The Toronto-Dominion Bank v. brian adams / Lindsey Roussel
Claim Number: FA2305002042638
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by CSC Digital Brand Services Group AB, Sweden. Respondent is brian adams / Lindsey Roussel (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names listed in the complaint are <etreasury-tdbank.com>, <etreasure-tdbank.com>, registered with Nicenic International Group Co., Limited.
For the reasons given below, the Panel finds that the only relevant domain name for this case is <etreasury-tdbank.com>.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on May 2, 2023; Forum received payment on May 2, 2023.
On May 2, 2023; May 07, 2023, Nicenic International Group Co., Limited confirmed by e-mail to Forum that the <etreasury-tdbank.com>, <etreasure-tdbank.com> domain names are registered with Nicenic International Group Co., Limited and that Respondent is the current registrant of the names. Nicenic International Group Co., Limited has verified that Respondent is bound by the Nicenic International Group Co., 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 May 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2023 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@etreasury-tdbank.com, postmaster@etreasure-tdbank.com. Also on May 9, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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. In support of this allegation it states that both of the domain names share nearly the exact same composition (one-letter difference), were registered with the same Registrar using the exact same privacy service and name servers, are not being used, and contain factual inconsistencies (and likely false WHOIS information) in the WHOIS.
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.”
The Panel finds that allegations above do not necessarily indicate that the domain names are under common control, in particular because, as discussed below, the WHOIS information for the <etreasury-tdbank.com> domain name is not necessarily false. That the same privacy service was used may be a consequence of using the same registrar. The names servers are those of a very well known content delivery network, used by many registrants.
Thus the Panel finds that Complainant has not presented sufficient evidence to find that both disputed domain names were registered by the same person or entity.
Under the Forum’s Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent.
Accordingly, the Panel will rule only on the <etreasury-tdbank.com>domain name, and it will dismiss, without prejudice, the complaint regarding the <etreasure-tdbank.com> domain name. See Brian Renner v. Contactprivacy.com, FA1007001335211 (Forum Aug. 26, 2010); see also Amazon Technologies, Inc. v. M M / shanwang chen / feifei lin / HUA ZHANG / L H / Eddie Nash / Heather Brooker, FA2111001973471 (Forum Dec 17, 2021).
A. Complainant
Complainant states that it is the second largest bank in Canada by market capitalization and deposits, and the sixth largest bank in North America. The bank was created in 1955 through the merger of the Bank of Toronto and The Dominion Bank, which were founded in 1855 and 1869, respectively. Complainant has over 86,000 employees and over 25 million clients worldwide. In the United States, the company operates as TD Bank (the initials are used officially for all U.S. operations). TD Bank now serves more than 9 million customers with a network of more than 1,300 branches, primarily located in the eastern United States. Complainant asserts rights in the TD BANK mark based upon its registration in the United States in 2010. The mark is well known.
Complainant alleges that the disputed domain name is are confusingly similar to its TD BANK trademark because it incorporates the mark in its entirety, merely adding a hyphen and the generic/descriptive terms “etreasury” as well as the generic top-level domain name (“gTLD”) “.com”.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s TD BANK mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent inactively holds the disputed domain name.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. The disputed domain name is not being used. Respondent had actual or constructive knowledge of Complainant’s rights in the TD BANK mark. Respondent registered the disputed domain name using a privacy shield. Respondent failed to respond to Complainant’s cease and desist letter. The WHOIS information is false.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark TD BANK and it to market financial services around the world. The mark is well known.
Complainant’s rights in its mark date back to at least 2010.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is not being used.
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 disputed domain name incorporates Complainant’s TD BANK mark in its entirety, merely adding a hyphen and the generic/descriptive terms “etreasury” as well as the generic top-level domain name (“gTLD”) “.com”. Under Policy ¶ 4(a)(i), adding a gTLD and/or hyphens and/or generic terms is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not licensed or otherwise authorized to use Complainant’s TD BANK mark and is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information for the disputed domain name lists the registrant as “brian adams”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The disputed domain name is not being used. Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that the WHOIS information is false, because the telephone number format is invalid. The address given in the WHOIS is a California, USA address. The telephone number is listed as “+3109389273”, which is not a valid US number. However, the number “+1 310 938 9273” could be a valid California phone number. Given that the omission of the “1” could be a typographical error, the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation and will not further discuss it.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, the disputed domain name is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint and Respondent used a privacy service, that is, it attempted to conceal its identity. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Panel dismisses, without prejudice, the Complaint against the <etreasure-tdbank.com> domain name.
Having established all three elements required under the ICANN Policy for the domain name <etreasury-tdbank.com>, the Panel concludes that relief shall be GRANTED for that domain name.
Accordingly, it is Ordered that the <etreasury-tdbank.com> domain name be TRANSFERRED from Respondent to Complainant and that the <etreasure-tdbank.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: June 5, 2023
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