The Toronto-Dominion Bank v. Chad Moston
Claim Number: FA1210001465139
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Chad Moston (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onlinetdbank.com>, registered with Dynadot, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2012; the National Arbitration Forum received payment on October 1, 2012.
On October 1, 2012, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <onlinetdbank.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 October 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@onlinetdbank.com. Also on October 2, 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 October 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is the owner of several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the TD BANK mark (Reg. No. 3,788,055 registered May 11, 2010). Complainant also owns numerous trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for the TD BANK mark (Reg. No. TMA549396 registered Aug. 7, 2001).
Complainant operates in the banking and financial services industry.
Respondent’s <onlinetdbank.com> domain name is confusingly similar to Complainant’s TD BANK mark.
Respondent has not been commonly known by the disputed domain name, and the WHOIS information does not offer support for such an assertion. Respondent has not been sponsored by or affiliated with Complainant in any way, and Respondent has not been given permission to use Complainant’s mark in the disputed domain name.
Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent is using the disputed domain name to redirect Internet users to websites featuring advertising links to third-party websites, some of which directly compete with Complainant’s business, while presumably profiting from such use. Therefore, Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) as Respondent is not allowed to use Complainant’s mark for such commercial gain.
Respondent knew or should have known of Complainant’s existence at the time Respondent registered the disputed domain name, and such knowledge is evidence of bad faith.
Respondent has demonstrated a pattern of bad faith registration in past domain name registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of several trademark registrations with the USPTO for the TD BANK mark. Complainant also owns trademark registrations with the CIPO for such mark.
Respondent registered the at-issue domain name subsequent to the Complainant acquiring rights in the TD BANK mark.
Complainant has not authorized Respondent to use its trademark.
Respondent is using the at-issue domain name to redirect Internet users to websites featuring advertising links to third-party websites, some of which directly compete with Complainant’s business, while presumably profiting from such use.
Respondent has demonstrated a pattern of bad faith registration in past domain name registrations.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant is the owner of several trademark registrations with the USPTO for the TD BANK mark and also owns trademark registrations for such mark with the CIPO. Therefore, Complainant has established its rights in the TD BANK mark under Policy ¶ 4(a)(i). 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).
The <onlinetdbank.com> domain name contains Complainant’s entire TD BANK mark, absent the space, while adding the generic term “online,” and appending the top-level domain “.com.” Notwithstanding these inconsistencies between Complainant’s mark and the at-issue domain name, the domain name is nevertheless confusingly similar to Complainant’s TB BANK trademark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); 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)).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the at-issue domain name’s registrant as “Chad Moston.” Additionally, there is no evidence that tends to prove that notwithstanding the aforementioned WHOIS record that Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <onlinetdbank.com> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the at-issue domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s <onlinetdbank.com> website shows link headings under such names as, “TD Bank Login,” “Bank Online Banking,” “Credit Bank,” and “Savings Bank Life Insurance.” These circumstances indicate that Respondent is neither using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As mentioned above, Respondent is using the at-issue domain name to redirect Internet users to websites featuring advertising links to third-party website and presumably profiting from such use. These circumstances suggest that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and thereby demonstrate bad faith registration and use under Policy ¶ 4(iii). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent is a serial cybersquatter and has had multiple domain names transferred to mark holders as a result of unfavorable UDRP decisions. Since 2008 Respondent has lost no less than four UDRP cases filed by companies like Johnson & Johnson, Experian, LeapFrog, and Sotheby’s. See Johnson & Johnson v. Chad Moston, FA 1361418 (NAF Dec 30, 2010); Experian Information Solutions, Inc. v. Chad Moston, FA1004001320517 (NAF June 3, 2010); LeapFrog Enterprises, Inc. v. Chad Moston, FA0905001261649 (NAF June 17, 2009); SPTC, Inc. and Sotheby's v. Speedplexer c/o Chad Moston, FA0808001221152, (NAF Sept 30, 2008). Respondent’s pattern of egregious conduct further establishes bad faith registration and use. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”)
Finally, Complainant’s fame, the fact that Respondent registered a domain name containing the entirety of Complainant’s unique trademark, as well as the manner in which Respondent uses the domain name, urges a finding that Respondent registered the at-issue domain name with prior knowledge of Complainant rights in the TD BANK mark. Registration of a domain name with knowledge that the domain name is confusingly similar to a trademark of another in which Respondent has not rights or interests, additionally establishes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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"). Indeed, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the at-issue domain name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (finding bad faith where no use of the domain name could be legitimate).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onlinetdbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 31, 2012
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