The Toronto-Dominion Bank v. Rita Bielecki
Claim Number: FA1901001823930
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Rita Bielecki (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdbank-online.com>, registered with Google LLC.
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 January 7, 2019; the Forum received payment on January 7, 2019.
On January 7, 2019, Google LLC confirmed by e-mail to the Forum that the <tdbank-online.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 January 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2019 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@tdbank-online.com. Also on January 8, 2019, 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 January 31, 2019, 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 and TD BANK marks to provide and market its financial products and services. Complainant has rights in the TD BANK mark 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) and the Canadian Intellectual Property Office (“CIPO”) (e.g., TD – Reg. No. TMA396087, registered Mar. 20, 1991; TD BANK – Reg. No. TMA549396, registered Aug. 7, 2001). Respondent’s <tdbank-online.com> is confusingly similar as it contains Complainant’s TD BANK mark in its entirety, merely adding a hyphen, the descriptive term “online” and the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <tdbank-online.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 <tdbank-online.com> domain name.
Respondent has registered and uses the <tdbank-online.com> domain name in bad faith. Respondent fails to make an active use of the disputed domain name. Respondent has also employed a privacy service to hide its identity. Respondent registered the disputed 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, The Toronto-Dominion Bank, uses the TD and TD BANK marks to provide and market its financial products and services. Complainant has rights in the TD BANK mark based upon registration with the USPTO (e.g. TD—Reg. No. 1,649,009; TD BANK—Reg. No. 3,788,055, registered May 11, 2010) and the CIPO (e.g., TD – Reg. No. TMA396087, registered Mar. 20, 1991; TD BANK – Reg. No. TMA549396, registered Aug. 7, 2001). Respondent’s <tdbank-online.com> is confusingly similar to Complainant’s TD BANK mark.
Respondent registered the <tdbank-online.com> domain name on July 28, 2018.
Respondent does not have rights or legitimate interests in the <tdbank-online.com> domain name. Respondent fails to make an active use of the <tdbank-online.com> domain name.
Respondent has registered and is using the <tdbank-online.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 and TD BANK marks Policy ¶ 4(a)(i) based upon its registration with the USPTO and CIPO. Registration of a mark with multiple trademark offices is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). 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 <tdbank-online.com> domain name is confusingly similar to Complainant’s mark. Specifically, Respondent merely adds a generic term, hyphen, and a gTLD to Complainant’s TD BANK mark.
Respondent has no rights or legitimate interests in the <tdbank-online.com> domain name. Where a response is lacking, the WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, 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).
Complainant has not authorized Respondent to use Complainant’s TD BANK mark. A privacy service was used by Respondent, but was lifted as a result of this proceeding. As a result, the WHOIS information of record identifies registrant as “Rita Bielecki.” Therefore Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is not using the <tdbank-online.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to an inactive website which currently features a “This site can’t be reached” notice. Therefore, Respondent fails to make an active use of the disputed domain name. See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012) (Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii)).
Respondent fails to make an active use and is passively holding the <tdbank-online.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 disputed domain name with actual knowledge of Complainant’s mark thereby supporting a finding of 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 <tdbank-online.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 13, 2019
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