The Toronto-Dominion Bank v. LAYDEE SMITH
Claim Number: FA1711001759850
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is LAYDEE SMITH (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbanking.online>, registered with GoDaddy.com, LLC.
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 Forum electronically on November 26, 2017; the Forum received payment on November 26, 2017.
On November 27, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tdbanking.online> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@tdbanking.online. Also on November 30, 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 December 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 is the second largest bank in Canada, and the sixth largest bank in North America, serving 25 million clients worldwide. Complainant operates numerous websites, chief among them are <tdbank.com>, and <td.com>. Complainant uses its TD, and TD BANK marks in association with financial, banking and related businesses, goods, and services. Complainant owns hundreds of trademark registrations for the TD BANK mark through the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA549396, registered on Aug. 7, 2001), and with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,788,055, registered on May 11, 2010). Respondent’s <tdbanking.online> domain name is confusingly similar to Complainant’s marks because the domain name incorporates TD BANK entirely while merely adding the present participle “ing” and the generic top-level domain (“gTLD”) “.online.”
Respondent does not have rights or legitimate interests in the <tdbanking.online> domain name. Respondent has no permission, authorization, or license to use Complainant’s trademarks. Respondent is not commonly known by the disputed domain name based on the WHOIS information. Further, Respondent does not use the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Previously, Respondent’s disputed domain name redirected internet users to a blank page website lacking content. Currently, the disputed domain name resolves to a website indicating that the <tdbanking.online> domain name is for sale.
Respondent registered the <tdbanking.online> domain name in bad faith. Currently, Respondent is offering to sell the disputed domain name on the resolving webpage. Further, Respondent’s disputed domain name is intentionally causing confusion among internet users as to the source of the disputed domain name. Additionally, since the disputed domain name previously resolved to an inactive website, Respondent passively holds the domain name. Respondent also created misleading WHOIS information by using a privacy service. Moreover, Respondent failed to respond to Complainant’s cease and desist letter. Finally, due to the fame of Complainant’s TD BANK mark and the confusing similarity of the domain name, Respondent had actual knowledge of Complainant’s rights in the TD BANK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada, and the sixth largest bank in North America, serving 25 million clients worldwide. Complainant operates numerous websites, chief among them are <tdbank.com>, and <td.com>. Complainant uses its TD, and TD BANK marks in association with financial, banking and related businesses, goods, and services. Complainant owns hundreds of trademark registrations for the TD BANK mark through the CIPO (e.g., Reg. No. TMA549396, registered on Aug. 7, 2001), and with the USPTO (e.g., Reg. No. 3,788,055, registered on May 11, 2010). Respondent’s <tdbanking.online> domain name is confusingly similar to Complainant’s marks.
Respondent, LAYDEE SMITH, registered <tdbanking.online> on July 26, 2017.
Respondent does not have rights or legitimate interests in the <tdbanking.online> domain name. Previously, Respondent’s disputed domain name redirected internet users to a blank page website lacking content. Currently, the disputed domain name resolves to a website indicating that the <tdbanking.online> domain name is for sale.
Respondent registered the <tdbanking.online> domain name in bad faith.
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.”).
Complainant has rights in the TD BANK mark through registration with the CIPO and the USPTO. See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office).
Respondent’s <tdbanking.online> domain name is confusingly similar to the TD BANK mark because the domain name incorporates TD BANK entirely while merely adding the present participle “ing” and the gTLD “.online.”
Respondent has no rights or legitimate interests in the <tdbanking.online> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information lists the registrant as “Mark Roel Oabel / Kreativemark Interactive.” Complainant has not authorized Respondent to use the TD BANK mark. The WHOIS information and a lack of permission, license, or authorization can demonstrate a respondent is not commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (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 Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Further, Complainant argues Respondent’s previous use of the disputed domain name redirected internet users to a blank website clearly lacking content. Failing to make active use of a confusingly similar domain name shows of a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Thermo Electron Corp. v. Xu, FA 713851 (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)). Respondent’s domain name previously resolved to a website displaying the message “This site can’t be reached.” Accordingly, the Panel finds that Respondent failed to actively use the website, failing to make a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant asserts Respondent currently only indicates its willingness to sell the domain name on the resolving webpage. A general offer to sell a domain name can show a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Groupe Auchan v. Slawomir Cynkar, D2009-0314 (WIPO May 11, 2009) (noting that “Respondent’s offer to sell or rent the domain names does not give rise to any right or legitimate interest”). Here, Respondent’s disputed domain name resolves to a website where internet users may submit information including a “Your Offer” price for the <tdbanking.online> domain name, and at the top of the website displays the words “tdbanking.online is for sale!” As such, the Panel finds that Respondent offers the domain name for sale, showing a lack of rights and legitimate interests in the domain name.
Complainant claims Respondent registered the domain name in bad faith by offering the disputed domain name for sale to the public. Offers to sell a confusingly similar domain name can show bad faith registration and use under Policy ¶ 4(b)(i). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith). Here, Respondent’s disputed domain name resolves to a website where internet users may submit information including a “Your Offer” price for the <tdbanking.online> domain name, and at the top of the website displays the words “tdbanking.online is for sale!” Accordingly, the Panel finds bad faith registration and use per Policy ¶ 4(b)(i).
Next, Complainant argues that the disputed domain name previously had no active use. Failing to actively use a confusingly similar domain name shows bad faith registration and use per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s TD BANK mark at the time of registering the domain name. Actual knowledge of a complainant’s rights in a mark prior to registering a confusingly similar domain name shows bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent must have had actual knowledge of the mark due to the fame of Complainant’s TD BANK mark and the confusing similarity of the domain name. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
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 <tdbanking.online> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 4, 2018
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