The Toronto-Dominion Bank v. Suzan Wesley
Claim Number: FA1801001769718
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Suzan Wesley (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 January 30, 2018; the Forum received payment on January 30, 2018.
On February 1, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2018 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@easyweb-tdonlineservice.info, postmaster@safe-td.xyz, and postmaster@safe-td.pw. Also on February 1, 2018, 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 February 22, 2018, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant 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 rights in the TD (e.g. Reg. No. TMA396087, registered Mar. 20, 1992) and EASYWEB (e.g. Reg. No. TMA493469, registered Apr. 22, 1998) marks through their registration with the Canadian Intellectual Property Organization (“CIPO”). Respondent’s <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names are confusingly similar to Complainant’s mark as they merely add hyphens, descriptive/generic terms, and various generic top-level domains (“gTLDs”) to Complainant’s mark or marks.
Respondent has no rights or legitimate interests in the <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names. Respondent is not commonly known by the domain names, as the WHOIS information lists the registrant as “Suzan Wesley.” Complainant has not authorized, licensed, or otherwise permitted Respondent to use the marks. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make any active use of the resolving domains. Further, Respondent’s <easyweb-tdonlineservice.info> previously indicated that it was associated with malware, potentially used to trick unsuspecting users into divulging sensitive personal or financial information.
Respondent registered and uses the <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names in bad faith. Respondent does not use the domain names in connection with active websites. Additionally, Respondent previously used the <easyweb-tdonlineservice.info> domain name to phish for information from unsuspecting users. Moreover, Respondent, by registering three domain names so closely resembling Complainant’s famous and well-known TD and EASYWEB marks, knew or should have known of Complainant’s rights in the mark prior to registering the domain names. Finally, Respondent failed to respond to Complainant’s attempts to resolve this matter outside of legal proceedings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant has rights in the TD (e.g. Reg. No. TMA396087, registered Mar. 20, 1992) and EASYWEB (e.g. Reg. No. TMA493469, registered Apr. 22, 1998) marks through their registration with the CIPO. Respondent’s <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names are confusingly similar to Complainant’s mark.
Respondent, Suzan Wesley, registered all three domain names on August 20, 2017.
Respondent has no rights or legitimate interests in the <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names. Respondent fails to make any active use of the resolving domains. Further, Respondent’s <easyweb-tdonlineservice.info> previously indicated that it was associated with malware, potentially used to trick unsuspecting users into divulging sensitive personal or financial information.
Respondent registered and uses the <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names 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 and EASYWEB marks under Policy ¶ 4(a)(i) through registration with the CIPO. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”).
Respondent’s domain names are confusingly similar to Complainant’s marks as they merely add hyphens, descriptive/generic terms, and various gTLDs to Complainant’s marks.
Respondent has no rights or legitimate interests in the <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS identifies “Suzan Wesley” as the registrant for all of the domain names. Complainant has not authorized Respondent to use its TD and EASYWEB marks. The Panel finds that Respondent is not commonly known by the <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names under Policy ¶ 4(c)(ii).
The domain names redirect users to websites that lacks any content. Failure to make active use of a confusingly similar domain name shows a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.”
Additionally, Respondent’s <easyweb-tdonlineservice.info> previously was associated with malware, potentially used to trick unsuspecting users into divulging sensitive personal or financial information. Malware and phishing schemes show a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information); see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”).
Respondent does not use the domain names in connection with active websites. Inactively holding a confusingly similar domain name shows bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (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).”).
Additionally, Respondent previously used the <easyweb-tdonlineservice.info> domain name to phish for information from unsuspecting users. Using a confusingly similar domain name to phish for information shows bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Finally, Respondent had actual knowledge of Complainant’s TD and EASYWEB marks at the time of registering the <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names. Therefore, Respondent registered and used the domain names in 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).
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 <easyweb-tdonlineservice.info>, <safe-td.xyz>, and <safe-td.pw> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 6, 2018
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