The Toronto-Dominion Bank v. Above.com Domain Privacy
Claim Number: FA1401001540025
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbbank.com>, <tdfinance.com>, <tddank.com>, <tddbank.com>, <tdbankingonline.com>, <tdbanc.com>, <comtdbank.com>, <tdbanknh.com>, and <tdnbank.com>, registered with Above.Com Pty 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2014; the National Arbitration Forum received payment on January 20, 2014.
On January 28, 2014, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <tdbbank.com>, <tdfinance.com>, <tddank.com>, <tddbank.com>, <tdbankingonline.com>, <tdbanc.com>, <comtdbank.com>, <tdbanknh.com>, and <tdnbank.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty 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 January 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2014 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@tdbbank.com, postmaster@tdfinance.com, postmaster@tddank.com, postmaster@tddbank.com, postmaster@tdbankingonline.com, postmaster@tdbanc.com, postmaster@comtdbank.com, postmaster@tdbanknh.com, and postmaster@tdnbank.com. Also on January 29, 2014, 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 February 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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
Complainant asserts trademark rights in TD and TD BANK and alleges that the disputed domain names are confusingly similar to one, other or both of those trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a large Canadian bank;
2. Complainant owns a Canadian trademark registration for TD BANK (Reg. No. 549396, registered August 7, 2001); a United States Patent and Trademark Office trademark registration for the same mark, TD BANK (Reg. No. 3,788,055, registered May 11, 2010) and for the trademark, TD (Reg. No. 1,649,009, registered June 25, 1991);
3. The disputed domain names were registered between April 2008 and April 2010;
4. The domain names <tddbank.com>, <tdnbank.com>, <tdbanknh.com>, <tdfinance.com>, <tdbankingonline.com>, and <tdbanc.com> all resolve to a website featuring links to third-party websites, some of which offer services which compete with Complainant’s business.
5. The domain names <comtdbank.com>, <tdbbank.com>, and <tddank.com> resolve to a website offering the opportunity to “Get a Credit Score from all 3 Credit Bureaus.”
6. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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.”).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”). Panel is satisfied that Complainant has trademark rights in TD and TD BANK.
For the purposes of comparing the disputed domain names with those trademarks, the gTLD, “.com”, can be ignored since it has no source distinguishing value (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The trademarks are thus to be compared with the terms:
tdbbank
tdfinance
tddank
tddbank
tdbankingonline
tdbanc
comtdbank
tdbanknh
tdnbank
Complainant contends that these terms either purposefully misspell the trademark or add generic words or phrases to the trademarks or obvious misspellings of the trademarks.
Panel finds that the misspellings of the trademark TD BANK are obvious. Moreover, additional elements such as “com”, “finance”, “banking online” do nothing to distinguish the domain names from the trademarks. The only term requiring further comment is tdbanknh. Complainant argues that it is the trademark TD BANK plus the geographical indicator for “New Hampshire”. Panel finds that if the domain name is perceived that way, then it is confusingly similar to the trademark but even if no connotation attaches to the letters, “nh”, they still leave the trademark recognizable and the term continues to be confusingly similar to the trademark. Panel is satisfied that the disputed domain names are all confusingly similar to one or other of the trademarks (see, for example, Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) finding <vallpak.com> confusingly similar to the VALPAK mark; Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) finding <belken.com> confusingly similar to the BELKIN mark; Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) finding <amextravel.com> confusingly similar to AMEX; Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) finding <westfieldshopping.com> confusingly similar to WESTFIELD; 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) finding <littmanncardiologyiii.info> confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks; Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”)).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of each of the disputed domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademarks and Complainant denies any such authorization.
There is no evidence that any of the disputed domain names has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.
Complainant provides evidence that the <tddbank.com>, <tdnbank.com>, <tdbanknh.com>, <tdfinance.com>, <tdbankingonline.com>, and <tdbanc.com> domain names redirect Internet users to a website with links to third-parties providing services which compete with Complainant’s business. Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use (see, for example, United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services; Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
In addition, Complainant provides evidence that the <comtdbank.com>, <tdbbank.com>, and <tddank.com> domain names redirect Internet users to a website offering them the opportunity to “Get a Credit Score from all 3 Credit Bureaus.” Complainant alleges that Respondent is attempting to “phish” personal information from Complainant’s customers by this means. Panel finds that claim more likely than not to be true (see Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Panel finds that Complainant has established a prima facie case in respect of all of the domain names and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, those prima facie cases are not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in respect of each of the disputed domain names.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they were used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain names to be confusingly similar to the trademarks. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s websites by creating a likelihood of confusion with the trademarks.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdbbank.com>, <tdfinance.com>, <tddank.com>, <tddbank.com>, <tdbankingonline.com>, <tdbanc.com>, <comtdbank.com>, <tdbanknh.com>, and <tdnbank.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 10, 2014
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