The Toronto-Dominion Bank v. John Smith
Claim Number: FA1409001579229
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is John Smith (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdfinancialfunding.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 11, 2014; the National Arbitration Forum received payment September 11, 2014.
On September 11, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <tdfinancialfunding.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and 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@tdfinancialfunding.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 by 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 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
Complainant uses the TD mark to promote its financial services. The mark has been registered with various agencies, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,649,009 registered June 25, 1991). The <tdfinancialfunding.com> domain name merely adds in the descriptive terms “financial” and “funding” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by this domain name. Further, Respondent’s use of the <tdfinancialfunding.com> domain name was to pass itself off as Complainant. Further, Respondent sends fax and e-mail messages through the domain name that fraudulently offer services Respondent claims to be of the TD variety.
Respondent registered and is using the domain name in bad faith. Respondent is disrupting Complainant’s operations. Respondent is enhancing a likelihood that Internet users will be confused as to Complainant’s association with the fraudulent, and potentially criminal, phony offers. Respondent had to have known of Complainant’s use of the TD mark prior to registering this domain name.
Respondent made no points in response in this proceeding:
Respondent did not submit a response.
The Panel notes that Respondent registered the <tdfinancialfunding.com> domain name April 25, 2014.
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
The 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 is using 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 Complainant to 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 relative to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant uses the TD mark to promote its financial services. Complainant registered the mark with various agencies, including the USPTO (e.g., Reg. No. 1,649,009 registered June 25, 1991). The Panel finds the registration sufficient evidence of Complainant’s rights in the TD mark under a Policy ¶ 4(a)(i) analysis. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant urges that the <tdfinancialfunding.com> domain name merely adds the descriptive terms “financial” and “funding” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that the domain name’s addition of “financial funding” along with the gTLD does not distinguish the domain name from Complainant’s protected TD financial services mark. The disputed domain name under a Policy ¶ 4(a)(i) analysis is confusingly similar to Complainant’s mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 argues that Respondent is not commonly known by this domain name. The Panel notes that “John Smith” is the listed WHOIS registrant for the disputed domain name. The Panel agrees that as this name bears no resemblance to the <tdfinancialfunding.com> domain name, no basis exists for concluding that Respondent is known by the domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant notes that Respondent’s use of the <tdfinancialfunding.com> domain name was to pass itself off as Complainant. The Panel notes that the content of the domain name is deceptively similar to Complainant’s website. See Compl., at Attached Ex. J.. The Panel agrees as well that such use is not a bona fide offer or legitimate use under Policy ¶¶ 4(c)(i), (iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Further, Complainant notes that Respondent sends fax and e-mail messages through the domain name that offer services Respondent fraudulently claims to be of the TD variety. See Compl., at Attached Exs. K–L. The Panel agrees that Respondent’s misappropriation of the TD mark does not give rise to rights or legitimate interests under Policy ¶ 4(a)(ii). See, e.g., Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent is disrupting Complainant’s operations. The Panel notes that Respondent faxes and emails deceptively similar websites, claiming to be Complainant. See Compl., at Attached Ex. J–K. The Panel agrees that using Complainant’s own logos and marks to compete in this manner is clearly disruptive and competitive under a Policy ¶ 4(b)(iii) evaluation. See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Complainant further claims that Respondent seeks to confuse Internet users as to Complainant’s purported association with the fraudulent, and potentially criminal, phony offers. This Panel shares Complainant’s concerns here, and finds that the similar website and fax offers create a Policy ¶ 4(b)(iv) likelihood for confusion among Internet users seeking Complainant’s services. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv); Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Complainant argues that Respondent knew of Complainant’s use of the TD mark before registering the disputed domain name. While panels have concluded that constructive notice does not support a bad faith finding, the Panel finds that due to the use of Complainant's mark, Respondent shows actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used a domain name that is confusingly similar to Complainant’s protected mark and did so in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdfinancialfunding.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 14, 2014.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page