The Toronto-Dominion Bank v. Merelyn Pedrero H / Fort Lauderdale
Claim Number: FA1811001817219
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Merelyn Pedrero H / Fort Lauderdale (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <td-trustcanada.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2018; the Forum received payment on November 20, 2018.
On November 20, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <td-trustcanada.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 November 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@td-trustcanada.com. Also, on November 26, 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 December 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the TD service mark and the CANADA TRUST trademark to market its products and services.
Complainant is the second largest bank in Canada and the sixth largest bank in North America.
Complainant’s marks are famous among countless customers around the world.
Complainant holds registrations for the TD and CANADA TRUST marks, which are on file with the United States Patent and Trademark Office (“USPTO”) as, for TD, Registry No. 3,041,792, registered January 10, 2006, renewed March 9, 2016, and, for CANADA TRUST, with the Canadian Intellectual Property Office (“CIPO”) as Registry No. TMA447666, registered September 15, 1995, renewed September 15, 2010.
Respondent registered the domain name <td-trustcanada.com> on or about May 31, 2018.
The domain name is both substantively identical and confusingly similar to Complainant’s TD and CANADA TRUST marks.
Respondent has not been commonly known by the domain name.
Complainant has not granted Respondent a license or other permission to use the TD and CANADA TRUST marks for any purpose.
Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent fails to make any active use of the domain name.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has employed a privacy service to hide its identity.
Respondent has failed to respond to Complainant’s cease-and-desist letters.
Respondent registered the domain name with knowledge of Complainant’s rights in the TD and CANADA TRUST marks.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name was registered and is being used by respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in both the TD service mark and the CANADA TRUST trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registrations of those marks with national trademark authorities, the USPTO and the CIPO, respectively. See, for example, State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (confirming a UDRP complainant’s rights in a mark where it had registered that mark with the USPTO and the CIPO).
This is true without regard to whether Complainant’s rights in its CANADA TRUST mark arise from registration of the mark in a jurisdiction (here Canada) other than that in which Respondent resides or does business (here the United States). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <td-trustcanada.com> domain name is confusingly similar to each of Complainant’s TD and CANADA TRUST marks, and, a fortiori, the combination of the two. The domain name consists of the two marks, separated by a hyphen, but with the CANADA TRUST terms inverted, plus the addition of a generic Top Level Domain (“gTLD”) “.com.” These alterations of the marks, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (finding that employing a combination of a UDRP complainant’s marks in a domain name did not allow a respondent to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
See also Google LLC v. Hai Min Xu / Xu Hai Min / haimin xu, FA 1779597, (Forum May 3, 2018) (finding the <opensourcegoogle.com> domain name to be confusingly similar to the GOOGLE OPEN SOURCE mark, the substance of the domain name consisting merely of the mark with its terms transposed).
Further see Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of an analysis made under ¶ 4(a)(i) of the Policy).
Under Policy 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <td-trustcanada.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <td-trustcanada.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the TD or CANADA TRUST marks for any purpose. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Merelyn Pedrero H / Fort Lauderdale,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the <td-trustcanada.com> domain name in connection to a bona fide offering of goods or services or a legitimate non-commercial or fair use in that Respondent fails to make any active use of the domain name. In the circumstances here presented, Respondent’s unexplained failure to make any active use of the challenged domain name over an extended period following its registration compels the conclusion that Respondent’s use of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum August 7, 2012), the panel there finding that inactive use, or “passive holding,” of disputed domain names by a UDRP respondent “permits the inference that [respondent] lacks rights and legitimate interests in the domain names.”
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The record before us makes clear that Respondent has failed to make any active use of the <td-trustcanada.com> domain name (called “passive holding”) from the time of its registration to the date of filing of the Complaint in this proceeding. Failure to make active use of a domain name may, in appropriate circumstances, be taken evidence of bad faith in its registration and use under Policy ¶ 4(a)(iii). See, for example, Marsh Supermarkets Company, LLC v. Choi Sungyeon, FA1532854 (Forum February 25, 2014):
Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.
In the case before us, such circumstances exist. They include, as described in Complainant’s undenied allegations, that:
a. Complainant’s TD and CANADA TRUST marks are famous in the marketplace;
b. Respondent has provided no evidence of any intent to make a good faith use of the domain name;
c. Respondent has attempted to conceal its identity through the mechanism of a “privacy service” to facilitate the domain name’s registration; and
d. it is highly implausible that Respondent could actively employ the domain name without running afoul of the Policy.
On the point, see, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-003 (WIPO February 18, 2000). Accordingly, we so find.
In addition, we are persuaded by the evidence that Respondent registered the <td-trustcanada.com> domain name with knowledge of Complainant and its rights in the TD and CANADA TRUST marks. This stands as further proof of Respondent’s bad faith in registering it. See Google Inc. v. Ahmed Humood, FA1591796 (Forum January 7, 2015):
Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s … mark and Respondent’s use of one of the … domain names ….
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <td-trustcanada.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 3, 2019
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