The Toronto-Dominion Bank v. Micha Schaffer
Claim Number: FA1612001710115
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Micha Schaffer (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbankbusinessloans.com> and <tdbankbusinessloan.com>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 30, 2016; the Forum received payment on December 30, 2016.
On December 30, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdbankbusinessloans.com> and <tdbankbusinessloan.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 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@tdbankbusinessloans.com, postmaster@tdbankbusinessloan.com. Also on December 30, 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 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
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, registered July 26, 2005; TMA549396, registered Aug. 7, 2001). Additionally, Complainant registered both marks with the United States Trade and Patent Office (“USPTO”) (e.g., Reg. Nos. 1,649,009, registered June 25, 1991; 3,788,055, registered May 11, 2010, respectively). Respondent’s <tdbankbusinessloans.com> and <tdbankbusinessloan.com> domain names are confusingly similar to Complainant’s TD and TD BANK marks because both marks are used in their entirety, with the additions of generic, descriptive terms (“business loan” and “business loans”), along with the inclusion of the “.com” generic top-level domain (“gTLD”). Specifically, Respondent’s use of the descriptive phrases “business loan” and “business loans” serves to confuse and misdirect Complainant’s customers looking for Complainant’s business products and services.
Respondent has no rights or legitimate interests in <tdbankbusinessloans.com> and <tdbankbusinessloan.com>. Respondent is not commonly known by the disputed domain names. Complainant has not licensed or authorized Respondent to use the TD and TD BANK marks in any regard. Respondent is not using <tdbankbusinessloans.com> and <tdbankbusinessloan.com> for a bona fide offering of goods or services, or legitimate non-commercial or fair use of the domain name. The disputed domain names resolve to webpages with the message “This Web page is parked for FREE, courtesy of GoDaddy.com.” Moreover, the pages feature click-through links for business banking-related services in direct competition with Complainant, presumably for Respondent’s financial gain.
Respondent registered and is using <tdbankbusinessloans.com> and <tdbankbusinessloan.com> in bad faith. Respondent holds registrations for multiple domain names that misappropriate well-known marks. Respondent’s history of cybersquatting and typosquatting demonstrates a pattern of bad faith registrations. Respondent’s use of pay-per-click links to attract Internet users to sites in direct competition with Complainant also evinces bad faith. Respondent registered <tdbankbusinessloans.com> and <tdbankbusinessloan.com> with actual knowledge of Complainant and its rights to the TD and TD BANK marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the Toronto-Dominion Bank, of Toronto, Ontario, Canada. Complainant is the owner of domestic and international registrations for the marks TD BANK and TD, as well numerous related marks, that Complainant has continuously used in connection with its provision of financial and business goods and services, since at least as early as 1955. Complainant also owns and operates numerous websites incorporating its marks including <tdbank.com> and <td.com>.
Respondent is Micha Schaffer of New York, NY, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that Respondent registered <tdbankbusinessloans.com> and <tdbankbusinessloan.com> on or about June 26, 2016.
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 registered the TD and TD Bank marks with CIPO (e.g., Reg. Nos. TMA644911, registered July 26, 2005; TMA549396, registered Aug. 7, 2001, respectively). Additionally, Complainant registered both marks with USPTO (e.g., Reg. Nos. 1,649,009, registered June 25, 1991; 3,788,055, registered May 11, 2010, respectively). Prior panels have found that registration with the USPTO and/or 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 . . .”). The Panel here finds that Complainant has rights to the TD and TD BANK marks.
Complainant argues that Respondent’s <tdbankbusinessloans.com> and <tdbankbusinessloan.com> domain names are confusingly similar to Complainant’s TD and TD BANK marks because both marks are used in their entirety, with the additions of generic, descriptive terms (“business loan” and “business loans”), along with the inclusion of the “.com” gTLD. Specifically, Respondent’s use of the descriptive phrases “business loan” and “business loans” serves to confuse and misdirect Complainant’s customers looking for Complainant’s business 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, past 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). The Panel here finds that Respondent’s <tdbankbusinessloans.com> and <tdbankbusinessloan.com> are confusingly similar to Complainant’s TD and TD BANK marks.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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 (Nat. Arb. 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). Complainant has met this burden.
Complainant contends that Respondent does not have rights or legitimate interests in <tdbankbusinessloans.com> and <tdbankbusinessloan.com>. In support of its argument, Complainant avers that Respondent is not commonly known by the disputed domain names. WHOIS information associated with the disputed domain names identifies Respondent as “Micha Schaffer.” Previous panels have held that respondents are not commonly known by disputed domain names based on WHOIS information and a 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). Based on the WHOIS information in this case, and Respondent’s failure to provide any information to the contrary, the Panel here finds that Respondent is not commonly known by the disputed domain name.
Complainant argues that it has not licensed or authorized Respondent to use the TD and TD BANK marks in any regard. Complainant further contends that Respondent is not using <tdbankbusinessloans.com> and <tdbankbusinessloan.com> for a bona fide offering of goods or services, or legitimate non-commercial or fair use of the domain name. The disputed domain names resolve to webpages with the message “This Web page is parked for FREE, courtesy of GoDaddy.com.” Moreover, the pages feature click-through links for business banking-related services in direct competition with Complainant, presumably for Respondent’s financial gain. When a “[r]espondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of [a c]omplainant, [t]he Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.” Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015). See also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). The Panel here finds that Respondent has no rights or legitimate interests in the <tdbankbusinessloans.com> and <tdbankbusinessloan.com> domain names under Policy ¶4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant proclaims that Respondent’s use of pay-per-click links to attract and confuse Internet users to sites in direct competition with Complainant evinces bad faith. The Panel again notes that Respondent’s <tdbankbusinessloans.com> and <tdbankbusinessloan.com> resolve to parked pages containing click-through links to goods and services competing with Complainant. Prior panels have found that disputed domain names containing competing links for commercial benefit demonstrate bad faith registration. See The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”); Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). The Panel here finds that Respondent’s registration and use of <tdbankbusinessloans.com> and <tdbankbusinessloan.com> is in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbankbusinessloans.com> and <tdbankbusinessloan.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 13, 2017
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