THE TORONTO-DOMINION BANK v. Georgette Fears
Claim Number: FA1612001708368
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Georgette Fears (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbankhelp.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2016; the Forum received payment on December 19, 2016.
On December 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdbankhelp.net> 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 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 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@tdbankhelp.net. Also on December 21, 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 Ho Hyun Nahm, 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. 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
i) 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). Additionally, Complainant registered both marks with the United States Trade and Patent Office (“USPTO”) (e.g., Reg. Nos. 1,649,009 & 3,788,055, registered June 25, 1991 & May 11, 2010, respectively). Respondent’s <tdbankhelp.net> domain name is confusingly similar to Complainant’s TD and TD BANK marks because it incorporates the marks in their entirety, along with the addition of the generic, descriptive term “help” and the inclusion of the “.net” general top level domain (“gTLD”). Specifically, Respondent’s use of the term “help” confuses and misdirects Complainant’s customers looking for answers to questions about Complainant’s products and services.
ii) Respondent does not have any rights or legitimate interests in <tdbankhelp.net>. Complainant has not permitted or licensed Respondent to use the TD and TD BANK marks in any regard, nor is Respondent affiliated with Complainant in any manner. Respondent is not commonly known by the disputed domain name. 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 <tdbankhelp.net> merely resolves to a blank page, implying that Respondent has failed to make use of the disputed domain name.
iii) Respondent has registered and is using <tdbankhelp.net> in bad faith. Respondent’s <tdbankhelp.net> appears to intend to create confusion for Complainant’s customers, thereby registering and using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Furthermore, a disputed domain name resolving to inactive, unused sites evinces bad faith under Policy ¶ 4(a)(iii). Finally, due to the fame and widespread use of the TD and TD BANK marks, Respondent possessed actual knowledge of Complainant and its rights to the marks, further evincing bad faith.
B. Respondent
Respondent did not submit a response. The Panel notes that Respondent registered <tdbankhelp.net> on June 30, 2016.
Complainant established that it had rights in the mark contained in 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 used 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(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 claims it registered the TD and TD Bank marks with CIPO (e.g., Reg. Nos. TMA644911 & TMA549396, registered July 26, 2005 & Aug. 7, 2001, respectively). Additionally, Complainant further contends that it registered both marks with USPTO (e.g., Reg. Nos. 1,649,009 & 3,788,055, registered June 25, 1991 & May 11, 2010, respectively). The general consensus among panels is that registration with USPTO and other government trademark entities is sufficient to establish rights in a mark. 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 . . .”). Therefore, the Panel finds that Complainant has rights to the TD and TD BANK marks.
Respondent’s <tdbankhelp.net> domain name is confusingly similar to Complainant’s TD and TD BANK marks because it incorporates the marks in their entirety, along with the addition of the generic, descriptive term “help” and the inclusion of the “.net” gTLD. Specifically, Respondent’s use of the term “help” confuses and misdirects Complainant’s customers looking for answers to questions about Complainant’s products and services. In Am. Express Co. v. Buy Now, the Panel held that “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)). Moreover, Panels have held that gTLDs do not significantly distinguish a disputed domain name from a complainant’s mark. 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). Thus, here, the Panel finds that Respondent’s <tdbankhelp.net> is confusingly similar to Complainant’s TD and TD BANK marks.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 contends that Respondent does not have any rights or legitimate interests in <tdbankhelp.net>. In support of their argument, Complainant avers that Respondent is not commonly known by the disputed domain name. WHOIS information associated with the disputed domain name indicates that Respondent’s name is “Georgette Fears.” Panels have held that respondents are not commonly known by disputed domain names based on WHOIS information and lack of information to the contrary. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant contends that Respondent has not made a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain names. Respondent’s <tdbankhelp.net> merely resolves to a blank webpage, implying that Respondent has failed to make use of the disputed domain name. In general, Panels have held that a disputed domain name that resolves to an inactive webpage evinces that a 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). Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <tdbankhelp.net> domain name under Policy ¶4(c)(i) or ¶ 4(c)(iii).
Complainant contends that Respondent has registered and is using <tdbankhelp.net> in bad faith. To support their argument, Complainant asserts that Respondent’s <tdbankhelp.net> appears to intend to create confusion for Complainant’s customers, thereby alleging it registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). In a similar instance, the Panel in Red Bull GmbH v. Gutch found that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was 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 that 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. Hence, the Panel finds that Respondent’s registration and use of <tdbankhelp.net> is in bad faith under Policy ¶ 4(b)(iv).
Furthermore, Respondent’s <tdbankhelp.net> resolves to a webpage that lacks content and appears to be unused. Thus, Complainant argues that a disputed domain name resolving to an inactive, unused site evinces bad faith under Policy ¶ 4(a)(iii). Panels tend to find that respondents show bad faith by failing to make use of disputed domain names. In Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, the Panel held that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). (FA1310001522801 (Forum Nov. 19, 2013)). Additionally, in VideoLink, Inc. v. Xantech Corporation, the Panel stated that “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)).
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.). See also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The particular circumstances of this case that the Panel has considered are:
i)Complainant’s TD and TD BANK marks have a good reputation and are widely known, as evidenced by the fact that Complainant had a long and well established reputation in connection with the provision of banking and financial services at the time of Respondent’s registration, and ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names. As the Panel finds such a failure to make an active use here, the Panel finds that Respondent uses the domains in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant maintains that Respondent possessed actual knowledge of Complainant and its rights to the marks, further evincing bad faith. To support this argument, Complainant states, due to the fame and widespread use of the TD and TD BANK marks, Respondent knew or should have known of Complainant and its rights to its marks when it registered <tdbankhelp.net>. Panels have found evidence of bad faith where the respondent registered the disputed domain name with actual knowledge of the complainant and its 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).”). In the instant case, the Panel infers due to the fame of Complainant's marks that Respondent had actual notice of Complainant and its rights to the marks when it registered the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbankhelp.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 27, 2017
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