The Toronto-Dominion Bank v. Marvin Young / TDB
Claim Number: FA1811001817206
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Marvin Young / TDB (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbnonline.com>, registered with OpenTLD B.V..
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 November 19, 2018; the Forum received payment on November 19, 2018.
On November 21, 2018, OpenTLD B.V. confirmed by e-mail to the Forum that the <tdbnonline.com> domain name is registered with OpenTLD B.V. and that Respondent is the current registrant of the name. OpenTLD B.V. has verified that Respondent is bound by the OpenTLD B.V. 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 December 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@tdbnonline.com. Also on December 3, 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 December 26, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, The Toronto-Dominion Bank, is the second largest bank in Canada by market capitalization and deposits.
Complainant owns hundreds of trademark registrations and has rights in the (1) TD and (2) TD BANK marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., (1) Reg. No. 1,649,009, registered Jun. 25, 1991, (2) Reg. No. 3,788,055, registered May 11, 2010).
Respondent’s <tdbnonline.com> domain name is confusingly similar to Complainant’s TD BANK mark, as the domain name abbreviates Complainant’s TD BANK mark and adds the descriptive term “online” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <tdbnonline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the TD and TD BANK marks in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent redirects Internet users to a blank webpage.
Respondent registered and is using the <tdbnonline.com>domain name in bad faith because Respondent fails to make an active use of the disputed domain name. Furthermore, the domain name can only be taken as intending to cause confusion among internet users as to the source of the <tdbnonline.com> domain name. Finally, Respondent had actual and/or constructive knowledge of Complainant’s rights in the marks prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TD BANK mark through its registration of such mark with the USPTO and CIPO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Browsing to Respondent’s <tdbnonline.com> domain name results in a blank page.
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 name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of either a USPTO registration or a CIPO registration for its TD BANK trademark is sufficient to demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i). Complainant shows evidence of owning a registration with each registry. See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office).
Respondent’s <tdbnonline.com>domain name contains Complainant’s TD BANK trademark’s first element, an abbreviation of its second element, the suggestive term “online,” and the top-level domain name “.com. ” These alterations to Complainant’s trademarks are insufficient to distinguish the at-issue domain name from Complainant’s mark for the purposes of the Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <tdbnonline.com> domain name is confusingly similar to Complainant’s TD BANK trademark. See Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum Mar. 17, 2014) (finding that the respondent’s <kisskay.com> domain name is confusingly similar to Complainant’s KAY and EVERY KISS BEGINS WITH KAY marks at it constitutes a mere abbreviation); see also King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH mark.”).
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 the at-issue domain name. 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 the at-issue domain name.
WHOIS information for the at-issue domain name lists “Marvin Young / TBD” as the domain name’s registrant. There is nothing in the record that otherwise suggests Respondent is commonly known by the <tdbnonline.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by 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).
Respondent holds the confusingly similar <tdbank-security.com> domain name inactively. Browsing to the domain name displays a blank page. Therefore, the Panel finds Respondent’s use of the domain name is 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 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. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”).
Given the forgoing, Complainant’s unrebutted prima facie showing that Respondent lacks rights or interests in the at-issue domain name satisfies Complainant’s burden under Policy ¶4 (a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name.
The <tdbnonline.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶4(b) specific bad faith circumstances as well as other circumstance 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 <tdbnonline.com>domain name.
As discussed above concerning rights and legitimate interests, Respondent holds the <tdbnonline.com> domain name inactively. Respondent’s inactive holding of the confusingly similar domain name shows Respondent’s bad faith 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).”). Moreover, Respondent obviously registered, and now holds, the at-issue domain name, with the intent of exploiting its confusing similarity to Complainant’s TD BANK trademark. There is no reasonable basis to find otherwise. Therefore, the Panel concludes that Respondent’s has registered and used the <tdbnonline.com> domain name in bad faith under Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain).
Finally, Respondent registered the <tdbnonline.com> domain name knowing that Complainant had trademark rights in the TD BANK mark. Respondent’s prior knowledge of Complainant’s trademark is evident given the notoriety of the TB BANK mark and Respondent’s juxtaposition of the suggestive term “security” with such mark in creating the domain name. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <tdbnonline.com>domain name 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 <tdbnonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 27, 2018
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