The Toronto-Dominion Bank v. Dave Warren
Claim Number: FA1810001813496
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Dave Warren (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbbankonline.com>, registered with NameCheap, Inc.
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 October 25, 2018; the Forum received payment on October 25, 2018.
On October 25, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <tdbbankonline.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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@tdbbankonline.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 17, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, The Toronto-Dominion Bank, uses the TD BANK mark to provide and market products and services in the financial banking industry. Complainant has rights in the TD BANK mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,788,055, registered May 11, 2010). Respondent’s <tdbbankonline.com> is identical or confusingly similar as it contains Complainant’s TD BANK mark in its entirety, adding the descriptive term “online,” an additional letter “b,” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <tdbbankonline.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the TD BANK mark. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent fails to make an active use of the disputed domain name.
Respondent has registered and used the <tdbbankonline.com> domain name in bad faith. Respondent fails to make an active use of the disputed domain name. Respondent registered the disputed domain name with 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, uses the TD BANK mark to provide and market products and services in the financial banking industry. Complainant has rights in the TD BANK mark based upon registration with the USPTO (e.g. Reg. No. 3,788,055, registered May 11, 2010). Respondent’s <tdbbankonline.com> is confusingly similar to Complainant’s TD BANK mark.
Respondent registered the <tdbbankonline.com> domain name on January 24, 2018.
Respondent does not have rights or legitimate interests in the <tdbbankonline.com> domain name. Respondent fails to make an active use of the disputed domain name.
Respondent has registered and used the <tdbbankonline.com> 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 under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <tdbbankonline.com> domain name is confusingly similar to Complainant’s TD BANK mark as it contains Complainant’s TD BANK mark in its entirety, adding the descriptive term “online,” an additional letter “b,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <tdbbankonline.com> as Respondent is not authorized to use Complainant’s TD BANK mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), especially where a privacy service has been engaged. 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.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. 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).
A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the WHOIS information of record identifies registrant as “Dave Warren.” Therefore, Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is not using the <tdbbankonline.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 disputed domain name. Failure to make active use of a domain name does not 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) (inactive use, or passive holding, of a disputed domain name by a respondent permits the inference that the respondent lacks rights and legitimate interests in the domain name). Here, the resolving webpage displays the message “This site is temporarily unavailable.”
Respondent fails to make an active use and is passively holding the <tdbbankonline.com> domain name. Failure to make an active use a domain name 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.”)
Respondent registered the <tdbbankonline.com> domain name with actual knowledge of Complainant’s TD BANK mark. Registration of an infringing domain name with knowledge of complainant’s mark shows 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). Therefore, Respondent registered and used the disputed domain name in 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 <tdbbankonline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 1, 2018
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