The Toronto-Dominion Bank v. ANDRZEJ WEGRZYN
Claim Number: FA1407001569689
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is ANDRZEJ WEGRZYN (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadatrusteasyweb.com>, registered with Domainnamelookup, 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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2014; the National Arbitration Forum received payment on July 15, 2014.
On July 15, 2014, Domainnamelookup, LLC confirmed by e-mail to the National Arbitration Forum that the <tdcanadatrusteasyweb.com> domain name is registered with Domainnamelookup, LLC and that Respondent is the current registrant of the name. Domainnamelookup, LLC has verified that Respondent is bound by the Domainnamelookup, 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 July 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@tdcanadatrusteasyweb.com. Also on July 17, 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 August 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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
Complainant has rights in the TD and CANADA TRUST marks through trademark registrations. Further, the <tdcanadatrusteasyweb.com> domain name is confusingly similar to both the TD and CANADA TRUST marks.
Respondent has no rights or legitimate interests in the domain name. First, Respondent is not commonly known by the domain name. Second, Respondent’s use of the domain name is not bona fide in any way. Finally, the Respondent’s commercial hyperlinks forgo a finding of a legitimate noncommercial or fair use.
Respondent has registered and used the domain name in bad faith. First, Respondent’s use of competing hyperlinks indicates an intent to disrupt Complainant’s business. Second, Respondent’s use of a confusingly similar domain name to promote advertisements evinces an intent to profit through a likelihood of confusion. Finally, Respondent had actual knowledge of Complainant’s rights when registering and using the domain name.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes the <tdcanadatrusteasyweb.com> domain name was registered on February 11, 2008.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 has rights in the TD and CANADA TRUST marks through trademark registrations. The Panel notes both marks are registered with the United States Patent and Trademark Office ("USPTO") and the Canadian Intellectual Property Office (“CIPO”): TD— USPTO Reg. No. 1,649,009 registered June 25, 1991; CANADA TRUST—CIPO Reg. No. 447,666, registered Sept. 15, 1995. The Panel here agrees evidence of registration with CIPO and the USPTO is sufficient evidence of Policy ¶ 4(a)(i) rights. See State Farm Mutual Auto. Ins. Co. v. Leighton Alan Holdings, FA 0616915 (Nat. Arb. Forum February 16, 2006) (finding that Complainant has rights in the STATE FARM mark established through its registrations with the USPTO and CIPO).
Complainant claims that the <tdcanadatrusteasyweb.com> domain name is confusingly similar to both the TD and CANADA TRUST marks. The Panel notes Respondent combined the TD and CANADA TRUST marks and added both the generic top-level domain ("gTLD") “.com,” and the phrase “easyweb.” The Panel finds the domain name to be confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i) because the presence of two marks and generic words amplifies the confusion inherent in the domain name. See Capital One Fin. Corp. v. Above.com Domain Privacy, FA 1463496 (Nat. Arb. Forum October 23, 2012) (finding that “Respondent merely adds the descriptive term “card,” the generic term “now,” and the top level domain name, “.com” to Complainant’s mark and deletes the space between words in the mark. The resulting inconsistencies between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of 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.”).
Complainant claims Respondent has never been commonly known by the domain name. The Panel notes the WHOIS information lists “ANDRZEJ WEGRZYN” as the registrant of record for this domain name. The Panel concludes this Respondent is not commonly known as <tdcanadatrusteasyweb.com> under Policy ¶ 4(c)(ii). See, e.g., United Way of America v. Alex Zingaus, FA 1036202 (Nat. Arb. Forum Aug. 30, 2007).
Complainant further argues that Respondent is using the <tdcanadatrusteasyweb.com> domain name to shuttle Internet users to websites promoting generic advertisements. The Panel notes the domain name resolves to a website promoting various banking, finance, and credit services. See Compl., at Attached Ex. F. In 24 Hour Fitness USA, Inc. v. 24HourNames.com- Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sept. 26, 2003) , the panel found that a list of hyperlink advertisements was not enough to give rise to a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel here similarly concludes Respondent lacks any right under Policy ¶¶ 4(c)(i) and (iii).
Complainant claims Respondent’s use of competing hyperlinks indicates an intent to disrupt Complainant’s business. The Panel notes that the domain name, as illustrated in Exhibit 7, is being used to house advertisements relevant to the TD and CANADA TRUST marks. Here the Panel agrees that targeting advertisements to the same types of services offered by Complainant is evidence of an intent to disrupt Complainant’s business in bad faith as per Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 0094864 (NAF July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Complainant also claims Respondent’s use of a confusingly similar domain name to promote advertisements evinces an intent to profit through a likelihood of confusion. The Panel agrees that Respondent is profiting through the related and competing ads as shown in Exhibit 7, and thus the Panel agrees there is Policy ¶ 4(b)(iv) likelihood for confusion in this case. See PRL USA Holdings, Inc. v. LucasCobb, D2006-0162 (WIPO Mar. 30, 2006) (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith”).
Finally, Complainant suggests Respondent had actual knowledge of Complainant’s rights when registering and using the domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanadatrusteasyweb.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 22, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page