The Toronto-Dominion Bank v. G Tegelberg
Claim Number: FA1709001751355
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is G Tegelberg (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is are <td-bank.nu>, <updatenowtd.net>, <updatenow-td.net>, <up-now-td.com>, and <up-now-td.org>, registered with Ascio Technologies, Inc. Danmark – branch of Ascio technologies, Inc. USA ; Mijn InternetOplossing B.V.; Realtime Register B.V..
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.
Flip Jan Claude Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2017; the Forum received payment on September 29, 2017.
On October 3, 2017, Ascio Technologies, Inc. Danmark – branch of Ascio technologies, Inc. USA; Mijn InternetOplossing B.V.; Realtime Register B.V. confirmed by e-mail to the Forum that the <td-bank.nu>, <updatenowtd.net>, <updatenow-td.net>, <up-now-td.com>, and <up-now-td.org> domain names are registered with Ascio Technologies, Inc. Danmark – branch of Ascio technologies, Inc. USA; Mijn InternetOplossing B.V.; Realtime Register B.V. and that Respondent is the current registrant of the names. Ascio Technologies, Inc. Danmark – branch of Ascio technologies, Inc. USA; Mijn InternetOplossing B.V.; Realtime Register B.V. has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – branch of Ascio technologies, Inc. USA; Mijn InternetOplossing B.V.; Realtime Register B.V. 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 October 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@td-bank.nu, postmaster@updatenowtd.net, postmaster@updatenow-td.net, postmaster@up-now-td.com, postmaster@up-now-td.org. Also on October 6, 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 November 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jan Claude Petillion 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel is convinced that all of the disputed domain names are effectively controlled by the same person. The WHOIS records for each of the disputed domain names indicate that the domain names are registered using the same email address (g.tegelberg@gmail.com) and under the same registrant name (G Tegelberg). For one disputed domain name, the WHOIS records indicate that the registrant is "Gerard Tegelberg", for which "G" is presumably the abbreviation. See Compl., at Attached Annex E. As a result, the Panel finds that the disputed domain names are commonly owned/controlled by a single Respondent and that the proceeding is therefore compliant with the Rules.
Preliminary Issue: Required Language of Complaint
The Registration Agreement is written in Dutch for two of the disputed domain names. The language of the Registration Agreements related to the other disputed domain names is English. Paragraph 11(a) of the Rules reads: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
The language of the Registration Agreements for the majority of the disputed domain names is English. Additionally, Respondent failed to reply to any communications by both the Forum and the Complainant, which indicates that Respondent deliberately opted not to take part in the proceedings and chose not to use its right to defend itself. In such circumstances, the Panel finds that it would be a disadvantage for Complainant to be forced to translate the Complaint. As Respondent had ample chance to defend itself, but elected not to do so, the Panel, having regard to the circumstances of these proceedings, accepts the Complaint as filed in English and has issued its decision in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, the Toronto-Dominion Bank, is a financial institution which owns and operates the second largest bank in Canada and the sixth largest bank in North America. In connection with this business, Complainant submits to use the TD BANK and TD mark, which it has registered with several trademark offices in different countries, including with USPTO and CIPO, to promote its goods and services. See Compl., at Attached Annex A. Complainant considers the disputed domain names <td-bank.nu>, <updatenowtd.net>, <updatenow-td.net>, <up-now-td.com>, and <up-now-td.org> to be identical or confusingly similar to Complainant's TD BANK and TD marks.
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain names. Complainant submits that Respondent is not commonly known by any of the disputed domain names; instead the WHOIS records identify Respondent as "G. Tegelberg" or "Gerard Tegelberg". Complainant further contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain names resolve to websites which are not actively being used. See Compl., at Attached Annex F.
Finally, Complainant maintains that Respondent registered and uses the disputed domain names <td-bank.nu>, <updatenowtd.net>, <updatenow-td.net>, <up-now-td.com>, and <up-now-td.org> in bad faith. According to Complainant, Respondent clearly had Complainant's trademarks in mind when registering the disputed domain names, as it could not have been unaware of Complainant's worldwide reputation. Respondent’s disputed domain names confuse users as to its source, sponsorship, affiliation, or endorsement for it by including the TD and TD BANK marks in the domain name. Complainant further argues that, although the disputed domain names do not revolve to any content, there is no plausible future active use of the domain names by Respondent that would be legitimate and not infringing the Complainant’s mark. Finally, Complainant contends that, by not answering to its cease and desist letter (after having received multiple notices) Respondent has demonstrated an additional indication of bad faith. See Compl., at Attached Annex I.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Forum received an email from a third party individual, claiming that he received a letter by the Forum regarding the Complaint. This third party contented that Respondent had made several online orders using his address and bank account information, and that he already reported the identity fraud to the local police.
Complainant, the Toronto-Dominion Bank, is a financial institution which owns and operates the second largest bank in Canada and the sixth largest bank in North America. In connection with its financial, banking and related business, Complainant uses and has rights in the TD BANK and TD trademarks based on registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3788055, registered May 11, 2010 and Reg. No. 3041792, registered January 10, 2006) and with the Canadian Intellectual Property Office ("CIPO") (e.g., Reg. No. 1028244, registered August 7, 2001 and Reg. No. 1216783, registered July 26, 2005). Complainant also claims to have registered the mark with other governmental agencies around the world.
Respondent registered the disputed domain names <td-bank.nu>, <updatenowtd.net>, <updatenow-td.net>, <up-now-td.com>, and <up-now-td.org> on May 31, 2017, February 19, 2017, February 19, 2017, March 16, 2017, and March 16, 2017, respectively. See Compl., at Attached Annex E.
Respondent's domain names do not resolve to any content and are not actively used by Respondent.
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. Further to paragraph 14(b) of the UDRP Rules however, panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent. See WIPO Overview 3.0, Section 4.3.
Complainant shows to have rights in the TD BANK and TD marks through registration of the mark with the USPTO (e.g., Reg. No. 3788055, registered May 11, 2010 and Reg. No. 3041792, registered January 10, 2006) and with CIPO (e.g., Reg. No. 1028244, registered August 7, 2001 and Reg. No. 1216783, registered July 26, 2005). See Compl., at Attached Annex A. 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).
Complainant claims that Respondent's domain names <td-bank.nu>, <updatenowtd.net>, <updatenow-td.net>, <up-now-td.com>, and <up-now-td.org> are identical or confusingly similar to Complainant's TD BANK and TD marks. The top-level domain is usually considered to be irrelevant in assessing identity or confusing similarity (See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Guo MengNi / GuoMengNi Guo / Guo GuoMengNi / 郭孟妮, FA 1747411 (Forum October 3, 2017) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) As a result, the addition of the “.net,” “.com,” and “.org” gTLDs and “.nu” ccTLD in the disputed domain names can be disregarded for the finding of identity or confusing similarity.
Respondent’s disputed domain names include Complainant's TD BANK and TD marks in their entirety and only add the generic or descriptive terms “update", “up”, and “now”, and only places hyphens in the <td-bank.nu>, <updatenow-td.net>, <up-now-td.com>, and <up-now-td.org> disputed domain names. In view of the above, this Panel finds that Respondent’s domain names are confusingly similar to Complainant's TD BANK and TD mark for the purposes of Policy ¶4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 August 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 September 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.").
First, Complainant argues Respondent is not commonly known by <td-bank.nu>, <updatenowtd.net>, <updatenow-td.net>, <up-now-td.com>, and <up-now-td.org> nor has Complainant authorized Respondent to use the TD BANK and TD marks in any way. Where there is no evidence in the record indicating a respondent is commonly known by a disputed domain name, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum February 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Buff Exteriors, LLC v. gregg buffington, FA 1691787 (Forum October 17, 2016) (holding that, when a respondent fails to submit additional evidence, the relevant WHOIS record may determine the name by which respondent is commonly known). WHOIS information associated with the disputed domain names identifies Respondent as, “G. Tegelberg" or "Gerard Tegelberg", which does not appear to resemble the disputed domain names. See Compl., at Attached Annex E. There is no other evidence to suggest that Respondent is known by any of the disputed domain names. The Panel therefore finds that Respondent is not commonly known by the disputed domain names. Respondent makes no contentions with regards to Policy ¶ 4(a)(ii). In view of the foregoing, the Panel considers that Complainant has made out the second of the three elements that it must establish.
Complainant further argues that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain names resolve to inactive websites which have either have no content or display placeholder messages. Previous panels have held that inactively using a domain name 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 September 2, 2004) (“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).”); see also Coachella Music Festival, LLC v. Galina Malashkevich, FA 1725853 (Forum May 8, 2017) (concluding that a domain name resolving to an inactive webpage with the word "Hi" typed in the upper left corner of the page does not constitute a bona fide offering of goods or services). In the present case, the websites connected to the disputed domain names only display messages stating: "This site can’t be reached,” “Apache is functioning normally” and “This account has been suspended". See Compl., at Attached Annex F. As a result, Respondent fails to make use of or show demonstrable preparations to use the disputed domain names. See Kohler Co. v xi long chen, FA 1737910 (Forum August 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!”).
As there is no content on any of these pages to indicate Respondent will make active use of the disputed domain names, the Panel concludes that Respondent has not used the domain names within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant asserts that Respondent had knowledge of Complainant’s rights in its marks at the time of registration and thus registered and used the domain names in bad faith. Complainant also contends that, in light of the similarity between the disputed domain names and the TD BANK and TD marks, Respondent could not have registered the <td-bank.nu>, <updatenowtd.net>, <updatenow-td.net>, <up-now-td.com>, and <up-now-td.org> domain names without actual knowledge of Complainant's rights in the mark. The Panel finds, on the balance of probabilities and taking into account the combination of domain names, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum April 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels may find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
In view of Complainant's regulated sector, fraudulent use of the disputed domain names poses a real threat to Complainant and its clients. By registering several domain names related to Complainant's TD BANK and TD marks and Complainant's <td.com> and <tdbank.com> domains, Respondent may likely confuse Internet users seeking to use Complainant's banking services in order to attract them for commercial gain. See Compl., at Attached Annexes. A and F. Although Respondent is not actively using the disputed domain names, such a use may constitute bad faith as it is difficult to imagine any plausible legitimate use by Respondent. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum December 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Such a conclusion is further supported by the fact that the hosting provider of several of the disputed domain names had previously responded to the communication by the Forum stating that he had already suspended the use of the domains because of a potential phishing threat. Additionally, Respondent has also been accused of possible identity theft. This further indicates that the disputed domain names were not intended for any legitimate use. The registration of five domain names containing Complainant’s trademarks shows a pattern of domain name registrations which is likely to disrupt Complainant’s business. For these reasons, the Panel concludes that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Finally, Respondent failed to respond to Complainant’s cease and desist letters. Failure to respond to a complainant’s cease-and-desist letters prior to UDRP arbitration can demonstrate bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum December 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). In this case, Complainant sent Respondent a cease and desist letter on June 16, 2017, followed by two notices, the first on June 26, 2017 and the second on final notice on July 6, 2017. See Compl., at Attached Annex. I. There is no indication in the record that Respondent replied to any of the three notices.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <td-bank.nu>, <updatenowtd.net>, <updatenow-td.net>, <up-now-td.com>, and <up-now-td.org> domain names be TRANSFERRED from Respondent to Complainant.
Flip Jan Claude Petillion, Panelist
Dated: November 14, 2017
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