The Toronto-Dominion Bank v. Alexander Ginzburg
Claim Number: FA1708001746026
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Alexander Ginzburg (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbank-claims.com>, registered with Domain.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 24, 2017; the Forum received payment on August 24, 2017.
On August 24, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <tdbank-claims.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 August 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@tdbank-claims.com. Also on August 24, 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 untimely Response was received and determined to be complete on September 15, 2017.
On September 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, The Toronto-Dominion Bank, is a large Canadian banking institution. In connection with this business, Complainant uses the TD BANK mark to promote its goods and services.
Complainant has rights in the TD BANK mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,788,055, registered May 11, 2010.
Respondent’s <tdbank-claims.com> is confusingly similar as it removes the space between TD and BANK, appends a hyphen, the generic term “claims,” and the generic top-level-domain (“gTLD”) “.com” to Complainant’s TD BANK mark.
Respondent lacks rights and legitimate interests in the <tdbank-claims.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent’s use of the TD BANK mark. Further, Respondent fails to use <tdbank-claims.com> in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, the disputed domain name resolves to a website featuring pay-per-click links from which Respondent presumably draws commercial gain.
Respondent registered and uses the disputed domain name in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website through the use of the TD BANK mark in the domain name and pay-per-click links on the resolving webpage. Respondent has exhibited a pattern of cybersquatting by registering multiple domain names reflecting third-party marks. Respondent also failed to respond positively to Complainant’s demand letter. Finally, Respondent had actual knowledge of Complainant’s rights in the TD BANK mark prior to registration and use of the disputed domain name.
B. Respondent
Respondent asserts the disputed domain name is not confusingly similar to Complainant’s TD BANK mark as the dash would not have been included if confusion was the intention.
Respondent has rights and legitimate interests in the disputed domain name. Respondent is engaged in a class action dispute with Complainant and intends to publish said lawsuit on the disputed domain name.
Respondent registered and uses the disputed domain name in good faith. Respondent has made no use of the resolving website since the registration of the <tdbank-claims.com> domain name. Respondent intends to use the disputed domain name to host information with regard to the pending litigation against Complainant and the registrar has parked the page in the meantime. Respondent has not committed cybersquatting with reference to <barclays-claims.com> and the other domain names posited as owned by Respondent by Complainant are not related to Respondent.
Complainant has rights in the TD BANK mark through its registration of such marks with the USPTO, and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a parking page offering pay-per-click links.
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.
Preliminary Issue: Deficient Response
This administrative proceeding was commenced August 24, 2017. The Response was submitted September 15, 2017. In order to be considered timely, the Response needed to be submitted within twenty (20) days of the commencement of the administrative proceeding per ICANN UDRP Rule 5(a). Thus the Response is not in compliance with ICANN Rule 5. Notwithstanding the foregoing, the Panel, in its discretion, chooses to accept and consider the Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for the TD BANK trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <tdbank-claims.com> domain name contains Complainant’s TD BANK mark less its space, appended with a hyphen, the generic term “claim,” and the top-level domain name “.com. ” These alterations to Complainant’s trademarks are insufficient to distinguish the at-issue domain name from Complainant’s mark for the purposes of the Policy ¶ 4 (a)(i). Therefore, the Panel finds that Respondent’s <tdbank-claims.com> domain name is confusingly similar to Complainant’s TD BANK trademark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also, Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy);
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Alexander Ginzburg” as the domain name’s registrant. There is nothing in the record that otherwise suggests Respondent is commonly known by the <tdbank-claims.com> domain name. Moreover, Respondent makes no claim that it is known by the at-issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s confusingly similar <tdbank-claims.com> domain name addresses a parking page which displays pay-per-click links. However, Respondent claims that because it wants to use the domain name to serve in connection with a future class action lawsuit against Complainant, Respondent has rights or legitimate interests in the domain name. In support of its assertion Respondent attaches an unsigned document, in the form of an unconformed New York civil complaint dated September 14, 2017, to its Complaint.
Nevertheless, Respondent’s putative preparation to use the confusingly similar domain name appears to be subsequent to the filing of the instant complaint and thus of no relevance under Policy ¶ 4(c)(i), even if we liberally considered a lawsuit an “offering of goods or services” and even if Respondent’s self-serving document were competent evidence of Respondent’s future intent. Paragraph 4(c)(i) calls for a showing of preparations to use the domain name made “before any notice to [the respondent] of the dispute.” The record contains no evidence, or even a claim, that Respondent prepared to use the confusingly similar domain name prior to the parties’ dispute. Further, the absence of evidence corroborating Respondent’s assertion about its intent to use the domain name in a manner that might be consistent with Policy ¶ 4(c)(iii) (i.e. use ancillary to a ruling in a lawsuit ordering administration of adjudicated class action claims) precludes the Panel from finding paragraph 4(c)(iii) as a basis for demonstrating Respondent’s rights or legitimate interests in the <tdbank-claims.com> domain name. The fact that no such class action lawsuit has even been filed, never mind no order issued directing Respondent to administrate any claims, shows Respondent’s assertion of rights in the <tdbank-claims.com> to be baseless, even if there were some proof of Respondent’s claimed intent –which there is not. Therefore, the Panel finds Respondent’s use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Given the foergoing, Complainant’s unrebutted prima facie showing that Respondent lacks rights or interests in the at-issue domain name satisfies Complainant’s burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The <tdbank-claims.com> domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding the <tdbank-claims.com> domain name.
As discussed above regarding rights and legitimate interests, Respondent uses the at-issue domain name to address a webpage which presents its visitors with pay-per-click links. Using the confusingly similar domain name in this manner demonstrates Respondent’s bad faith registration and use of the <tdbank-claims.com> domain name under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Notably, even if Respondent’s claim that it intends to use the domain name in a permissible way were supported by compelling facts and law, Respondent’s future intent, however righteous, does not excuse Respondent’s present bad faith registration and use. The Panel recalls the aphorism telling where the road paved with good intentions leads.
Additionally, Respondent registered the <tdbank-claims.com> domain name knowing that Complainant had trademark rights in the TD BANK mark. Respondent’s prior knowledge of Complainant’s trademark is evident, inter alia, from the admissions made in the Response. Respondent’s knowledge of Complainant's trademark further indicates that Respondent registered and used the <tdbank-claims.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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 <tdbank-claims.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 23, 2017
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