The Toronto-Dominion Bank v. Alison Madison / brickcode Technology / Tony
Claim Number: FA2203001990115
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Alison Madison / brickcode Technology / Tony (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <td-online-bank.com>, <td-onlinebanking.com>, and <td-onlineservice.com>, registered with NameCheap, Inc..
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2022; the Forum received payment on March 29, 2022.
On March 29, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <td-online-bank.com>, <td-onlinebanking.com>, and <td-onlineservice.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 30, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2022 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@td-online-bank.com, postmaster@td-onlinebanking.com, postmaster@td-onlineservice.com. Also on March 30, 2022, 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 April 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the domain names all use a similar composition format of hyphenated words, all have been registered with the same registrar, all emails listed in the verification email are publicly available and anonymous, and all include similar discrepancies in the contact information.
The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Respondents are collectively referred to as ‘Respondent.’
A. Complainant
i) Complainant is a banking and financial services company. Complainant has rights in the TD mark through its registration with the Canadian Intellectual Property Office (“CIPO”) (e.g., CIPO TMA396,087, registered March 20, 1992) and the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. 1,649,009, registered June 25, 1991). The disputed domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and add hyphenated terms related to online banking, along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its TD marks in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses, but instead host parked pay-per-click links and/or inactively holds the disputed domain names.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the marks. Respondent attracts Internet users for commercial gain by hosting parked, pay-per-click links and/or inactively holds the disputed domain names’ resolving websites. Respondent hid its identity behind a WHOIS privacy service. Respondent failed to respond to Complainant’s cease-and-desist letter.
B. Respondent
Respondent did not submit a timely, formal response in this proceeding. In email correspondence, Respondent notes that it has “disabled” three domain names that are not at issue in this proceeding.
1. The disputed domain names were registered on the following days: <td-online-bank.com> on March 3, 2021, <td-onlinebanking.com> on May 5, 2021 and <td-onlineservice.com> on August 31, 2021.
2. Complainant has established rights in the TD mark through its registration with the Canadian Intellectual Property Office (“CIPO”) (e.g., CIPO TMA396,087, registered March 20, 1992) and the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. 1,649,009, registered June 25, 1991).
3. The <td-online-bank.com> domain name resolves to a website, which features various pay-per-click links, some of which directly compete with Complainant's business.
4.The <td-onlinebanking.com> and <td-onlinebanking.com> domain names resolve to inactive sites.
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 claims rights in the TD mark through its registration with the Canadian Intellectual Property Office (“CIPO”) (e.g., CIPO TMA396,087, registered March 20, 1992) and the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. 1,649,009, registered June 25, 1991). Registration with the USPTO and the CIPO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See THE TORONTO-DOMINION BANK v. Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho, FA 1724017 (Forum May 17, 2017) (finding registrations with the USPTO and CIPO are satisfactory demonstrations of Policy ¶ 4(a)(i) rights). Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names <td-online-bank.com>, <td-onlinebanking.com>, and <td-onlineservice.com> are identical or confusingly similar to Complainant’s TD mark as they incorporate the mark in its entirety and add hyphens and various terms related to online banking services, along with the “.com” gTLD. Adding hyphenated generic and/or descriptive terms that relate to a Complainant’s business, along with the “.com” gTLD is generally considered insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds each of the disputed domain names is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its TD mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS of record identifies Respondent as “Alison Madison”, “brickcode Technology” and “Tony”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its TD marks in the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host parked, pay-per-click links, or inactively holding the disputed domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the <td-online-bank.com> domain name’s resolving website, which features various pay-per-click link. Respondent is using the disputed domain name <td-online-bank.com> to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business. For instance, the website at which the disputed domain name resolves features multiple third-party links for “loans”, “what stocks to invest in” and “checking account online opening.” Complainant provides screenshots of the <td-onlinebanking.com> and <td-onlinebanking.com> domain names which currently resolve to inactive sites and are not being used. Therefore, the Panel finds Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent uses the disputed domain names for bad faith attraction for commercial gain. Such behavior is generally demonstrative of bad faith, and may be established under Policy ¶¶ 4(b)(iv) where a Respondent is hosting parked, pay-per-click links on the disputed domain name’s resolving website. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 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)”). The Panel recalls Complainant’s screenshots of the <td-online-bank.com> domain name’s resolving website, which features various pay-per-click link. Respondent is using the disputed domain name <td-online-bank.com> to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business. Therefore, the Panel finds that Respondent registered and uses the disputed domain name <td-online-bank.com> in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered and uses the disputed domain names <td-onlinebanking.com> and <td-onlinebanking.com> in bad faith by inactively holding their resolving websites. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant is the second largest bank in Canada and sixth largest bank in North America. Complainant’s marks are famous to countless customers around the world, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names <td-onlinebanking.com> and <td-onlinebanking.com>.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names <td-onlinebanking.com> and <td-onlinebanking.com> constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Finally, Complainant argues that Respondent registered the disputed domain names <td-online-bank.com>, <td-onlinebanking.com>, and <td-onlineservice.com> with actual knowledge of Complainant’s mark. Per Policy ¶ 4(a)(iii), actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant asserts that it is the second largest bank in Canada and sixth largest bank in North America. Complainant’s marks are famous to countless customers around the world. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the TD marks when it registered the disputed domain names, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <td-online-bank.com>, <td-onlinebanking.com>, and <td-onlineservice.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 28, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page