DECISION

 

The Toronto-Dominion Bank v. DOMAIN CONTROLLER / YOYO EMAIL

Claim Number: FA1506001622018

 

PARTIES

Complainant is The Toronto-Dominion Bank (“Complainant”), Canada.  Respondent is DOMAIN CONTROLLER / YOYO EMAIL (“Respondent”), United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tdbank.email>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 1, 2015; the Forum received payment on June 1, 2015.

 

On June 1, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain name <tdbank.email> is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2015 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@tdbank.email.  Also on June 4, 2015, 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.

 

A timely Response was received and determined to be complete on June 24, 2015.

 

On June 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

a.    Complainant is a financial company created in 1955 which has used the trademark TD BANK since at least 1969.

b.    Complainant has registered the trademark TD BANK in the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA549396, registered on August 7, 2001) and in the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,788,055, registered May 11, 2010). 

c.    The trademark TD BANK is well-known as it has been recognized by Forbes Global, brandZ, Interbrand, among others.

d.    The disputed domain name <tdbank.email> is confusingly similar to the trademark TD BANK since the disputed domain name contains the trademark in its entirety.

e.    The “.email” generic top-level domain (“gTLD”) and the elimination of the space between words in the trademark are irrelevant to a Policy ¶ 4(a)(i) analysis.

f.      Respondent has no rights or legitimate interests in the disputed domain name. 

g.    Respondent is not sponsored by or affiliated with Complainant in any way.

h.    Respondent is not commonly known by the disputed domain name <tdbank.email>, nor has Complainant given Respondent authorization or permission to use its trademark in the registration of the disputed domain name. 

i.      Respondent is not making a bona fide offering of goods or services, or any legitimate noncommercial or fair use through the disputed domain name.

j.      Respondent seeks to incorporate the disputed domain name in a service to Internet users for recorded delivery of email and/or an email reply monitoring system, with each driven by a neutral communication platform. 

k.    The disputed domain name fails to resolve to an active website, demonstrating Respondent’s failure to make an active use.

l.      Respondent has registered and used the disputed domain names in bad faith. 

m.   Respondent has been involved in many prior UDRP decisions in which he has registered famous trademarks in domain names, evidencing serial cybersquatting behavior under Policy ¶ 4(b)(ii). 

n.    Respondent has admitted to have attempted to attract Internet users to profit off the likelihood of confusion associated with the source, sponsorship or affiliation with Complainant and its marks under Policy ¶ 4(b)(iv). 

o.    Respondent’s inactive holding of the disputed domain names evinces bad faith under Policy ¶ 4(a)(iii). 

p.    Respondent had actual and/or constructive knowledge of Complainant’s trademarks and the rights therein because of the fame associated with the trademarks.

 

B.   Respondent

a.    There has been use of the domain to date. The intended use is not a trademark use or public use.

b.    The purchase by a non-trademark holder of a domain name that includes a matching trademark is NOT prohibited under the UDRP.

c.    Respondent uses words that happen to be trademarks for their non-trademark value.

d.    It does not matter what short hand domain is chosen to represent the company. This type of operation is not bad faith.

e.    Respondent is the neutral party that sits between sender and receiver and works on behalf of the sender as proof the email has been sent, much like regular mail courier services.

f.      Respondent has rights and legitimate interests under Policy ¶ 4(c)(iii) because it has a legitimate noncommercial and fair business model evinced by its paradigm of providing free use of its domains and limiting the use of the domain name to route and capture email meta data with no intent to profit from Complainant. 

g.    The disputed domain name <tdbank.email> consists of generic terms.

h.    Complainant has failed to establish that Respondent has acted in bad faith. 

 

FINDINGS

1.    Complainant owns the trademark TD BANK in the United States of America and Canada, since before the disputed domain name was registered by Respondent.

 

2.    Respondent was aware of the Complainant’s rights in the trademark TD BANK, yet Respondent incorporated it in the disputed domain name.

 

3.    Respondent has never been commonly known by the disputed domain name or the trademark TD BANK.

 

4.    Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the trademark TD BANK, nor is Respondent an authorized vender, supplier or distributor of Complainant’s goods and services.

 

5.    Before any notice, Respondent neither used the disputed domain names nor demonstrated that preparations have been made in connection with a bona fide offering of goods or services regarding the disputed domain name.

 

6.    Respondent might use different domain names to the possible and intended use described in its Response, in fact, it has a beta version of its business model in the domain name which is registering as a trademark <yoyo.email>.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant contends to be the owner of the trademark TD BANK in the United States of America and Canada, which has been continuously used since 1969 to banking and financial services, among others.

 

a)    Existence of a trademark or service mark in which the Complainant has rights

 

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

In this case, Complainant proved its rights in the Trademark TD BANK. Exhibit

A to the Complaint includes, among others:

 

·        Canadian Registration No. TMA549396 registered on August 7, 2001, for: “(1) Banking, financial advisory, credit card, securities brokerage, real estate and data processing services. (2) Insurance services. (3) Banking; real estate services namely real estate development, real estate equity sharing, real estate investment, real estate management and real estate financing; securities brokerage and dealer services, trust services; credit and credit card services; lending services; investment and financial advisory services; investment and financial management services; mutual fund services; portfolio management services. (4) Insurance services namely insurance administration; insurance claim processing underwriting services”.

 

·        United States Trademark Registration No. 3,788,055 registered on May 11, 2010, for : “Banking services; real estate investment, real estate management and real estate financing; securities brokerage and dealer services; estate trust management services; credit card services, lending services, namely, consumer, commercial, mortgage, real estate and wholesale, investment advisory and financial advisory services; investment management and financial management services; insurance underwriting services in the fields of travel, life, health, accident, fire, vehicle, property and creditor; mutual fund investment and brokerage services”.

 

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the stated services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[2]

 

Thus, Complainant established its rights in the trademark TD BANK.[3]

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark TD BANK for purposes of Paragraph ¶ 4(a)(i) of the Policy.

 

b)   Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark

 

Complainant alleges that the disputed domain is identical to the trademark TD BANK.

 

On the first place, before establishing whether or not the disputed domain name <tdbank.email> is confusingly similar to the Complainant’s Trademark TD BANK, the Panel wants to point out that the addition of generic top-level domain (“gTLD”), i.e., “.com,” “.biz,” “.edu,” “.org”, even if it is new, such as “.email”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[4]. As has also been determined regarding the addition of country-code top-level domains (“ccTLD”), i.e., “.co,” “.de,” “.cr,” “.es,”. In fact, the insertion of a gTLD does not have a distinctive function[5].

 

UDRP Panels have unanimously accepted that the inclusion of a gTLD, in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:

 

“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”

 

Furthermore, the Panel considers that since a gTLD is required for a domain name to exist, it does not matter when analyzing the confusing similarity between the disputed domain name and a trademark. Especially since, all gTLDs are generic or descriptive terms.

 

In this case, the reproduction of the trademark TD BANK, by the disputed domain name <tdbank.email>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[6], mainly since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, anyone in contact with the disputed domain name will assume that the owner of the disputed domain name is the Complainant.

 

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph ¶ 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

 

a)  Prima Facie Case.

 

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring Complainant to prove the lack of rights or legitimate interests of Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of Respondent[7].

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[8].  If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name <tdbank.email> because of the following: i) Respondent is not sponsored by or affiliated with Complainant in any way; ii) Respondent has not been authorized by Complainant to use the Trademark TD BANK in any manner; iii) Respondent has never commissioned Respondent to manage Complainant’s email communications; iv) Respondent has not been commonly known by the disputed domain name; and iv) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services.

 

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

 

b)  Respondent’s Rights or Legitimate Interests in the Disputed Domain Name.

 

Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:

 

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

In this case, the Panel will proceed to analyze each item of list set forth in the Paragraph 4(c) of the Policy.

 

Regarding the first item on the list, which is whether the disputed domain name has been used or if there have been demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, Respondent stated that: “There has been no sue of the domain to date”. Furthermore, Respondent contends that: “Yoyo is primarily a consumer focused service working on behalf of the sender (Consumer) and NOT the receiver. Yoyo is the neutral party that sits between sender and receiver and works on behalf of the sender as proof the email has been sent, much like regular mail courier services.

 

(…)

 

First, the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services under the Policy. Specifically, the Respondent is providing certification of e-mail services, which will be free for both the sender and receiver of e-mails, this fact has been repeatedly stated and repeatedly ignored by previous Examiners. Further, by using the disputed domain names as a backend, non-public email server in order to route emails for the storing of Metadata, there is no public use of the domain name, no diversion of website traffic from the trademark holder and no intent to profit related to the use or trafficking of the subject domain name. The Complainant’s trademark rights are not harmed in any way, this is clear to see: http://yoyo.email/beta is still under development and should be launched in beta soon. Please note Yoyo test site is not fully functional and maybe subject to change. If presented with a splash entry screen please enter access password TEST 1 to view live test site”.

 

As per the Policy, three elements have to be analyzed: (i) the use or preparation to use; (ii) the use or preparation concerning the disputed domain name or a name corresponding to the domain name; and (iii) the connection with a bona fide offering of goods and services.

 

The Panels emphasizes that Respondent accepted that the disputed domain name has not been used. Moreover, Respondent explains an abstract business model comparing it to a courier service and offers an access to a beta version of what the business would be. Nonetheless, this preparation and business model does not refer to the disputed domain name or a name corresponding to a domain name. It refers to the domain name <yoyo.email>, which is how Respondent is commonly known. Actually, Respondent requested the registration of the trademark YOYO.EMAIL before the European Union as seen in Exhibit 2 of the Response.

 

Hence, even when understood as a bona fide offering of services, Respondent’s business model and preparation of use, do not refer to the disputed domain name or a name corresponding to the disputed domain name, it refers to a third domain name.

 

As a consequence, Respondent’s behavior does not fall within the requirements of Paragraph 4(c)(i).

 

Regarding the second item on the list, which is that Respondent has been commonly known by the domain name, even if you have acquired no trademark or service mark rights, Respondent affirmed that: “The Respondent has also applied on the 1 August 2014 for a Community Trade Mark for YOYO.EMAIL with the European Union in International Classes 35, 38 (Telecommunication services), 42 (Computer services) and 45 (Domain name registration services). (Exhibit 2) This further helps demonstrate the Respondent has every intention to operate a legitimate business that has a legitimate interest in the disputed domain name”.

 

From what Respondent has stated, the Panel concludes that Respondent is commonly known by YOYO.EMAIL and not in any way by the disputed domain name.

 

Consequently, Respondent proved it is commonly known by a different name that the one contained in the disputed domain name[9]. Hence, the Paragraph 4(c)(ii), does not apply to Respondent as to prove legitimate interest.

 

Finally, the third and last item on the list refers to the legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In this case, it has been established and accepted by Respondent, that the disputed domain name has not been used. Hence, it is not possible to assert noncommercial or fair use of the domain name.

 

Failing to actively use the disputed domain names does not qualify as 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)[10].

 

Thus, the Paragraph 4(c)(iii), does not apply to Respondent as to prove legitimate interest.

 

Notwithstanding, as the list is merely enunciative, the Panel has studied all Respondent’s arguments and evidence and did not find a circumstance that could be considered as legitimate interest for Respondent to register the trademark TD BANK as a domain name.

 

Therefore, the second requirement of paragraph 4(b) of the Policy is met.

 

Registration and Use in Bad Faith

 

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(1)   Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(2)   Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(3)   Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

 

Regarding legitimate interest, Respondent stated that “There has been no sue of the domain to date. The intended use is not a trademark use, or public use”.

 

The Panels clarifies that to have registered and used a domain name in bad faith; it is not required for the intended or current use to be a trademark or public use, as it is not a requisite set forth by the Policy.

 

As stated by the panel in State Farm Mut. Auto. Ins. Co. v.  Sotelo d/b/a Toltec[11], the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action.

 

The mere failure to make an active use of the disputed domain name <tdbank.email> is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)[12].

 

The Panel agrees with Respondent when stated that: “The UDRP does NOT say that every registration of a domain name that knowingly includes a matching trademark is a violation of the UDRP”. Nonetheless, all the circumstances in each case have to be duly evaluated in order to determine whether or not such previous knowledge, registration and use are done in bad faith. When examining well-known trademarks the analysis has to be meticulous and strict, since these kind of trademarks have had an especially demanding effort to achieve their status and recognition.

 

In fact, this Panel deems that the mere fact of knowingly incorporating a third-party’s well-known trademark in a domain name constitutes registration in bad faith[13]. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”. As Complainant duly proved, TD BANK is a well-known trademark for banking and financial services (Exhibits B, C and D to the Complaint). Hence, the registration of the disputed domain name by a third party different than the trademark owner could be understood as registration in bad faith.

 

Complainant contends that Respondent’s registration of over 4000 domain names, most of them containing well-known trademarks are evidence of bad faith under Policy ¶ 4(b)(ii). 

 

The passive holding of the disputed domain name <tdbank.email> in sum with Respondent’s registration of multiple domain names incorporating well-known trademarks establish a pattern of bad faith registration[14].

 

Furthermore, Respondent excuses its behavior in the Sunrise Period by declaring: “The process after the Sunrise Period given exclusively to owners of matching trademarks by ICANN is that all domain names go on sale to the public. The UDRP Policy DOES NOT prevent a Registrant who does not fall under either illustration from purchasing a domain name after domain names go on general sale, if this was NOT ICANN’s desire then the Policy would have said so. IT DOES NOT. It’s fair to say ICANN and trademark law envision ways in which domain names which may include trademarks can be used legitimately when guided by Policy rules, by all. If this was NOT ICANN’s intention then the disputed domain name should never have gone on general sale without a warning notice written in plain language that domain names featuring trademarks can NOT be purchased by anyone other than a trademark holder and/or by someone that can be commonly known by the domain name. There is no such notice before purchase or any such language used in the UDRP Policy or written into the terms and conditions of GoDaddy.com, who was the Registrar that sold the domain name to the Respondent.

 

It is also worth noting, that the Complainant as holders of a matching trademark had an exclusive opportunity given to them by ICANN lasting three whole months to secure the domain names at issue during ICANN’s Sunrise Period and DID NOT DO SO”.

 

The excuse is not acceptable by the Panel. The fact that a domain name is available to the public, does not permit trademark infringements or Policy violations. Paragraph 2 of the Policy clearly states:

 

“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights”.

 

Hence, being available to the public does not mean that a violation of the Policy is permitted. The Panels agrees that certain domain names can in fact include trademarks; nonetheless, that is something that has to be evaluated with all the elements of the Policy to protect the rights of those who have worked to create a trademark. That is not something that applies blindly to all domain names including trademarks.

 

Moreover, ICANN cannot force a trademark owner to exercise its right during the Sunrise Period. Not exercising its rights during such time does not mean that the Policy will no longer protect the trademark owner, specially, since there are over 683 new gTLDs with their corresponding Sunrise Periods. Pretending such kind of display is excessive and would represent a disproportionate burden on trademark owners.

 

Respondent states: “it doesn't matter what short hand domain is chosen to represent the company. This type of operation is not bad faith”. If it does not matter what short hand domain is chosen to represent the company, the Panel has to ask, why Respondent chose well-known trademarks. The business operation by itself is not in bad faith, the bad faith lies with have chosen a well-known trademark for such task.

 

Respondent also uttered: “Yoyo is primarily a consumer focused service working on behalf of the sender (Consumer) and NOT the receiver. Yoyo is the neutral party that sits between sender and receiver and works on behalf of the sender as proof the email has been sent, much like regular mail courier services”. The Panel reasoning is that if Yoyo provides a service like a regular mail courier, why Yoyo should use a domain name that relates to the receiver and not to Yoyo itself, as do regular mail courier. The comparison fails to prove Respondent’s point and instead it leads the Panel to believe that there is no need to use the disputed domain name to provide the proposed service and the domain name <yoyo.email> would be enough. Thus, the registration and use of the disputed domain name seems to be done in order to prevent the owner of the trademark from reflecting the trademark in the disputed domain name.

 

Consequently, the disputed domain name incorporating Complainant’s trademark evidences a bad faith registration and use pursuant to Policy ¶¶ 4(b)(ii) and (iii).

 

Therefore, the three elements of the Policy ¶ 4(a)(iii) are satisfied in the present case in respect to Respondent of the disputed domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the disputed domain name <tdbank.email> be TRANSFERRED from Respondent to Complainant.

 

 

Fernando Triana, Esq, Panelist

Dated:  July 14, 2015

 

COLO 1308 0960 69770/SÁG

4290210437173