The Toronto-Dominion Bank v. prudhvi raj
Claim Number: FA1801001769721
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is prudhvi raj (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdeasyweb.org>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2018; the Forum received payment on January 30, 2018.
On January 31, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdeasyweb.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 January 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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@tdeasyweb.org. Also on January 31, 2018, 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 February 22, 2018, 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. 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 contends as follows:
Complainant, The Toronto-Dominion Bank, uses the TD, TD BANK and EASYWEB marks to provide and market products and services.
Complainant has rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. TD—Reg. No. 1,649,009; TD BANK—Reg. No. 3,788,055, registered May 11, 2010) and the Canadian Intellectual Property Office (“CIPO”) ( EASYWEB—Reg. No. TMA493469, registered April 24, 1998.)
Respondent’s <tdeasyweb.org> domain name is identical or confusingly similar as it contains a combination of Complainant’s marks and appends the “.org” generic top level domain (“gTLD”) to form a domain name.
Respondent does not have rights or legitimate interests in the <tdeasyweb.org> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not granted respondent permission or license to use the TD mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is attempting to pass itself off as Complainant to take advantage of the fame and goodwill that Complainant has built. In addition, Respondent’s <tdeasyweb.org> domain name currently resolves to an inactive website.
Respondent has registered and used the <tdeasyweb.org> domain name in bad faith. Respondent has engaged in a pattern of cybersquatting. In addition, Respondent is attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. Next, Respondent is inactively holding the at-issue domain name. Respondent has failed to respond to cease-and-desist letters. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TD, TD BANK and EASYWEB marks.
B. Respondent
Although Respondent failed to submit a formal Response in this proceeding in its email communications to the dispute resolution provider Respondent responded to the Complainant by announcing: “I want to transfer my domain to complainant.”
Complainant has trademark rights in the TD and EASYWEB marks.
Respondent registered the at-issue domain name after Complainant acquired rights in TD and EASYWEB.
Respondent agrees to relinquish the at-issue 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.”).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii, when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case there is a clear indication that Respondent agrees to transfer its <tdeasyweb.org> domain name and does not oppose the Complaint. Respondent, in its email to the operative dispute resolution provider The Forum, states in no uncertain terms that it desires that its at-issue domain name be transferred to Complainant. The Panel, noting the parties’ agreement as to the disposition of the <tdeasyweb.org> domain name, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining its requested relief, even where Respondent agrees to such relief, Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Here, Complainant’s ownership of USPTO trademark registrations for the TD trademark and the EASYWEB trademark, as well as its ownership of CIPO registrations for such marks, shows Complainant’s rights in each of these trademarks for the purposes of Policy ¶ 4(a)(i). 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).
Additionally, the at-issue domain name contains Complainant’s entire TD trademark followed by Complainant’s entire EASYWEB trademark. The top-level domain name “.org” is appended thereto. The slight differences between the at-issue <tdeasyweb.org> domain name and each of Complainant’s two relevant trademarks are insufficient to distinguish the trademarks from Respondent’s domain name for the purposes of the Policy. See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s marks does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
In light of the foregoing, Respondent’s consent to transfer the at-issue domain name permits the Panel to order that the domain name be transferred to Complainant without further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy.
Having concluded that Respondent consents to Complainant’s request that the at-issue domain name be transferred to Complainant, the Panel GRANTS Complainant’s request.
Accordingly, it is Ordered that the <tdeasyweb.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 22, 2018
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