The Toronto-Dominion Bank v. Tulip Trading Company
Claim Number: FA1911001871621
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwtdonlinebanking.com>, registered with Key-Systems Gmbh.
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 18, 2019; the Forum received payment on November 18, 2019.
On November 19, 2019; November 25, 2019, Key-Systems Gmbh confirmed by e-mail to the Forum that the <wwwtdonlinebanking.com> domain name is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@wwwtdonlinebanking.com. Also on December 2, 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 December 27, 2019, 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 is involved with financial, banking and related businesses, goods, and services.
Complainant has rights in the TD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <wwwtdonlinebanking.com> domain name is confusingly similar to Complainant’s mark as Respondent adds the “www” top-level designator and the “online banking” descriptive term, as well as the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <wwwtdonlinebanking.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use of the domain name is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is using the at-issue domain name to offer competing hyperlinks.
Respondent registered and used the <wwwtdonlinebanking.com> domain name in bad faith. Specifically, Respondent has shown a pattern of bad faith registrations infringing on Complainant’s mark. Additionally, Respondent is attempting to attract Internet users for commercial gain by offering competing hyperlinks. Furthermore, Respondent did not respond to Complainant’s cease-and-desist letter. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the TD mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the TD mark.
Respondent registered the at-issue domain names after Complainant acquired rights in TD.
Respondent has suffered multiple adverse UDRP decisions.
Respondent’s at-issue domain name is used to display competing pay-per-click links.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its TD trademark. Such registration is sufficient to demonstrate Complainant’s rights in the TD mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <wwwtdonlinebanking.com> domain name contains Complainant’s TD trademark, proceeded by “www,” ‑which is sometimes used in a URL to designate the scope of the network addressed by such URL‑ and followed by the suggestive term “online banking,” all followed by the top-level domain name “.com”. The difference between Respondent’s domain name and Complainant’s trademark is insufficient to distinguish the <wwwtdonlinebanking.com> domain name from the TD trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <wwwtdonlinebanking.com> domain name is confusingly similar to Complainant’s trademark. See Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016) (concluding that the addition of “www” takes advantage of a common typing error, and does not distinguish the domain name from the mark or overcome a finding of confusingly similar); see also,The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
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). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark 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.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Tulip Trading Company” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <wwwtdonlinebanking.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <wwwtdonlinebanking.com> domain name for the purposes of 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).
Additionally, Respondent uses its <wwwtdonlinebanking.com> domain name to display hyperlinks to third parties. The domain name addresses a website which features links to competing services such as “BANK LOANS”, “BANK ACCOUNT”, “LOANS CANADA” and “MORTGAGE LOANS”. Respondent’s use of the at-issue domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is ample evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent has a pattern of bad faith domain name registration as there is a large array of UDRP decisions adverse to Respondent. Respondent’s history of cybersquatting suggests the at-issue domain name was likewise registered and used in bad faith pursuant to Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”).
Next and as mentioned above regarding rights and interests, Respondent uses the at-issue confusingly similar domain name to address a webpage displaying links to third parties including some offering services competing with services offered by Complainant. Respondent’s use of its <wwwtdonlinebanking.com> domain to trade on Complainant’s trademark in this manner demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the TD mark when it registered <wwwtdonlinebanking.com> as a domain name. Respondent’s actual knowledge is evident from Respondent’s incorporation of Complainant’s well-known TD trademark in the at-issue domain name along with the suggestive term “online banking,” as-well-as from Respondent’s <wwwtdonlinebanking.com> website linking to Complainant’s competitors. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s 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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <wwwtdonlinebanking.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 28, 2019
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