The Toronto-Dominion Bank v. Gerard Brady / Melcrest Ltd
Claim Number: FA1409001579154
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Gerard Brady / Melcrest Ltd (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadabank.com>, registered with Moniker Online Services 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2014; the National Arbitration Forum received payment on September 11, 2014.
On September 10, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <tdcanadabank.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 September 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@tdcanadabank.com. Also on September 12, 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 October 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
a. Complainant uses the TD BANK mark to promote its business. This trademark is registered with 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., TMA 549,396, registered August 7, 2001). The <tdcanadabank.com> domain name takes the mark and interjects the word “Canada,” which is the country where the TD BANK brand was born and grew to popularity.
b. Respondent does not have rights or legitimate interests in the domain name. The name listed in the WHOIS information bears no similarity to the words enumerated in the disputed domain name. Further, the <tdcanadabank.com> domain name sends Internet users to a third-party website promoting a plethora of advertisements that may catch the whim of a curious Internet user.
c. Respondent has registered and is using the domain name in bad faith here. Respondent also disrupted Complainant’s operations by using the domain name for competing offers. Respondent has been found liable of bad faith in the past, evincing a pattern of bad faith. Respondent is profiting on the likelihood Internet users will be shrouded with confusion as to the identity of the domain name’s true holder. Respondent had to have known of Complainant’s interest in the TD BANK mark when registering and using this domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The Toronto-Dominion Bank, of Ontario, Canada. Complainant owns hundreds of domestic and international trademark registrations that include an abbreviation of its name in the form of TD, including the mark TD BANK. Complainant has continuously used the TD BANK mark since at least 2001 in association with financial, banking and related goods and services.
Respondent is Gerard Brady / Melcrest Ltd, of the Republic of Ireland. Respondent’s registrar’s address is listed as Ft. Lauderdale, FL, USA.
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 to promote its banking business. This trademark is registered with 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., TMA 549,396, registered August 7, 2001). The Panel notes that evidence of registration in both countries, regardless of the registration date of the disputed domain name, is prima facie evidence of Policy ¶ 4(a)(i) rights in the mark. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant claims the <tdcanadabank.com> domain name takes the mark and interjects the word “Canada,” which is the country where the TD BANK brand was born and grew to popularity. The Panel finds that merely adding the top level domain “.com” and the geographically descriptive word “Canada” to the TD BANK mark is insufficient to avoid Policy ¶ 4(a)(i) confusing similarity. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant claims that Respondent does not have rights or legitimate interests in the domain name. Complainant notes that the name listed in the WHOIS information bears no similarity to the words enumerated in the disputed domain name. The Panel notes that “Gerard Brady” is the listed registrant in the WHOIS information, and there is no evidence to support a finding that Respondent has been commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel here finds that Respondent is not commonly known by the disputed domain name.
Further, Complainant believes that the <tdcanadabank.com> domain name sends Internet users to a third-party website dedicated to promoting a plethora of advertisements that may catch the whim of a curious Internet user. The Panel notes that the disputed domain name resolves to a website featuring numerous hyperlinks. In Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001), the panel did not find competing hyperlinks to constitute a Policy ¶ 4(c)(i) bona fide offering or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Here the Panel finds that no Policy ¶¶ 4(c)(i), (iii) legitimate use has been made of the domain name. The Panel here finds that Respondent failed to show any bona fide offering or legitimate noncommercial use or fair use in the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interests in the disputed domain.
The Complainant has proven this element.
Complainant also argues that Respondent has been found liable of bad faith in the past, evincing a pattern of bad faith. Prior panels have found evidence of bad faith where the respondent has a noted history of bad faith. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Here, Complainant cites to several cases implicating Respondent. See Orbitz Worldwide, LLC v. Gerard Brady, FA 1514247 (Nat. Arb. Forum Nov. 1, 2013); Mohegan Tribal Gaming Authority d/b/a Mohegan Sun v. Gerard Brady, FA 1316793 (Nat. Arb. Forum May 12, 2010). The Panel finds that those prior decisions support a finding of Policy ¶ 4(b)(ii) bad faith in the immediate case.
Complainant claims that Respondent also disrupted Complainant’s operations by using the domain name for competing offers. The Panel again notes that related advertisements are offered through the disputed domain name’s website.
The Panel finds that Respondent is using the domain name to disrupt Complainant’s business through advertising, and as such has acted in bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further argues that Respondent is profiting on the likelihood Internet users will be shrouded with confusion as to the identity of the domain name’s true holder. The Panel again notes that the disputed domain name is being used to promote related advertisements. The Panel finds that such use is unacceptable under Policy ¶ 4(b)(iv) because there is too strong a likelihood Internet users will be confused as to Complainant’s approval of these advertisements. 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).”).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanadabank.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 21, 2014
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