The Toronto-Dominion Bank v. thomas luther / express services
Claim Number: FA1810001813448
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is thomas luther / express services (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbsecureonline.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 24, 2018; the Forum received payment on October 24, 2018.
On October 25, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <tdbsecureonline.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 October 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@tdbsecureonline.com. Also on October 25, 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 November 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, The Toronto-Dominion Bank, uses the TD and TD BANK marks to provide and market products and services. Complainant has rights in the TD and TD BANK marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. TD—Reg. No. 1,649,009; TD BANK—Reg. No. 3,788,055, registered May 11, 2010). Respondent’s <tdbsecureonline.com>[i] is confusingly similar as it contains Complainant’s TD mark in its entirety, merely adding the letter “b”, the descriptive terms “secure” and “online” along with the generic top-level domain (“gTLD”) “.com.”
2. Respondent does not have rights or legitimate interests in the <tdbsecureonline.com> domain name. Respondent is not commonly known by the domain name and Complainant has not granted respondent permission or license to use the TD mark for any purpose.
3. Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Instead, Respondent fails to make an active use of the domain name.
4. Respondent has registered and used the <tdbsecureonline.com> domain name in bad faith. Respondent has failed to make an active use of the domain name. In addition, Respondent has failed to respond to cease-and-desist letters. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the TD and TD BANK marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TD and TD BANK marks. Respondent’s domain name is confusingly similar to Complainant’s TD and TD BANK marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tdbsecureonline.com> domain name and that Respondent registered and uses the 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 claims rights in the TD and TD BANK marks based upon its registration with the USPTO (e.g., TD—Reg. No. 1,649,009; TD BANK—Reg. No. 3,788,055, registered May 11, 2010). Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015). Therefore, the Panel finds that Complainant has rights in the TD mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <tdbsecureonline.com> domain name is confusingly similar to Complainant’s TD mark as Respondent merely adds a random letter, two descriptive terms and a gTLD to the mark. Additions of letters, generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (confusing similarity exists where a disputed domain name contains a 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 OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); 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). The Panel agrees with Complainant and finds that the <tdbsecureonline.com> does not contain changes that would sufficiently distinguish it from the TD mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <tdbsecureonline.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <tdbsecureonline.com> domain name as Respondent is not authorized to use Complainant’s TD and TD BANK marks and is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See 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.). Additionally, the lack of evidence to indicate a respondent has been authorized to register a domain name using a complainant’s mark supports a finding that a respondent lacks rights or legitimate interests in a domain name per Policy ¶ 4(c)(ii). See 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 record indicates that the registrant of the <tdbsecureonline.com> domain name is “thomas luther / express services” and nothing in the record indicates Respondent is authorized by Complainant to use the TD or TD BANK marks. The Panel holds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <tdbsecureonline.com> domain name.
Moreover, Complainant argues that Respondent is not using the <tdbsecureonline.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the domain name. Failure to make active use of a domain name containing the mark of another does constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant provides screenshots of the <tdbsecureonline.com> domain name which resolves to an inactive webpage which currently features an “This site cannot be reached” notice. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has proven that Respondent fails to make an active use of the <tdbsecureonline.com> domain name and is passively holding the domain name. Failure to make an active use a domain name containing the mark of another is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) As noted previously, Complainant provides screenshots of the resolving inactive website which currently features an “This site can’t be reached” notice. Therefore, Panel holds that Respondent’s inactive use of the <tdbsecureonline.com> domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the <tdbsecureonline.com> domain name with actual knowledge of Complainant’s mark. A respondent who registers an infringing domain name with knowledge of a complainant’s mark may be acting in bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant argues that Respondent registered the <tdbsecureonline.com> domain name with actual knowledge of Complainant’s TD and TD BANK marks. Complainant is the second largest bank in Canada and sixth largest bank in North America. Complainant has provided evidence that its marks are famous to customers around the world. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the TD and TD BANK marks prior to registering the <tdbsecureonline.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <tdbsecureonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 24, 2018
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