The Toronto-Dominion Bank v. Ward Christopher Joseph
Claim Number: FA1912001874598
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Ward Christopher Joseph (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdonlinelogineasyweb.com> (‘the Domain Name’), registered with Shinjiru Technology Sdn Bhd.
The undersigned certifies that she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2019; the Forum received payment on December 10, 2019.
On December 11, 2019, Shinjiru Technology Sdn Bhd confirmed by e-mail to the Forum that the <tdonlinelogineasyweb.com> domain name is registered with Shinjiru Technology Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru Technology Sdn Bhd has verified that Respondent is bound by the Shinjiru Technology Sdn Bhd 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 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2020 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@tdonlinelogineasyweb.com. Also on December 16, 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 8, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant owns a number of trade mark registrations registered in Canada and the USA consisting of or including TD used since 1969. The trade mark EASYWEB is owned by a company in the Complainant’s group in Canada and has been registered since 1998. These marks are registered in relation to financial services. The Complainant owns <td.com> and <tdbank.com>.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s trade marks containing the Complainant’s TD and EASYWEB marks in their entirety adding only the generic term “online log in” and the gTLD “.com,” which do not prevent confusing similarity.
Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name and has not been authorised by the Complainant.
Whilst currently suspended the Domain Name has been used for commercial competing links which is not a bona fide offering of goods or services or a legitimate non commercial fair use. The Respondent does not have rights or a legitimate interest in the Domain Name.
The combination of two of the Complainant’s marks in the Domain Name and the Complainant’s address and telephone number displayed on the site attached to the Domain Name shows that the Respondent was aware of the Complainant and its business at the time of registration of the Domain Name. Use for competing pay per click links is misleading Internet users for commercial gain Passive holding of a domain name containing third party marks with a reputation can be bad faith registration and use. A privacy service was used and the Respondent failed to answer a cease and desist letter from the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns a number of trade mark registrations registered in Canada and the USA consisting of or including TD used since 1969. The trademark EASYWEB is owned by a company in the Complainant’s group in Canada and has been registered since 1998. These marks are registered in relation to financial services. The Complainant owns <td.com> and <tdbank.com>.
The Domain Name registered in 2019 has been used for 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”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines the TD and EASYWEB marks owned by the Complainant’s group (registered in, inter alia, Canada for financial services with first use recorded as 1969 and 1998 respectively), the generic term ”online log in” and the gTLD “.com.”
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term “online log in” to the Complainant's marks does not distinguish the Domain Name from the Complainant's registered trade marks for the purposes of the Policy.
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s marks. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorised the use of its marks. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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).
The Respondent has used the site attached to the Domain Name for links, some of which offer competing services not connected with the Complainant. Respondent does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See ALPITOUR SpA v Albloushi FA 888651 (Forum Feb 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy). The use is commercial and so cannot be a legitimate noncommercial fair use.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent used the Domain Name to profit by linking to third-party competing web sites in a confusing manner. The combination of two of the Complainant’s marks in the Domain Name, the presence of some links referring to the Complainant and contact details of the Complainant on the site attached to the Domain Name show that the Respondent is aware of the Complainant and its business, services and rights. The Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site attached to the Domain Name and services on it. See Dovetail Ventures LLC v Klayton Thorpe, FA 1506001625786 (Forum Aug 2, 2015) (holding that the respondent had acted in bad faith under Policy 4(b)(iv) where it used the disputed domain name to host a variety of hyperlinks unrelated to the complainant’s business through which the Respondent presumably gained).
Further it has been held that such use is disruptive under Policy ¶ 4(b)(iii). See Adriana Inc v Moniker Privacy services, FA 1503001610020 (Forum May 1, 2015) (Using pay per click links redirecting users to competing web sites to disrupt and compete with a Complainant’s business is evidence of bad faith registration and use under Policy 4(b)(iii).).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith under Policy ¶¶ 4(b)(iii) and (iv). There is no need to consider further alleged grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdonlinelogineasyweb.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 9, 2020
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