The Toronto-Dominion Bank v. Robert Jackson / Designs
Claim Number: FA1702001716243
Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Robert Jackson / Designs (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdonlineservices.com>, registered with Tucows Domains Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2017; the Forum received payment on February 6, 2017.
On February 7, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <tdonlineservices.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. 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 February 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2017 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@tdonlineservices.com. Also on February 7, 2017, 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 March 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it provides banking and financial services throughout North America. It is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. The bank was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant has over 85,000 employees and over 22 million clients worldwide. In Canada, the retail bank operates as TD Canada Trust and serves more than 12 million customers at over 1,100 branches. In the United States, the company operates as TD Bank (the initials are used officially for all U.S. operations). TD Bank now serves more than 8 million customers with a network of more than 1,300 branches, primarily located in the eastern United States. TD also ranks among the world’s leading online financial services firms. Complainant is ranked number 71 on the 2013 Forbes Global 2000 listing. Brand Finance® Brand Directory, which ranks the world’s most valuable brands, ranks TD as number 89 on its 2013 Global 500 list. In conjunction with its business, Complainant uses the TD mark. Complainant registered the TD mark in the US and elsewhere around the world, with rights dating back to 1991.
According to Complainant, the disputed domain name is confusingly similar to its TD mark because the domain name incorporates the mark in its entirety, adding the generic, descriptive phrase “online services” and the “.com” generic top level domain (“gTLD”). Complainant notes that this phrase is representative of the online banking and financial services it provides through its websites.
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the TD mark in any regard. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. The disputed domain name resolves to a blank page with no demonstrated intent to make legitimate use of the website.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. The disputed domain name presumably intends to confuse internet users by resolving to an inactive website. Respondent had constructive and/or actual knowledge of Complainant and its rights to the TD mark when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark TD and uses it to market financial services around the world. The mark is well-known.
Complainant’s rights in its mark date back to 1991.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is not being used.
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(f), 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 (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 disputed domain name is confusingly similar to Complainant’s TD mark because the domain name incorporates the mark in its entirety, adding the generic, descriptive phrase “online services” and the “.com” gTLD. Panels have determined that confusing similarity exists where a disputed domain name contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain. The differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). Additionally, the phrase “online services” is representative of the online banking and financial services that Complainant provides through its websites. The addition of descriptive terms, particularly terms that pertain to a complainant’s business, do not adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015). The Panel concludes that the disputed domain name is confusingly similar to Complainant’s TD mark in the sense of the Policy.
Complainant has not authorized or licensed Respondent to use the TD mark in any regard. Respondent is not commonly known by the disputed domain name: WHOIS information associated with this case identifies Respondent as “Robert Jackson” of “Designs.” Panels have typically held that respondents are not commonly known by disputed domain names based on WHOIS information and a lack of information to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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). The Panel consequently finds that Respondent is not commonly known by the disputed domain name.
Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. The disputed domain name resolves to a blank page with no demonstrated intent to make a legitimate use of the domain. This is not evidence of use in the sense of the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007); see also Nenê f/k/a Maybyner Rodney Hilario v. Master, Host, FA 0924563 (Forum Apr. 10, 2007) (Holding that absence of content at website evinced a lack of rights or legitimate interests in the disputed domain name); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (Forum Sept. 2, 2004) (Respondent is using the Disputed Domain Name to resolve to an empty page featuring no substantive content or links is further evidence that Respondent's failure to actively use the Disputed Domain Name(s) suggests a lack of rights and legitimate interests in the Disputed Domain Name(s) as blank pages are neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a) (ii)”). Moreover, a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).Therefore, the Panel concludes that Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s well-known mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, the disputed domain name adds the generic and descriptive phrase “online services” to Complainant’s TD trademark. Given Respondent’s failure to provide an explanation for his registration, the Panel concludes that there is no plausible good-faith reason or logic for Respondent to have registered the disputed domain name, and that “…the only feasible explanation for Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith.” See Vevo LLC v. Ming Tuff, FA 1440981 (Forum May 29, 2012).
The disputed domain name is not being used. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, Complainant’s trademark is well known, including for use for online services. As already noted, it is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”); see also Indymac Bank v. Ebeyer, FA 0175292 (Forum Sept. 19, 2003) (Panel holding “there is no conceivable way [r]espondent could use the disputed domain names such that they would not infringe on [c]omplainant’s INDYMAC mark, and therefore it is illogical to await [r]espondent’s use of the domain names to find bad faith use”).
There has been no response to the Complaint. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdonlineservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 9, 2017
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