The Toronto-Dominion Bank v. Peter Mossels
Claim Number: FA1709001748375
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Peter Mossels (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcanadatrustltd.com>, registered with NameSilo, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2017; the Forum received payment on September 11, 2017.
On September 11, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <tdcanadatrustltd.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 September 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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@tdcanadatrustltd.com. Also on September 15, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant uses the TD and CANADA TRUST marks in association with financial, banking, and other related businesses, goods, and services. Complainant owns multiple versions of the TD mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,649,009, registered June 25, 1991). Complainant has also registered the CANADA TRUST mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA644911, registered July 26, 2005). Id. Respondent’s <tdcanadatrustltd.com> is identical or confusingly similar to the marks because it combines both marks, adds the company designation “ltd,” and attaches the “.com” generic top-level domain (“gTLD”).
Respondent has no right or legitimate interest in <tdcanadatrustltd.com>. Respondent is not commonly known by <tdcanadatrustltd.com>. Respondent’s <tdcanadatrustltd.com> makes no bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent’s <tdcanadatrustltd.com> redirects users to a blank index page and lacks content.
Respondent registered and used <tdcanadatrustltd.com> in bad faith. Respondent’s inactive use of <tdcanadatrustltd.com> and prior use of a privacy service to hide its identity further demonstrates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <tdcanadatrustltd.com> domain name.
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 uses the TD and CANADA TRUST marks in association with financial, banking, and other related businesses, goods, and services. Complainant owns multiple versions of the TD mark with the USPTO (e.g., Reg. No. 1,649,009, registered June 25, 1991). Complainant has also registered the CANADA TRUST mark with the CIPO (e.g., Reg. No. TMA644911, registered July 26, 2005). The consensus among panels is that registrations with multiple trademark offices demonstrates rights to the mark. See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(a)(i) with regard to rights in the marks.
Next, Complainant contends <tdcanadatrustltd.com> is identical or confusingly similar to the TD and CANADA TRUST marks. Complainant argues combining of the marks in their entirety exacerbates the confusion. Complainant also argues that merely adding the company term “ltd.” and the “.com” gTLD is insufficient to create a distinction. See Textron Innovations Inc. v. Sheng Liang / Sarawina, FA 1622906 (Forum July 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) where Respondent’s <greenleetextron.com> domain name merely combined Complainant’s TEXTRON and GREENLEE marks and added the “.com” generic top-level domain suffix.); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Here, Respondent’s <tdcanadatrustltd.com> combined the TD and CANADA TRUSTS mark by eliminating a space and attached the company designation “ltd.” Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has proved this element.
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 Respondent is not commonly known by <tdcanadatrustltd.com>. Complainant argues Respondent is not sponsored by or affiliated with Complainant in any way. Complainant also argues Respondent used privacy services in order to conceal his identity. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). WHOIS information identifies Respondent as “Peter Mossels.” Initial WHOIS filing notes Registrant Org. as “PrivacyGuardians.org,” which supports Complainant’s contention that Respondent employed privacy services to hide his identity. The Panel finds Complainant has satisfied Policy ¶ 4(c)(ii).
Next, Complainant asserts Respondent has made no bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant argues since Respondent has failed to make any demonstrable use of <tdcanadatrustltd.com>, Respondent could not have made a bona fide offering of goods or services nor legitimate noncommercial or fair use. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). In this case, <tdcanadatrustltd.com> resolves into a blank page lacking any content. There appears to be no apparent content or demonstrable preparation for use in the disputed domain name’s current state. Therefore, the Panel finds Complainant has satisfied Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Next, Complainant contends Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus among panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). The Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding. The Panel finds that Respondent has registered and used <tdcanadatrustltd.com> in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the TD mark and the CANADA TRUST mark. Complainant argues that Respondent’s use of Complainant’s multiple marks indicates that Respondent is familiar with Complainant’s business and demonstrates that Respondent had actual knowledge of Complainant's marks and rights. The Panel agrees and finds Respondent had actual knowledge of Complainant's marks and rights and therefore determines that Respondent registered <tdcanadatrustltd.com> 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <tdcanadatrustltd.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 11, 2017
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