The Toronto-Dominion Bank v. TD Bank
Claim Number: FA1612001707004
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is TD Bank (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue is <tdonlinebankaccess.com> registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2016; the Forum received payment on December 12, 2016.
On December 13, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdonlinebankaccess.com> domain name 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 December 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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@tdonlinebankaccess.com. Also on December 19, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
The Toronto-Dominion Bank is the owner of hundreds of trademark registrations in Canada, the United States and elsewhere that consist of, or include, the elements TD (abbreviation of TORONTO- DOMINION) and TD BANK, as well as the trade names and unregistered trademarks TD and TD BANK in association with financial, banking and related businesses, goods, and services. These registrations are referred to hereafter as “Complainant’s Marks.” The trademarks relevant to this instant matter are TD BANK, and TD.
Complainant, The Toronto-Dominion Bank (publicly listed NYSE: TD, TSX: TD, TYO: 8640), is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Commonly known as TD and operating as TD Bank Group, the bank was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively.
Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, the retail bank operates as TD Canada Trust and serves more than 12 million customers at over 1,100 branches. In the United States, the company operates as TD Bank (the initials are used officially for all U.S. operations). The U.S. subsidiary was created through Complainant’s acquisition of Banknorth and Commerce Bank, and for many years was known as TD Banknorth. TD Bank now serves more than 8 million customers with a network of more than 1,300 branches, primarily located in the eastern United States. TD also ranks among the world’s leading online financial services firms.
Complainant operates numerous websites, chief among them http://www.tdbank.com/ and http://www.td.com/. According to Compete.com, <tdbank.com> attracts over 2.61 million unique visitors per month, making it the 404th most popular website in the United States. Alexa.com ranks <td.com> as the 21st most popular website in Canada, 5,282nd most popular website in the United States, and 1,202nd most popular website globally.
Complainant is ranked number 71 on the 2013 Forbes Global 2000 listing. Brand Finance® Brand Directory, which ranks the world’s most valuable brands, ranks TD as number 89 on its 2013 Global 500 list. The Toronto-Dominion Bank is one of a few banks in the world rated AAA by Moody’s.
In addition, in 2013, brandZ ranked Complainant as number 46 on its list of the Top 100 most valuable global brands and as number 6 on its list of Top 10 Regional Banks in the world. Furthermore, TD has also been named one of Canada’s Top 100 Employers for the fifth year in a row. This recognition followed announcements of inclusion on the lists of Financial Post’s Ten Best Companies to Work For (2011), and as one of the Great Place to Work Institute’s Best Workplaces in Canada (2011).
The inaugural 2012 Ipsos Influence Index Study recently asked Canadians to rate 100 leading global brands on a wide variety of attributes, and TD ranked #17 on the list.
Interbrand’s Best Canadian Brands, published every two years, ranks the top 25 Canadian brands according to value and provides insight into their ability to manage brands effectively as a contributor to business performance. TD was ranked as the number 1 overall Canadian brand in the 2012 and 2014 editions of the publication.
In summary, Complainant’s brand is well recognized by consumers, industry peers, and the broader global community.
Complainant owns the Marks cited in Section 6(c) above for which it has obtained numerous trademark registrations. None of the listed registrations have been abandoned, cancelled, or revoked. Complainant has made significant investments over the years to advertise, promote, and protect Complainant’s Marks through various forms of media, including the Internet. Based on its extensive use and trademark registrations, Complainant owns the exclusive right to use the TD and TD BANK marks for banking and related financial services.
A. The Disputed Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights
(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
By virtue of its federal trademark and service mark registrations, Complainant is the owner of Complainant’s trademarks. See United Way of America v. Alex Zingaus, FA 1036202 (NAF Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”). Furthermore, a complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (NAF April 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 0622122 (NAF Apr. 14, 2006).
When comparing the Disputed Domain Name to Complainant’s trademarks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and Complainant’s trademarks. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 0153545 (NAF May 27, 2003) (“[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
In creating the Disputed Domain Name, Respondent has added the generic, descriptive phrase “online bank access” to Complainant’s TD trademark, thereby making the Disputed Domain Name confusingly similar to Complainant’s trademark. The fact that such term is closely linked and associated with Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the Disputed Domain Name and Complainant’s trademark. More specifically:
“online bank access” – As mentioned above, Complainant is one of the largest financial institutions in North America and the world and is widely known for providing online banking services including through its website at <tdbank.com>. In addition, use of this term, in connection with Complainant’s TD trademark gives Internet users the impression they are gaining access to Complainant’s official website.
Past Panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term(s) that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks. See Exxon Mobil Corporation v. mga enterprises limited, FA 1273445 (NAF Aug. 26, 2009) (finding that the addition of the terms “travel” and “club,” which have an obvious relationship to Complainant’s [Exxon’s] business, to Complainant’s mark in the disputed domain name <exxontravelclub.com> create a confusing similarity between the disputed domain name and the registered mark). See also Allianz of Am. Corp. v. Bond, FA 0680624 (NAF June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business…did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark). See also Kohler Co. v. Curley, FA 0890812 (NAF Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business”).
B. Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Name
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The granting of registrations by the Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO) to Complainant for the TD and TD BANK trademarks is prima facie evidence of the validity of the terms “TD” and “TD BANK” as trademarks, of Complainant’s ownership of these trademarks, and of Complainant’s exclusive right to use the TD and TD BANK trademarks in commerce on or in connection with the goods and/or services specified in the registration certificates.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests. See Policy, ¶4(c)(ii). Although the WHOIS database on DomainTools.com indicates that Respondent is called TD BANK, it is Complainant’s claim that Respondent has falsely identified itself as, or associated with, Complainant. Complainant has not licensed, authorized or permitted Respondent to register domain names incorporating Complainant’s trademarks. Given the totality of the circumstances a Panel should find that Respondent is not commonly known by the Disputed Domain Name. See Morgan Stanley v. Morgan Stanley, FA 1245123 (NAF Mar. 10, 2009) (“Despite Respondent’s listing in the WHOIS information as ‘Morgan Stanley,’ there is no corroborating evidence that would demonstrate that Respondent is indeed commonly known by the disputed domain name. More significantly, Complainant argues that Respondent lacks any license or permission to use Complainant’s mark.”). See also City News & Video v. Citynewsandvideo, FA 244789 (NAF May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo’ there is no evidence before the panel to indicate that Respondent, is in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶4(c)(ii).”). See also, Action Educational Services d/b/a West Coast Univ. v. West Coast Univ. Int’l Inc., FA 1191541 (NAF July 2, 2008) (respondent was not commonly known by WESTCOASTUNIVERSITY.US domain name pursuant to Policy ¶4(c)(iii) even though WHOIS information identified respondent as “West Coast University International Inc.” because there was no affirmative evidence in the record proving respondent’s identity).
Respondent is using the Disputed Domain Name to redirect internet users to a website that resolves to a blank page and lacks content. Respondent has failed to make use of this Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name, as confirmed by numerous past Panels. See Nenê f/k/a Maybyner Rodney Hilario v. Master, Host, FA 0924563 (NAF Apr. 10, 2007) (Holding that absence of content at website evinced a lack of rights or legitimate interests in the disputed domain name). See also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (NAF Sept. 2, 2004) (Respondent is using the Disputed Domain Name to resolve to an empty page featuring no substantive content or links is further evidence that Respondent's failure to actively use the Disputed Domain Name(s) suggests a lack of rights and legitimate interests in the Disputed Domain Name(s) as blank pages are neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)).
Respondent registered the Disputed Domain Name on June 30, 2016, which is significantly after Complainant filed for registration of its relevant trademarks with CIPO and the USPTO, and also significantly after Complainant’s first use in commerce of the TD trademark in 1969.
Respondent registered the Disputed Domain Name on June 30, 2016, which is significantly after Complainant’s registration of its TD.COM on April 15, 1998 and TDBANK.COM on April 14, 1995.
C. The Disputed Domain Name was Registered and is Being Used in Bad Faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Complainant and its TD and TD BANK trademarks are known internationally. Complainant has marketed and sold its goods and services using this trademark since 1969, which is well before Respondent’s registration of the Disputed Domain Name on June 30, 2016.
At the time of registration of the Disputed Domain Name, Respondent knew, or at least should have known, of the existence of Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the Disputed Domain Name, Complainant is the second largest bank in Canada by market capitalization and deposits and the sixth largest bank in North America. Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, Complainant services more than 12 million customers at over 1,100 branches. In the United States, Complainant serves more than 8 million customers with a network of more than 1,200 branches, primarily located in the eastern United States, which demonstrates Complainant’s fame. Further, performing searches across a number of internet search engines for “td online bank access” returns multiple links referencing Complainant and its business. See Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“given Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”). See also Victoria's Secret v. Hardin, FA 096694 (NAF Mar. 31, 2001) (Finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith). Further, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past Panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding, as is the case here. See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (NAF Mar. 13, 2012) (“a finding of bad faith hinges squarely on the probability that it was more likely than not that respondent knew of, and targeted, complainant’s trade mark”). See also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (NAF 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”). See also Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., D2014-0878 (WIPO Aug. 5, 2014) (“Knowledge and targeting [of a trademark] may be proven inferentially”).
Furthermore, the details provided by Respondent in the public WHOIS for the Disputed Domain Name are blatantly false. More specifically; Respondent has registered the Disputed Domain Name <tdonlinebankaccess.com> utilizing Complainant’s TD BANK trademark in Respondent Name field and lists the Registrant Street “84 Moonyoonooka, Western Austr” which is not a valid address. Prior panels have held that using false contact information in the public Whois shows evidence of bad faith registration. See Morgan Stanley v. Morgan Stanley IT Tech c/o Andries deHaan, FA 1476237 (NAF Feb. 7, 2013) (The Panel stated, “Respondent’s use of a false identity to impersonate Complainant in the WhoIs database is further evidence of bad faith use and registration of the disputed domain name.”); see also The Prudential Assurance Company Limited v. Osaro Godwin, D2005-0934 (WIPO Oct. 25, 2005) (Where the panel stated, “The use of false contact information in Respondent’s initial registration application is evidence that Respondent registered the domain name in bad faith.”); see also LPL Financial LLC v. Trever Phalms and Brentwood Towers, D2015-0052 (WIPO March 5, 2014) (The Panel found evidence of bad faith where, “Complainant submitted evidence showing that the address appearing in the WhoIs record for the Disputed Domain Name <lplfinance.com> corresponds to the address of a legitimate bank in Pittsburgh that is not connected to Respondents.”).
The Disputed Domain Name currently resolves to an inactive site and is not being used, though past Panels have noted that the word bad faith "use" in the context of ¶4(a)(iii) does not require a positive act on the part of Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy ¶4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"). See also Alitalia- Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose). See also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (NAF May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names”). In this case, the Disputed Domain Name is confusingly similar to Complainant’s trademarks, and Respondent has made no use of the Disputed Domain Name, factors which should be duly considered in assessing bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy). See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). See also Caravan Club v. Mrgsale, FA 95314 (NAF Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
The Disputed Domain Name can only be taken as intending to cause confusion among internet users as to the source of the Disputed Domain Name, and thus, the Disputed Domain Name must be considered as having been registered and used in bad faith pursuant to Policy ¶4(b)(iv), with no good faith use possible. More specifically, where the Disputed Domain Name incorporates Complainant’s famous TD mark in its entirety while adding the generic, descriptive term “online bank access,” which has an obvious relationship to Complainant, there is no plausible good-faith reason or logic for Respondent to have registered the Disputed Domain Name, and “…the only feasible explanation for Respondent’s registration of the disputed domain names is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith.” See Vevo LLC v. Ming Tuff, FA 1440981 (NAF May 29, 2012). Further, considering these circumstances, any use of the Disputed Domain Name whatsoever, whether actual or theoretical, would have to be in bad faith. See Indymac Bank v. Ebeyer, FA 0175292 (NAF Sept. 19, 2003) (Panel holding “there is no conceivable way [r]espondent could use the disputed domain names such that they would not infringe on [c]omplainant’s INDYMAC mark, and therefore it is illogical to await [r]espondent’s use of the domain names to find bad faith use”).
Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past Panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., D2003-0230 (WIPO May 16, 2003). See also T-Mobile USA, Inc. v. Utahhealth, FA 0697819 (NAF June 7, 2006) (finding that “Respondent’s efforts to hide its true identity through the use of a “proxy” domain registrar are evidence of bad faith registration”). See Yahoo! Inc. v. cancelyahoo.org Private Registrant/ A Happy DreamHost Customer, FA 1503412 (NAF July 29, 2013) (“Respondent used a privacy service to register the disputed domain name…which raised the rebuttable presumption of bad faith registration and use of the disputed domain name”).
Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”). See also RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
Finally, on balance of the facts set forth above, it is more likely than not that Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Disputed Domain Name in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., FA D2014-1754 (WIPO Jan 12, 2014) (“the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.”)
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 provides banking and financial services throughout North America. In conjunction with its business, Complainant uses the TD and TD BANK marks. Complainant registered the TD and TD Bank marks with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. Nos. TMA644911 & TMA549396, registered July 26, 2005 & Aug. 7, 2001, respectively). Complainant also registered both marks with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. Nos. 1,649,009 & 3,788,055, registered June 25, 1991 & May 11, 2010, respectively). A complainant can demonstrate rights in its marks by a registration with a governmental authority (such as the USPTO and the CIPO). See Dixie Consumer Prods. LLC v. Private Whois dixiecup.com, FA 1419529 (Forum Jan. 27, 2012) (finding that complainant’s trademark registrations with a number of trademark authorities around the world, including with the CIPO and USPTO, “successfully proves a complainant has rights in a mark . . .”). Complainant need not prove it has rights in its marks where Respondent is located (in this case, somewhere in “Western Australia”….without the benefit of a town). Complainant need only prove its rights somewhere. Complainant has rights to the TD and TD BANK marks.
Complainant claims Respondent’s <tdonlinebankaccess.com> domain name is confusingly similar to Complainant’s TD and TD BANK marks because they incorporate the marks in their entirety, along with the additions of generic, descriptive terms (“online,” and “access”), along with the “.com” generic top-level domain (“gTLD”). Respondent’s use of the term “online” confuses Internet users with Complainant’s online banking services. The use of the term “access” implies Internet users are gaining access to Complainant’s official website. In Am. Express Co. v. Buy Now, the Panel held “the disputed domain names [were] confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contain[ed] the AMERICAN EXPRESS or AMEX marks in its entirety and merely add[ed] nondistinctive, descriptive and generic terms, some of which describe[d] Complainant’s business.” (FA 318783 (Forum Oct. 14, 2004)). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Respondent’s <tdonlinebankaccess.com> domain name is confusingly similar to Complainant’s TD and TD BANK marks.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 claims Respondent does not have any rights or legitimate interests in <tdonlinebankaccess.com>. Complainant claims Respondent is not commonly known by the disputed domain name. The original WHOIS information associated with the disputed domain name indicated Respondent used the Domains By Proxy, LLC privacy service to shield their identity (a Go-Daddy.com privacy service). Panels have held respondents are not commonly known by disputed domain names based on WHOIS information and lack of information to the contrary. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).”). Certainly Respondent gained no rights to the domain name while it was registered using a privacy service because Respondent did nothing to publicly associate itself with the domain name. Complainant claims Respondent used a non de plume behind the WHOIS privacy service. Respondent does not dispute this (being completely silent). Therefore, the Panel concludes Respondent is not commonly known by the disputed domain name.
Complainant claims it has not licensed Respondent to use the TD and TD BANK marks in any way, nor is Respondent affiliated with Complainant in any manner. Respondent has not made a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain name. Respondent’s <tdonlinebankaccess.com> merely resolves to a blank page, suggesting Respondent has failed to make use of the disputed domain name. Having a domain name which resolves to an inactive webpage demonstrates the respondent is not using the mark for a bona fide offering of goods or services, or a legitimate non-commercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”); George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name). Respondent has no rights or legitimate interests in the <tdonlinebankaccess.com> domain name under Policy ¶4(c)(i) or ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered and is using <tdonlinebankaccess.com> in bad faith. Complainant claims Respondent’s <tdonlinebankaccess.com> was intended to confuse Complainant’s customers for Respondent’s commercial gain, which constitutes bad faith under Policy ¶4(b)(iv). In a similar instance, the panel in Red Bull GmbH v. Gutch found the respondent’s expected use of the domain name <redbull.org> would lead people to believe the domain name was falsely connected with the complainant, and thus is the equivalent to bad faith use. (D2000-0766 (WIPO Sept. 21, 2000)). Likewise, in Harrods Ltd. v. Harrod’s Closet, the Panel found where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith. Respondent’s registration and use of <tdonlinebankaccess.com> is in bad faith under Policy ¶4(b)(iv).
Respondent’s <tdonlinebankaccess.com> domain name appears not to be actively used. Generally speaking, inactive and unused sites demonstrate bad faith under Policy ¶4(a)(iii) when they disrupt a competitor…and it seems likely Respondent is a competitor since it falsely uses Complainant’s own name. Panels tend to find respondents show bad faith when they fail to make use of disputed domain names. In Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, the panel held the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii) because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,”. (FA1310001522801 (Forum Nov. 19, 2013)). In VideoLink, Inc. v. Xantech Corporation, the Panel stated “Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).” (FA1503001608735 (Forum May 12, 2015)). This Panel concludes Respondent registered and is using <tdonlinebankaccess.com> in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent had actual knowledge of Complainant and its rights to the marks, further evincing bad faith. Complainant’s TD and TD BANK marks are widely known and Respondent added related words to them which strongly suggest Respondent knew about the marks when it registered <tdonlinebankaccess.com>. A respondent demonstrates bad faith registration and use of a domain name when it registers a domain knowing full well about complainant’s trademark rights. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶4(a)(iii).”). This Panel concludes Respondent had actual notice of Complainant’s rights to the marks when it registered and was using the disputed domain name.
Finally, Respondent registered the domain name using a WHOIS privacy service. This raises the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut that presumption. Once the WHOIS privacy screen is dropped, it became clear Respondent used a non de plume behind the WHOIS privacy service. Giving false WHOIS contact information also raises the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut that presumption either. Respondent never disclosed its address in any meaningful way. This Panel will find bad faith registration and use on these grounds alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tdonlinebankaccess.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 30, 2017
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