The Toronto-Dominion Bank v. Domain eRegistration and Domain Searchlist
Claim Number: FA1209001465004
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Domain eRegistration (“Respondent”), Afghanistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <itd-online.com> and <tdwestonline.com>, registered with OnlineNIC, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2012; the National Arbitration Forum received payment on September 28, 2012.
On October 9, 2012, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <itd-online.com> and <tdwestonline.com> domain names are registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 October 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2012 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@itd-online.com and postmaster@tdwestonline.com. Also on October 16, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant Allegations
B. Respondent
Respondent failed to submit a Response in this proceeding.
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(e), 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 (Nat. Arb. 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.”).
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.” Complainant contends that the present case should be allowed to proceed for the following reasons:
1. Both disputed domain names were involved in a phishing scam to trick TD Bank Customers into entering personal information within a website that mimicked Complainant’s official website.
2. Both disputed domain names were registered at the same Registrar: OnlineNic, Inc.
3. Both domain names were originally under the same privacy shield: Domain ID Shield Service.
4. Upon removal of the privacy shield Complainant discovered that both disputed domain names listed fictitious address information with a few “odd commonalities:”
a. Both domain names list international dialing prefix for the phone and fax numbers as “+44” which is the code for the United Kingdom, and both domain names use the country-code as AF, for Afghanistan.
b. The postal codes identified for the disputed domain names are 4418 and 4419, neither of which is a correct code for Afghanistan.
5. The disputed domain names are being used in a “coordinated activity” for phishing attacks. Both domain names’ DNS entries were updated in May of 2012 to the exact same set of hosting services, ns1.mallford.com and ns2.mallford.com.
Based on the foregoing allegations, the Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceeding.
Complainant alleges that it holds registrations with the USPTO, among other entities, for the TD mark (e.g., Reg. No. 3,041,792 registered January 10, 2006). The Panel finds that these registrations confer rights in the TD mark to Complainant pursuant to Policy ¶ 4(a)(i), despite the fact that Respondent may operate in a country other than those in which Complainant has registered the TD mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <itd-online.com> and <tdwestonline.com> domain names are confusingly similar to Complainant’s TD mark under Policy ¶ 4(a)(i). Complainant urges that the addition of the single letter ‘i’, generic term ‘online’ and geographical direction ‘west’ does not negate the confusing similarity between the disputed domain names and Complainant’s TD mark. However, Complaint has not shown, or even alleged, why the terms “i”, “online” and “west” are descriptive of its services under the mark. As Complaint’s mark is a short two letter mark, the addition of these three terms creates substantial distinctions from the registered mark. The Panel therefore concludes that Respondent’s <itd-online.com> and <tdwestonline.com> domain names are not confusingly similar to Complainants’ mark under Policy ¶ 4(a)(i).
As the Panel has determined that Complaint has not satisfied Policy ¶ 4(a)(i), it does not need to analyze the second and third elements of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered, without prejudice, that the <itd-online.com> and <tdwestonline.com> domain names REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: December 4, 2012
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