The Toronto-Dominion Bank v Balticsea LLC
Claim Number: FA1408001576651
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Balticsea LLC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbanklogin.com> and <tdbanjk.com>, registered with Tucows, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2014; the National Arbitration Forum received payment on August 25, 2014.
On August 25, 2014, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <tdbanklogin.com> and <tdbanjk.com> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 September 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@tdbanklogin.com, postmaster@tdbanjk.com. Also on September 3, 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 September 26, 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
1. Complainant uses the TD BANK mark in connection with its Canada-based banking and financial services company.
2. The TD BANK mark is registered with both the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,788,055, registered May 11, 2010) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA 549,396, registered August 7, 2001).
3. Complainant uses TD BANK in connection with its banking and financial services. The <tdbanklogin.com> and <tdbanjk.com> domain names are confusingly similar to the TD BANK mark.
4. Respondent is not commonly known as the <tdbanklogin.com> and <tdbanjk.com> domain name. The <tdbanklogin.com> and <tdbanjk.com> have been put to no bona fide use.
5. Respondent registered and is using the <tdbanklogin.com> and <tdbanjk.com> domain names in bad faith.
6. The <tdbanklogin.com> and <tdbanjk.com> domain names were registered in October 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TD BANK mark. Respondent’s domain names are confusingly similar to Complainant’s TD BANK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tdbanklogin.com> and <tdbanjk.com domain names, and that Respondent registered and uses the domain names 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 uses the TD BANK mark in connection with its Canada-based banking and financial services company. The TD BANK mark is registered with both the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,788,055, registered May 11, 2010) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA 549,396, registered August 7, 2001). Thus, Complainant has Policy ¶ 4(a)(i) rights in the TD BANK mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims that the <tdbanklogin.com> and <tdbanjk.com> domain names are confusingly similar to the TD BANK mark. Both domain names include the generic top-level domain (“gTLD”) “.com” and remove the mark’s spacing, with the <tdbanjk.com> domain name introducing an extraneous “j,” and the <tdbanklogin.com> domain name adding “login.” The Panel agrees that these changes are simply not enough to avoid a finding of Policy ¶ 4(a)(i) confusing similarity. See Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD).
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 argues that Respondent is not commonly known by either of these <tdbanklogin.com> and <tdbanjk.com> domain names. The WHOIS information identifies “Balticsea LLC” as the registrant of record for the domain names. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel agreed that there was no basis for a finding under Policy ¶ 4(c)(ii) when the record was bare of evidence purporting to show that the respondent was known by a domain name. The Panel likewise concludes, based on the uncontradicted record, that Respondent has never been commonly known by the <tdbanklogin.com> and <tdbanjk.com> domain names under Policy ¶ 4(c)(ii).
Complainant also argues Respondent has made no bona fide offerings through the <tdbanklogin.com> and <tdbanjk.com> domain names as required under Policy ¶ 4(c)(i), or alternatively a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Both domain names resolve to websites that feature hyperlink advertising that offer services similar to services offered by Complainant. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that the Respondent’s domain names resolve to websites that offer services similar to those provided by Complainant (e.g., “Personal Banking” and “SBA Business Loans”). Using a domain name otherwise in violation of the Policy by offering services in competition to those provided by a complaining party holding rights in a mark is evidence of Policy ¶ 4(b)(iii) bad faith. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant asserts that Internet users who visit the <tdbanklogin.com> and <tdbanjk.com> domain names’ resolving websites will be confused as to Complainant’s association with the websites and profit from that confusion. Indeed, the resolving websites include references to the TD BANK mark. Accordingly, the Panel finds Policy ¶ 4(b)(iv) bad faith because Respondent uses its resolving websites to promote related advertising from which Respondent presumably receives fees. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Finally, Complainant claims the domain names are registered and being used in bad faith because Respondent had actual knowledge of the TD BANK mark when it registered the domain names. As evidenced by the specific incorporation of Complainant’s mark in one domain name and the virtually identical incorporation of the mark in the other domain name, the Panel concludes that Respondent actually knew of Complainant’s mark when it registered the domain names and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
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 <tdbanklogin.com> and <tdbanjk.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: October 3, 2014
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