The Toronto-Dominion Bank v. WHOIS AGENT / DOMAIN WHOIS PROTECTION SERVICE
Claim Number: FA1209001465013
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is WHOIS AGENT / DOMAIN WHOIS PROTECTION SERVICE (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdcanadatrust-online.com> and <tdcanadatrust-online.net>, registered with Hichina Zhicheng Technology Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2012; the National Arbitration Forum received payment on October 15, 2012. The Complaint was received in Chinese and English.
On October 15, 2012, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <tdcanadatrust-online.com> and <tdcanadatrust-online.net> domain names are registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the names. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd. 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 22, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 13, 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@tdcanadatrust-online.com and postmaster@tdcanadatrust-online.net. Also on October 22, 2012, the Chinese language 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 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Language of the Proceedings
The Registration Agreement is written in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, the remainder of the proceedings may be conducted in English.
A. Complainant
i. CIPO
1. TD BANK (Reg. No. TMA549396 registered Aug. 7, 2001);
2. TD & Design (Reg. No. TMA644911 registered July 26, 2005); and
3. CANADA TRUST (Reg. No. TMA409300 registered Mar. 12, 1993).
ii. USPTO
1. TD BANK (Reg. No. 3,788,055 registered May 11, 2010) and
2. TD (Reg. No. 1,649,009 registered June 25, 1991).
i. Respondent is not commonly known by the disputed domain names based upon the WHOIS information and the fact that Respondent is not affiliated with Complainant and has not been given permission to use Complainant’s marks.
ii. Respondent has failed to make an active use of the disputed domain names since registering the domain names on November 24, 2011, which indicates Respondent’s lack of rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
i. Respondent has failed to make an active use of the disputed domain names since registering them on November 24, 2011 which is indicative of Respondent’s bad faith activities.
ii. Respondent had knowledge of Complainant’s marks and its rights therein due to Complainant’s marks being used openly since 1969, and Respondent’s registration of domain names that contain two of Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, The Toronto – Dominion Bank, is a large bank in Canada and in North America. Complainant has clients worldwide, providing its services through more than 1,100 branches.
Complainant is the owner of hundreds of trademarks, including those with the Canadian Intellectual Property Office (“CIPO”) and United States Patent and Trademark Office ("USPTO") as follows:
CIPO
TD BANK (Reg. No. TMA549396 registered Aug. 7, 2001);
TD & Design (Reg. No. TMA644911 registered July 26, 2005); and
CANADA TRUST (Reg. No. TMA409300 registered Mar. 12, 1993).
USPTO
TD BANK (Reg. No. 3,788,055 registered May 11, 2010) and
TD (Reg. No. 1,649,009 registered June 25, 1991).
Respondent, WHOIS AGENT / DOMAIN WHOIS PROTECTION SERVICE, has failed to make an active use of the disputed domain names since registering the domain names on November 24, 2011.
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.”).
Complainant’s trademark registrations with the CIPO and USPTO are sufficient for Complainant to establish rights in the marks under Policy ¶ 4(a)(i), regardless of Respondent’s purported location in China. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s tdcanadatrust-online.com> and <tdcanadatrust-online.net> domain names are confusingly similar to Complainant’s trademarks, as the addition of the gTLD “.com” or “.net” is not relevant, and the domain names feature the TD and CANADA TRUST marks with a hyphen and the descriptive term “online.” The combination of a complainant’s marks within a domain name can render the domain name confusingly similar to those marks. See McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding that the <glencoemcgrawhill.com> domain name is confusingly similar to the complainant’s GLENCOE and MCGRAW-HILL marks under Policy ¶ 4(a)(i)). The addition of a generic and/or descriptive term, specifically the term “online,” to a complainant’s mark(s) does not remove the domain name from the realm of confusing similarity. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). The removal of spaces between the words of a mark and the addition of gTLD’s and hyphens do not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s tdcanadatrust-online.com> and <tdcanadatrust-online.net> domain names are confusingly similar to Complainant’s TD and CANADA TRUST marks under Policy ¶ 4(a)(i).
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 (Nat. Arb. 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).
Complainant contends that Respondent has no rights or legitimate interests in the <tdcanadatrust-online.com> and <tdcanadatrust-online.net> domain names. Respondent is not commonly known by the disputed domain names based upon the WHOIS information. Respondent is not affiliated with Complainant and has not been given permission to use Complainant’s marks. The referenced WHOIS information indicates that both of the disputed domain names were registered by “WHOIS AGENT / DOMAIN WHOIS PROTECTION SERVICE.” Based upon this, and all other evidence within the record, the Panel finds that Respondent is not commonly known by the <tdcanadatrust-online.com> and <tdcanadatrust-online.net> domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent has failed to make an active use of the disputed domain names since registering the domain names on November 24, 2011. The Panel concludes that Respondent’s failure to make an active use of the disputed domain names is evidence that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
In making its bad faith determination in the present proceedings, the Panel evaluates Respondent’s bad faith, or lack thereof, under a totality of the circumstances level of scrutiny. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Respondent has failed to make an active use of the disputed domain names since registering them on November 24, 2011 which is indicative of bad faith. Non-use of a domain name can be cause for a bad faith finding under Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). The Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent’s knowledge of Complainant’s marks prior to registering the disputed domain names indicates that Respondent registered the disputed domain names in bad faith. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights; therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. 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 having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcanadatrust-online.com> and <tdcanadatrust-online.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 5, 2012
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