DECISION

The Toronto-Dominion Bank v. Lorna Kang

Claim Number:  FA0303000150816

PARTIES

Complainant is The Toronto-Dominion Bank, Toronto, ON, CANADA (“Complainant”) represented by Peter W. Choe, of Gowling Lafleur Henderson LLP. Respondent is Lorna Kang, Perak, MALAYSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwtdcanadatrust.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

PANEL

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 20, 2003; the Forum received a hard copy of the Complaint on March 21, 2003.

On March 21, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <wwwtdcanadatrust.com> is registered with Dotregistrar.Com and that Respondent is the current registrant of the name. Dotregistrar.Com has verified that Respondent is bound by the Dotregistrar.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwtdcanadatrust.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wwwtdcanadatrust.com> domain name is confusingly similar to Complainant’s TD and CANADA TRUST marks.

2. Respondent does not have any rights or legitimate interests in the <wwwtdcanadatrust.com> domain name.

3. Respondent registered and used the <wwwtdcanadatrust.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, the Toronto-Dominion Bank, is a bank chartered under the laws of Canada that conducts business under the shortened TD Bank moniker. Complainant is one of Canada’s largest financial institutions and has provided financial services to Canadians for almost 150 years.

Complainant and its affiliated companies are owners of the TD and CANADA TRUST marks, and operate their banking business using the TD CANADA TRUST mark. In addition to the common law rights of TD Bank and its affiliates, the Canadian Intellectual Property Office (“CIPO”) has issued Complainant the following registrations for its marks, inter alia: TMA 396,087 for the TD mark registered on March 20, 1992; and TMA 409,300 for the CANADA TRUST mark registered on March 12, 1993.

Additionally, besides representing itself to the banking public using its TD and CANADA TRUST marks, Complainant’s main website is located at <tdcanadatrust.com>. Complainant’s domain name and corresponding website have received several awards for excellence and have acquired substantial goodwill in the online banking industry.

Respondent, Lorna Kang, registered <wwwtdcanadatrust.com> on November 23, 2001. Complainant’s investigation of Respondent indicates that the subject domain name resolves to <gotoo.com/treasure/finance.html>, where links to various websites (including <adultsingles.com> and <ancestry.com>), as well as pop-up advertisements, appear.

Complainant’s investigation also reveals that Respondent habitually registers domain names that infringe on others’ marks, and has been labeled a “typosquatter” in another dispute decided under the Policy. Vanguard Group, Inc. v. Kang, D2002-1064 (WIPO Jan. 20, 2003).

DISCUSSION

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the TD and CANADA TRUST marks by registering its marks with CIPO, and subsequent continuous use of the marks in commerce. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <wwwtdcanadatrust.com> domain name is confusingly similar to Complainant’s TD and CANADA TRUST marks. Respondent’s actions constitute typosquatting, where a common typographical error, such as deletion of the “.” after the “www” introduction, is incorporated into an established mark. Additionally, Respondent’s domain name is a combination of Complainant’s registered marks, and seeks to emulate Complainant’s successful <tdcanadatrust.com> domain name. The mere combination of Complainant’s marks in a domain name fails to overcome a confusingly similar analysis under the Policy. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where Respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has presented a prima facie case before the Panel, comprised of evidence supporting its assertions and inferences. Because Respondent did not submit a Response in this proceeding, it has failed to propose any set of circumstances that would suggest it has rights or interests in the <wwwtdcanadatrust.com> domain name under Policy ¶ 4(a)(ii). Complainant’s assertions have gone unopposed and unrefuted. Therefore, it is proper for the Panel to accept all reasonable inferences made by Complainant as true, unless clearly contradicted by the evidence. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complaint to be deemed true); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Unrefuted evidence indicates that Respondent’s domain name resolves to an unrelated website, located at <gotoo.com/treasure/finance.html>, where links to various websites as well as pop-up advertisements appear. Based on the content of the third-party websites, Respondent is presumed to benefit monetarily from its use of Complainant’s marks in its domain name. As stated, Respondent’s activities constitute “typosquatting,” and as such, fail to establish rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii). See Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where Respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the Complaint); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

Respondent has never carried on business under the domain name’s “wwwtdcanadatrust” second-level domain. Further, Respondent is not authorized or licensed to make use of Complainant’s TD and CANADA TRUST marks in the domain name. The nonsensical nature of the domain name makes it unlikely that Respondent has rights or legitimate interests in <wwwtdcanadatrust.com> under the Policy. Respondent’s diversionary use of the domain name and pattern of typosquatting suggest Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s bad faith registration and use of the domain name is articulated under Policy ¶ 4(b)(iv). More specifically, a variety of circumstances indicate that Respondent intends to divert unsuspecting Internet users from Complainant’s website for commercial gain. As previously mentioned, Internet users attempting to access Complainant’s website who neglect to separate the “www” world-wide-web identifier from the “tdcanadatrust” second-level domain, will be directed to Respondent’s website. Respondent’s website contains various advertisements and hyperlinks to third-party websites and their related services. Respondent’s use of the domain name is misleading and confusing, and depreciates the goodwill associated with Complainant’s TD and CANADA TRUST marks. Therefore, Respondent’s use of the <wwwtdcanadatrust.com> domain name constitutes bad faith registration and use under the Policy. See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also  Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Additionally, Respondent’s registration of the <wwwtdcanadatrust.com> domain name, incorporating Complainant’s marks, was done with actual knowledge of Complainant’s rights in the marks, thus evidencing bad faith. The practice of typosquatting, of itself, has been determined to evidence bad faith under the Policy because it represents numerous harms the Policy seeks to address (e.g., intentional trademark infringement, unauthorized capitalization of another’s goodwill, and opportunistic exploitation of another’s mark, among others). See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (stating that “in typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wwwtdcanadatrust.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  April 28, 2003

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