The Toronto-Dominion Bank v. benoit dumas
Claim Number: FA1803001778428
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is benoit dumas (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2018; the Forum received payment on March 23, 2018.
On March 24, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> 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 March 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 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-tdonlineservices.info, postmaster@td-group.gdn, postmaster@td-group.xyz. Also on March 26, 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 April 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
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. TMA396087, registered Apr. 22, 1998) marks through the registration with the Canadian Intellectual Property Organization (“CIPO”).
Respondent’s <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names are confusingly similar to Complainant’s TD mark as they all add various generic/descriptive terms, a hyphen, and a generic top-level domain.
Respondent has no rights or legitimate interests in the <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names. Respondent is not commonly known by the domain names, as the WHOIS information lists the registrant as “Benoit Dumas.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use its marks for any purpose. Respondent does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the websites currently resolve to blank pages that lack any content.
Respondent registered and uses the <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names in bad faith. Respondent’s domain names create a likelihood of confusion by misappropriating Complainant’s trademarks in the infringing domain names to host blank websites with no content. Additionally, Respondent, by registering a domain name so closely resembling Complainant’s famous and well-known TD BANK mark, knew or should have known of Complainant’s rights in the mark prior to registering the domain names at issue. Finally, Respondent failed to respond to Complainant’s attempts to resolve this matter outside of formal legal proceedings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the TD and EASYWEB marks.
Respondent registered the at-issue domain names after Complainant acquired rights in TD and EASYWEB.
Respondent’s at-issue domain names are inactive.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a CIPO registration for the TD and EASYWEB trademark demonstrates its rights in such marks for the purposes of Policy ¶ 4(a)(i). 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 <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names each contain Complainant’s TD and/or EASYWEB mark followed by a hyphen, the generic terms “online services” or “group” and conclude with either the top-level domain name “.info ”, “.gdn” or “.xyz”. In each case, the alterations to Complainant’s trademarks are insufficient to distinguish any of them from Complainant’s trademark(s) for the purposes of the Policy ¶ 4 (a)(i). Therefore, the Panel finds that Respondent’s <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names are each confusingly similar to one, or more in the case of <easyweb-tdonlineservices.info>, of Complainant’s trademarks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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 also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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 an 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 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademarks 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 any of the at-issue domain names.
WHOIS information for the at-issue domain names lists “Benoit Dumas” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by any of the at-issue domain names. Therefore, the Panel finds that Respondent is not commonly known by any of the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Additionally, Respondent’s confusingly similar <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names each resolve to a webpage lacking content. Holding the domain names inactively shows 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 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. 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).”).
Given the forgoing, Complainant’s unrebutted showing that Respondent lacks rights or interests in each of the at-issue domain names satisfies Complainant’s burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each domain name.
The <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding the <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names.
As discussed above regarding rights and legitimate interests, Respondent uses the at-issue domains in a manner which results in a webpage lacking content. Browsing to any of the at-issue domain names presents the message: “This site can’t be reached.” Respondent’s failure to make active use of any of the at-issue domain names suggests Respondent’s bad faith registration and use of the domain names under the Policy. 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. 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).”).
Furthermore, Respondent’s <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names each create confusion with Complainant’s trademark(s) by misappropriation. Using domain names that ultimately may trade upon the goodwill of Complainant, even when the resolving webpages lack content, indicates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
Finally, Respondent registered the <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names knowing that Complainant had trademark rights in the TD and EASYWEB marks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks as well as from Respondent’s concurrent registration of such trademarks in multiple domain names. Respondent’s actual knowledge of Complainant's trademarks further indicates that Respondent registered and used the <easyweb-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
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-tdonlineservices.info>, <td-group.gdn>, and <td-group.xyz> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 18, 2018
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