The Toronto-Dominion Bank v. Carlo Mormina
Claim Number: FA1606001677457
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Carlo Mormina (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbankbitcoin.com> and <tdbitcoin.com>, registered with Gandi SAS.
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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2016; the Forum received payment on June 1, 2016.
On June 2, 2016, Gandi SAS confirmed by e-mail to the Forum that the <tdbankbitcoin.com> and <tdbitcoin.com> domain names are registered with Gandi SAS and that Respondent is the current registrant of the names. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2016 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@tdbankbitcoin.com, postmaster@tdbitcoin.com. Also on June 2, 2016, 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 22, 2016.
On June 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jaime Delgado 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant has registered both the TD (e.g., Reg. No. TMA396087, Reg. Date Mar. 20, 1992) and the TD BANK (Reg. No. TMA549396, Reg. Date Aug. 7, 2001) marks with the Canadian Intellectual Property Office (“CIPO”), which demonstrates Complainant’s rights in the marks. In creating the confusingly similar <tdbankbitcoin.com> and <tdbitcoin.com> domain names, Respondent has incorporated Complainant’s marks entirely, merely adding the descriptive term “bitcoin” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <tdbankbitcoin.com> and <tdbitcoin.com> domain names. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to make use of the TD or TD BANK marks in any manner. Respondent has failed to make any active use of the disputed domains; the webpages that resolve from the disputed domains display the message “Forbidden You don’t have permission to access / on this server.” See Attached Exhibit F for screenshots of Respondent’s resolving webpages.
The domains were registered and are being used in bad faith. First, because Respondent could not use the domains in any way that would not infringe upon Complainant’s marks, Respondent has engaged in bad faith registration and use. Second, as aforementioned, Respondent has failed to make any active use of the domains. Third, because of Complainant’s well-known trademarks, it is clear that Respondent registered the domains with constructive and/or actual knowledge of the TD and TD BANKS marks and Complainant’s rights therein. Finally, Respondent failed to respond to Complainant’s cease and desist letters, which demonstrates bad faith.
B. Respondent
Respondent’s <tdbankbitcoin.com> and <tdbitcoin.com> domain names are not confusingly similar to Complainant’s TD and TD BANK marks. The “td” in the disputed domain names stands for “True Dollar” and, as such, is not the same as Complainant’s marks. The addition of the word “bitcoin” further differentiates the disputed domains from Complainant’s registered marks.
Respondent has rights and legitimate interests in the disputed domain names. Respondent intends to use the <tdbankbitcoin.com> and <tdbitcoin.com> domain names to host an informative forum discussing the Bitcoin currency.
Respondent has not registered and is not using the <tdbankbitcoin.com> and <tdbitcoin.com> domains in bad faith. Respondent’s domains are currently parked.
Complainant has registered, among others, both the TD (e.g., Reg. No. TMA396087, Reg. Date Mar. 20, 1992) and TD BANK (Reg. No. TMA549396, Reg. Date Aug. 7, 2001) marks with the Canadian Intellectual Property Office (“CIPO”). Respondent registered the <tdbankbitcoin.com> and <tdbitcoin.com> domain names on February 24, 2014.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and is being used in bad faith.
Identical and/or Confusingly Similar: Policy ¶ 4(a)(i)
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant has registered both the TD (e.g., Reg. No. TMA396087, Reg. Date Mar. 20, 1992) and TD BANK (Reg. No. TMA549396, Reg. Date Aug. 7, 2001) marks with the CIPO, which demonstrates its rights in the marks. See Compl., at Ex. A. Panels have held that a trademark registration with the CIPO is sufficient to confer upon a complainant rights in a mark under Policy ¶ 4(a)(i). See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”). As such, the Panel finds that Complainant has demonstrated rights in the TD and TD BANK marks under Policy ¶ 4(a)(i).
Complainant asserts that Respondent, in creating the confusingly similar <tdbankbitcoin.com> and <tdbitcoin.com> domain names, has incorporated Complainant’s marks entirely, merely adding the descriptive term “bitcoin” and the gTLD “.com.” Complainant explains that “Bitcoin” is most accurately defined as the first decentralized digital currency and, therefore, is directly related to Complainant’s banking business. Panels have found that neither the addition of a term descriptive of Complainant’s business nor the addition of a gTLD serve to distinguish a domain name from a mark in which a complainant has established rights. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel agrees with Complainant’s arguments and finds that the domains are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii)
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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, FA741828 (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 (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 lacks rights in the <tdbankbitcoin.com> and <tdbitcoin.com> domain names. Further, Complainant has not granted authorization or license to Respondent that would allow use of the TD or TD BANK marks. Complainant asks the Panel to hold that Respondent is not commonly known by the disputed domain names as demonstrated by the WHOIS information. The Panel notes that the WHOIS identifies “Carlo Mormina” as registrant of record. In light of the available record, the Panel agrees that Respondent is not commonly known by the <tdbankbitcoin.com> and <tdbitcoin.com> domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). The Panel agrees with Complainant and finds Respondent not commonly known by the disputed domain names under Policy ¶ 4(a)(ii).
Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain names. Complainant urges that Respondent currently does not have an active use for the disputed domain names. See Complainant’s Ex. F. Previous panels have declined to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use, where there is no active use of a disputed domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s lack of use of the disputed domain names does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii)
Complainant argues that because Respondent will be unable to use the domains in any way that would not infringe upon Complainant’s marks and rights, or cause confusion, Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). Panels have determined that a respondent demonstrates bad faith registration and use where its eventual use of a domain would inevitably create confusion with a complainant’s mark and rights therein. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). For this reason, the Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(b)(iv).
Complainant maintains that Respondent has not made any active use of the disputed domain names and has made no demonstrable preparations to use the domains. See Compl., at Attached Ex. F. Previous panels have found evidence of bad faith where the respondent does not make any active use of a disputed domain name. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). As such, the Panel finds that Respondent has not made an active use of the disputed domain names, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant asserts that, due to its numerous trademark registrations and the success of its banking brand, Respondent must have had constructive, if not actual, knowledge of Complainant's rights in the TD and TD BANK marks when Respondent registered the disputed domain names. Complainant has provided the Panel with Exhibit I, which shows search engine results for “td bank bitcoin,” which include Complainant. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not sufficient evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, concluding that Respondent registered the <tdbankbitcoin.com> and <tdbitcoin.com> domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Finally, Complainant argues that Respondent failed to respond to Complainant’s cease and desist letters, which, according to Complainant, demonstrates bad faith. The Panel is directed to Complainant’s Attached Exhibit H for copies of the cease and desist letters sent by Complainant to Respondent. Panels have found evidence of bad faith under Policy ¶ 4(a)(iii) where a respondent fails to respond to a complainant’s demand letters. See Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, D2010-1589 (WIPO Nov. 3, 2010) (“The Panel also considers the failure of the Respondent to respond to the Complainant’s letters of demand and failure to file a Response to the Complaint further support an inference of bad faith.”). As such, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
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 <tdbankbitcoin.com> and <tdbitcoin.com> domain names be TRANSFERRED from Respondent to Complainant
Jaime Delgado, Esq. Panelist
Dated: July 5, 2016
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