The Toronto-Dominion Bank v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2106001949306
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by Jason Hayden of CSC Digital Brand Services Group AB, Sweden. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tdbautoloan.com>, <tdcardsales.com>, <tdcardservicis.com>, <tdonlineaccessplus.com> and <tdbilling.com>, registered with Media Elite Holdings Limited.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2021. The Forum received payment on June 2, 2021.
On June 2, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <tdbautoloan.com>, <tdcardsales.com>, <tdcardservicis.com>, <tdonlineaccessplus.com> and <tdbilling.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 June 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2021 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@tdbautoloan.com, postmaster@tdcardsales.com, postmaster@tdcardservicis.com, postmaster@tdonlineaccessplus.com, postmaster@tdbilling.com. Also on June 9, 2021, 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 July 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. Complainant has rights in the TD mark through numerous registrations of the mark, including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <tdbautoloan.com>, <tdcardsales.com>, <tdcardservicis.com>, <tdonlineaccessplus.com> and <tdbilling.com> domain names are confusingly similar to Complainant’s TD mark.
Complainant is the owner of the domain names <tdbankautoloan.com>, <tdautofinance.com>, <tdcardservices.com> and <tdbankcardservices.com>. Complainant offers a service that allows customers to pay bills online and also provides customers with online access to retail financing credit accounting needs through its partner site at <https://onlineaccessplus.com/TDBank/webapp/>.
Respondent lacks rights or legitimate interests in the <tdbautoloan.com>, <tdcardsales.com>, <tdcardservicis.com>, <tdonlineaccessplus.com> and <tdbilling.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or permitted Respondent to use Complainant’s TD mark. Respondent has not used the domain names in connection with a bona fide offering of goods or services as Respondent uses the domain names in connection with competitive pay-per-click advertising or use unrelated to Complainant. Respondent also offers the domain names for sale.
Respondent’s registration of five domain names containing Complainant’s internationally known mark shows that Respondent registered the <tdbautoloan.com>, <tdcardsales.com>, <tdcardservicis.com>, <tdonlineaccessplus.com> and <tdbilling.com> domain names in bad faith with actual knowledge of Complainant’s rights in the TD mark. Respondent is using the domain names in bad faith connection with pay-per-click advertising in an attempt to gain commercially by creating a likelihood of confusion with Complainant’s TD mark. Furthermore, Respondent registered the domain names using a privacy shield, has engaged in typosquatting in relation to the <tdcardservicis.com> domain name, and failed to respond to Complainant’s cease and desist letter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the TD mark through Complainant’s numerous registrations of the mark, including with the USPTO (e.g. Reg. No. 1,649,009, registered June 25, 1991). Respondent’s <tdbautoloan.com>, <tdcardsales.com>, <tdcardservicis.com>, <tdonlineaccessplus.com> and <tdbilling.com> domain names are confusingly similar to Complainant’s TD mark as they merely add to that mark the generic, descriptive or mis-spelled terms “auto loan”, “card sales”, “card servicis”, “online access plus” and “billing”, none of which distinguish the domain names from the mark, together with the inconsequential gTLD “.com”, which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The domain names were registered long after Complainant has shown that its TD mark had become very well-known, as follows:
<tdbautoloan.com>, June 8, 2020,
<tdcardsales.com> July 10, 2020,
<tdcardservicis.com> September 25, 2020,
<tdonlineaccessplus.com> November 9, 2020,
<tdbilling.com> March 22, 2021.
The domain names <tdcardsales.com>, <tdcardservicis.com>, <tdonlineaccessplus.com>, and <tdbilling.com> resolve to websites featuring pay-per-click links to third-party websites, some of which directly compete with Complainant's business. The domain name <tdbautoloan.com>, which is similar to Complainant’s <tdbankautoloan.com> domain name, resolves to the website “https://www.volvocars.com”. The domain name <tdcardservicis.com> is a misspelling of Complainant’s <tdcardservices.com> domain name.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
It is clear from the use to which the domain names are being put and the typosquatted nature of the <tdcardservicis.com> domain name, that Respondent was well aware of Complainant and its TD mark when registering the domain names and that the use to which Respondent has put the domain names demonstrates bad faith registration and use in the circumstances set out in paragraph 4(b)(iv) of the Policy.
Complainant has established this element.
DECISION
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 <tdbautoloan.com>, <tdcardsales.com>, <tdcardservicis.com>, <tdonlineaccessplus.com> and <tdbilling.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 12, 2021
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