DECISION

The Toronto-Dominion Bank v. Zhelizko Vodenichrov

Claim Number:  FA0408000314344

PARTIES

Complainant is The Toronto-Dominion Bank (“Complainant”), represented by Peter W. Choe, of Gowling Lafleur Henderson LLP, Commerce Court West, Suite 4900, Toronto, ON, M5L 1J3, Canada.  Respondent is Zhelizko Vodenichrov (“Respondent”),  Chaika, bl. 68/D, Varna, Na, 9005, Bulgaria.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tcanadatrust.com>, registered with Go Daddy Software, Inc.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 19, 2004; the Forum received a hard copy of the Complaint on August 24, 2004.

On August 19, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <tcanadatrust.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 August 24, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 13, 2004 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@tcanadatrust.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 September 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, 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."  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 <tcanadatrust.com> domain name is confusingly similar to Complainant’s TD CANADA TRUST mark.

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

3. Respondent registered and used the <tcanadatrust.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 with its principal place of business in Toronto, Ontario. Complainant is one of Canada’s largest financial institutions and has been providing quality financial services to Canadians for almost 150 years.

Complainant and its affiliated companies own trademark registrations for the TD (Reg. No. 396,087, issued Mar. 20, 1992) and CANADA TRUST (Reg. No. 409,300, issued Mar. 12, 1993) marks with the Canadian Intellectual Property Office (CIPO). Complainant has been using the composite mark TD CANADA TRUST for its banking business since 2001 when it acquired the Canada Trust organization. As such, Complainant has expended over $181,500 in advertising of its TD CANADA TRUST mark and has consequently built up considerable goodwill in the banking and finance industry.

Complainant also holds numerous other trademark registrations for the TD family of marks with the CIPO. Complainant’s trademark registrations are for services, including interactive online banking services, banking, real estate, insurance, securities, computerized data processing and trust company services, insurance services, lease and rental services, car and travel services and credit card services. Complainant operates it’s main website at the <tdcanadatrust.com> domain name, where consumers can access Complainant’s online services, including personal financial services, as well as news and tools relating to the numerous services Complainant provides.

Respondent registered the disputed domain name on January 16, 2004 and is using the domain name to divert Internet users to Respondent’s website, which offers finance and banking services and advertising.

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

Registration of a mark with a governmental authority is unnecessary for a complainant to establish rights in a mark if a common law mark has been established. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Complainant has established rights in the composite TD CANADA TRUST mark through ownership of a common law mark. A common law mark is established when a complainant’s goods or services become distinctive and acquire secondary meaning. Complainant established that through its long-term, continued use of the composite TD CANADA TRUST mark, Complainant and Complainant’s related goods and services have acquired secondary meaning and become distinctive of Complainant’s goods and services. Thus, Complainant has established secondary meaning in the TD CANADA TRUST mark through its continued and exclusive use. Furthermore, Complainant’s registration of the TD and CANADA TRUST marks with the CIPO supports Complainant’s common law rights in the TD CANADA TRUST mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“On account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

Respondent’s <tcanadatrust.com> domain name is confusingly similar to Complainant’s TD CANADA TRUST mark because the domain name merely deletes the letter “d” from Complainant’s mark, thus capitalizing on a common spelling and typing error, and adds the top-level domain “.com.” Deleting a letter from Complainant’s mark and adding a top-level domain do not negate the confusing similarity of the domain name in relationship to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the <tcanadatrust.com> domain name. Respondent’s failure to respond to the Complaint allows the Panel to assume that Respondent lacks rights and legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See 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, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are 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 Complainant to be deemed true).

Respondent is using the <tcanadatrust.com> domain name to divert Internet traffic to a website that offers finance and banking services similar to those offered by Complainant. Respondent’s use of a domain name confusingly similar to Complainant’s TD CANADA TRUST mark to redirect Internet users interested in Complainant’s banking and finance services to a website that offers similar services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of a website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“It would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business.”).

Moreover, Respondent has offered no evidence and no proof in the record suggests that Respondent is commonly known by the <tcanadatrust.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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

Registration and Use in Bad Faith

Respondent registered the <tcanadatrust.com> domain name for its own commercial gain. Respondent’s domain name diverts Internet users, who intend to search for a website under Complainant’s TD CANADA TRUST mark, to a website sponsored by Respondent that directly competes with Complainant’s business. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Moreover, Respondent has engaged in a practice called “typosquatting.” Respondent engaged in typosquatting when it registered and used the <tcanadatrust.com> domain name to divert Internet users who misspell Complainant’s TD CANADA TRUST mark to a website sponsored by Respondent for Respondent’s commercial gain. The practice of “typosquatting” itself evidences bad faith registration and use of a domain name under Policy ¶ 4(a)(iii). 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 Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (“by registering the “typosquatted” domain name in Complainant’s affiliate program, Respondent profits on the goodwill of Complainant’s protected marks and primary Internet domain names,” and such action evidences bad faith registration and use).

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

DECISION

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

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

James A. Carmody, Esq., Panelist

Dated:  October 1, 2004

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