The Toronto-Dominion Bank v. Chris Minor
Claim Number: FA1612001710082
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Chris Minor (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <torontodominionbank.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 29, 2016; the Forum received payment on December 29, 2016.
On January 2, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <torontodominionbank.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 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, billing contacts, and topostmaster@torontodominionbank.org. Also on January 3, 2017, 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 January 16, 2017.
On January 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues it has rights in the THE TORONTO-DOMINION BANK mark through registration of the mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA556013, registered January 7, 2001).
The disputed domain name <torontodominionbank.org> is confusingly similar to the THE TORONTO-DOMINION BANK mark as the domain name merely removes the word “the” and the hyphen from the mark and adds the generic top-level domain (“gTLD”) “.org.”
Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent has not been commonly known by the disputed domain name, been affiliated with Complainant, or received permission to use the THE TORONTO-DOMINION BANK mark.
Complainant further argues that Respondent’s use of the domain name, to resolve to an inactive website, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant further argues that Respondent has registered and is using the disputed domain name in bad faith, and that Respondent’s failure to make an active use of the disputed domain name demonstrates bad faith.
Complainant further argues that Respondent had actual or constructive notice of Complainant’s rights in the THE TORONTO-DOMINION BANK mark at the time of registration.
B. Respondent
Respondent claims that it did not register the disputed domain name and that some fraud or misidentification has taken place to associate Respondent with the disputed domain name.
Respondent has no claim over any marks related to Complainant or over the disputed domain name.
Although taking into consideration Respondent's response, stating that it has no claim in respect to the disputed domain name, leads to a default result of this proceeding - a decision in favor of Complainant, the Panel finds it is appropriate, in this circumstances, to fully refer to Complainant's arguments.
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.
Complainant claims to have rights in the THE TORONTO-DOMINION BANK mark through registration of the mark with the CIPO (e.g., Reg. No. TMA556013, registered January 7, 2001). (See Complaint, at Attached Ex. A).
Previous Panels have routinely held, and this Panel holds as well, that Complainant has rights in a mark based on registration of the mark with the CIPO. See State Farm Mutual Automobile Insurance Company v. VistaPrint Technologies c/o Vistaprint North American Services Corp., FA 1617798 (Forum June 3, 2015) (concluding that "Complainant's valid registration of the STATEFARM.COM mark with the CIPO sufficiently demonstrates Complainant's rights in the mark for purposes of Policy ¶ 4(a)(i)”).
The disputed domain name <torontodominionbank.org> is confusingly similar to the THE TORONTO-DOMINION BANK mark. The disputed domain name merely removes the word “the,” a hyphen, and adds the gTLD “.org,” to the mark.
Previous Panels have held that removal of a word and addition of a gTLD does not alleviate confusing similarity between a mark and a domain name. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.).
Previous Panels have also held that the presence or absence of punctuation marks, such as hyphens, in a domain name do not prevent a finding of confusing similarity. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
Taken together, the Panel finds that the disputed domain name <torontodominionbank.org> is confusingly similar to the THE TORONTO-DOMINION BANK for purposes of Policy ¶ 4(a)(i).
Respondent did not make any contentions with regards to Policy ¶ 4(a)(i).
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) (“the complainant must first make a prima facie showing that the respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If the complainant satisfies its burden, then the burden shifts to the respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has not been commonly known by the disputed domain name, been affiliated with Complainant, or received permission to use the THE TORONTO-DOMINION BANK mark. WHOIS information associated with the disputed domain name identifies Respondent as, “Chris Minor,” which does not appear to resemble the disputed domain name. (See Complaint., at Attached Ex. E). Previous Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum March 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that the respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Thus, the Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant asserts that the disputed domain name is not being used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a website that displays the message, “Server not found.” (See Complaint, at Attached Ex. F). Previous Panels have held that a respondent inactively using a domain name confusingly similar to another’s mark is not a bona fide offering of goods or services or a legitimate noncommercial 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).”). Thus, the Panel finds that Respondent’s inactive use of the domain name is not a use within the parameters of Policy ¶4(c)(i) or ¶4(c)(iii).
Respondent affirmatively contends that it has no rights or interests in the disputed domain name or marks that could be associated with the domain name. Respondent asserts that his name being associated with the disputed domain name must have occurred through fraud or misidentification.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent's bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent is failing to make an active use of the disputed domain name which demonstrates bad faith. Again, the disputed domain name resolves to a website that merely displays the message, “Server not found,” indicating a lack of use of the disputed domain name. (See Complaint, at Attached Ex. F). Previous Panels have held that failing to make an active use of a domain name can evidence bad faith registration and use. See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum December 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii).”).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the THE TORONTO-DOMINION BANK mark. Complainant argues that the prominence of Complainant’s business and Complainant’s numerous trademark registrations indicates that Respondent had actual knowledge of Complainant's mark and rights.
Respondent makes no specific contentions with regards to Policy ¶ 4(a)(iii). However, Respondent claims that he was the subject of fraud or misrepresentation and it was not he who has registered the disputed domain name. Evidently, someone registered the disputed domain name and in view of Respondent’s position, the Panel can only draw the conclusion that Respondent’s name was used, through fraud or misrepresentation, to register the disputed domain name. Such registration would be without doubt in bad faith. The Panel finds that the person who did register the disputed domain name under the name of Respondent has registered and used the disputed domain name in bad faith in view of the above.
Although Panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent (the person who actually registered the disputed domain name in this case) had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering 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 <torontodominionbank.org> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: February 13, 2017
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