith registration of the <tdcanadatrustl.com> domain name pursuant to Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s <tdcanadatrustl.com> domain name disrupts Complainant’s business. Respondent is using the disputed domain name to provide links that directly compete with Complainant’s services. Because the Panel finds that Respondent’s use of the disputed domain name to provide competing links disrupts Complainant’s business, the Panel determines that Respondent has registered and is using the <tdcanadatrustl.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims that Respondent is using the <tdcanadatrustl.com> domain name to confuse unsuspecting Internet users looking for Complainant’s services. Respondent is using the disputed domain name to host a competing hyperlink directory featuring links called “Online Bank,” “Money Market Account,” “Loans,” and more. Complainant asserts that Respondent’s disputed domain name would cause confusion with consumers as they would believe that Respondent is associated with Complainant. The Panel infers that Respondent is likely using the disputed domain name to commercially profit through click-through fees. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel held that “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” Thus, the Panel holds that Respondent is using the <tdcanadatrustl.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent knew, or at least should have known, of the existence of Complainant’s trademarks. Complainant argues that its TD brand is known internationally. Complainant asserts that it has marketed and sold services under the TD marks since 1969. Complainant further alleges that by registering the disputed domain name, which contains the exact TD and CANADA TRUST marks, Respondent has demonstrated a thorough knowledge of Complainant’s rights in the TD marks. Thus, the Panel holds that Respondent had actual knowledge of the TD and CANADA TRUST marks and Complainant’s rights in the marks, showing bad faith under Policy ¶ 4(a)(iii). See 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).
The Panel finds 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 <tdcanadatrustl.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 5, 2014
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