The Toronto-Dominion Bank v. O Orejuela / Orejuela
Claim Number: FA1803001779576
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is O Orejuela / Orejuela (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <td-onlineupdate.com>, registered with Tucows Domains Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically March 29, 2018; the Forum received payment March 29, 2018.
On March 29, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <td-onlineupdate.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. verified that Respondent is bound by the Tucows Domains Inc. registration agreement and 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 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@td-onlineupdate.com. Also on March 30, 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 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
4(a)(i): Complainant, The Toronto-Dominion Bank (commonly known as TD Bank Group), is the second largest bank in Canada, with 86,000 employees worldwide and provides goods and services in association with financial, banking and related businesses. Complainant owns hundreds of trademark registrations in the United States and internationally that consist of, or include, the elements TD and TD BANK. See Compl. Ex. A. Complainant uses these marks in connection with promotion of its goods and services and has done so since 1991. Complainant’s rights here stem, in part, from registration of the TD mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No 1,649,009, registered June, 25, 1991). See Compl. Ex. A. Respondent’s <td-onlineupdate.com> is identical or confusingly similar to Complainant’s TD trademark because the disputed domain name incorporates Complainant’s mark in its entirety, adds a hyphen, and adds the generic, descriptive term “online update.”
4(a)(ii): Respondent has no rights or legitimate interests in the <td-onlineupdate.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark in any way. See Compl. Ex. E. Respondent also does not use the disputed domain in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect Internet users to a website that resolves to a blank page without content. See Compl. Ex. F.
4(a)(iii): Respondent registered and uses the <td-onlineupdate.com> domain name in bad faith. Given the Complainant’s international reputation and presence on the Internet, Respondent had actual or constructive knowledge of the existence of the Complainant’s trademarks. In addition, Respondent failed to respond to Complainant’s attempts to resolve this dispute outside of this administrative proceeding. See Compl. Ex. J. Furthermore, the passive holding of the disputed domain name <td-onlineupdate.com> supports a finding of bad faith registration, as the domain resolves to an inactive site and is not being used. Finally, as the <td-onlineupdate.com> domain name incorporates the Complainant’s famous mark in its entirety and adds a generic term related to Complainant’s business, use of the disputed domain name is intended to cause confusion, mistake and deception among Internet users.
B. Respondent’s Allegations in this Proceeding:
Respondent did not submit a Response. The Panel notes that Respondent registered the <td-onlineupdate.com> domain name August 17, 2016. See Compl. Ex. I.
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent registered and used a disputed domain name that contains in its entirety Complainant’s protected mark and the disputed domain name is confusingly similar to Complainant’s mark.
Respondent has no rights to or legitimate interests in Complainant’s mark or the domain name that contains it in its entirety.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar:
Complainant asserts rights in the TD mark based on registration with the USPTO. Registration of a mark with a trademark authority such as the USPTO establishes rights in a mark pursuant to Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Complainant provides copies of many of the trademark registrations for the TD mark (e.g. Reg. No 1,649,009, registered June, 25, 1991). See Compl. Ex. A. Therefore, the Panel finds Complainant has rights in the TD mark pursuant to a Policy ¶ 4(a)(i) evaluation.
Next, Complainant argues Respondent’s <td-onlineupdate.com> domain name is confusingly similar to Complainant’s TD mark, as the disputed domain name incorporates Complainant’s mark in its entirety, adds a hyphen, and adds the generic, descriptive term “online update”. The Panel notes that the disputed domain name adds the “.com” generic top-level domain (“gTLD”). Arbitrators have found similar changes insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs); see also YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining 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 purposes of the Policy). The Panel agrees with Complainant and finds that Respondent’s <td-onlineupdate.com> domain name is confusingly similar to Complainant’s TD mark per Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name containing Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under a Policy ¶ 4(a)(ii) evaluation; then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends that Respondent has no rights or legitimate interests in the <td-onlineupdate.com> domain name because Respondent is not commonly known by the name, and is not authorized to use the TD mark for any purpose. Where no response is filed, Panels use relevant information including the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (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 information of record identifies the Registrant as “O Orejuela / Orejuela.” See Compl. Ex. E. Complainant alleges that Respondent never was legitimately affiliated with Complainant, and Complainant has not given Respondent permission to use Complainant’s protected mark in any domain name or otherwise. Accordingly, the Panel finds that Respondent is not commonly known by the <td-onlineupdate.com> domain name under Policy ¶ 4(c)(ii).
Furthermore, Complainant contends that Respondent does use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Complainant contends Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page without content, and Complainant provides a screenshot of that webpage. See Compl. Ex. F. As such, Respondent has no rights or legitimates interests in the disputed domain name, in part, because Respondent failed to use <td-onlineupdate.com> and failed to demonstrate any attempt to make legitimate use of the domain name and website. See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. Respondent is not using the disputed domain name in connection with an active website and the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services… Respondent did not file a response to this action and Respondent failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain”); see also Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Therefore, this Panel finds that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use consistent with Policy ¶¶ 4(c)(i) & (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Respondent registered and uses the <td-onlineupdate.com> in bad faith as Respondent attempts to cause confusion, mistake, and deception among Internet users. Using a confusingly similar domain name to trade off the goodwill of a complainant, even where a domain name is not being used in connection with an active website, evidences 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 such use will create the confusion described in the Policy”). Complainant provides a screenshot of the resolving webpage, which displays the message: “This site can’t be reached.” See Compl. Ex. F. Accordingly, the Panel finds that Respondent registered and used the domain name to trade off the goodwill associated with Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent inactively holds the domain name, as Respondent fails to use the disputed domain name for any purpose. Inactively holding a confusingly similar domain name evidences 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).”). As noted above, Complainant provides a screenshot of the resolving webpage, which displays the message: “This site can’t be reached.” See Compl. Ex. F. The Panel agrees that Respondent does not use the domain name for any substantive purpose and this supports findings of bad faith under an analysis of Policy ¶ 4(a)(iii).
In addition, Complainant contends that Respondent must have known of Complainant’s rights in the TD mark prior to registering the disputed domain name. A respondent’s actual knowledge of a complainant’s rights in a mark can be presumed when the mark is sufficiently famous. See Nw. Airlines, Inc. v. Koch, FA 95688 (Forum Oct. 27, 2000) (“[T]he selection of a domain name [<northwest-airlines.com>] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). Complainant urges that the domain name here is almost identical to the TD mark, includes a generic term, “onlineupdate,” which relates to Complainant’s business, and given that Complainant is the second largest bank in Canada and ranks number 56 on the Forbes Global 2000 listing. See Compl. at 4. The Panel agrees that Respondent had prior knowledge of Complainant’s rights in the TD mark and thus registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used (and/or passively held) the
disputed domain name containing in its entirety Complainant’s protected mark in
bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <td-onlineupdate.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Dated: May 7, 2018.
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