national arbitration forum

DECISION

The Toronto-Dominion Bank v. Zhelizko Vodenichrov

Claim Number:  FA0411000363823

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 p. 85 9005, Bulgaria 888211023.

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2004.

On November 15, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <tdcanadatrsut.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 November 18, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 8, 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@tdcanadatrsut.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 16, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <tdcanadatrsut.com> domain name is confusingly similar to Complainant’s TD CANANA TRUST mark.

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

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

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

FINDINGS

Complainant, TD Bank, is one of Canada’s largest financial institutions, providing financial services for Canadians for almost 150 years.  TD Bank’s acquisition of CT Financial Services Inc., the holding company of The Canada Trust Company and the publicly held shares of TD Waterhouse Group, Inc, among others, make it a major player in the international banking market.

Complainant has a extensive portfolio of trademark holdings, including the marks for TD and CANADA TRUST marks for banking and financial services, registered with the Canadian Intellectual Property Office (CIPO) on March 20, 1992 and March 12, 1993, respectively (Reg. Nos. 396,087 and 447,666). 

Complainant has used the TD CANADA TRUST mark, a combination of its TD and CANADA TRUST marks, continuously in commerce since 2001.

Respondent, Zhelizko Vodenichrov, registered the <tdcanadatrsut.com> domain name on January 14, 2004.  Respondent is using the <tdcanadatrsut.com> to provide information on TD CANADA TRUST bank, as well as listing advertisements for credit cards, mortgages, debt relief, and working from home.

Complainant has previously prevailed against Respondent over the <tcanadatrust.com> domain name. See Toronto-Dominion Bank v. Vodenichrov, FA 314344 (Nat. Arb. Forum Oct. 1, 2004).

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 asserts common law rights in the TD CANADA TRUST.  The Panel finds that Complainant has adequate rights in the TD CANADA TRUST mark to bring a Complaint under the Policy because Complainant has established common law rights in the TD CANADA TRUST mark through extensive use of the mark in commerce for banking services.  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark; see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) finding that Complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark.  Furthermore, Complainant’s registration of the TD and CANADA TRUST marks supports Complainant’s claim that it has common law rights in the TD CANADA TRUST mark.

The Panel finds that Respondent’s <tdcanadatrsut.com> domain name is confusingly similar to Complainant’s TD CANADA TRUST mark because the only difference is the inversion of the letters “s” and “u,” which does not significantly distinguish the domain name from the mark.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”; see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) finding that the domain name <peir1.com> is confusingly similar to Complainant's PIER 1 mark.

Rights or Legitimate Interests

Respondent has not filed a Response in this matter.  The Panel finds that, in the absence of a Response, it may accept all reasonable assertions by Complainant as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also 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.

Complainant asserts that Respondent is appropriating Complainant’s mark to advertise financial services provided by others.  Appropriating someone’s mark to offer others’ commercial services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services; see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) finding no rights or legitimate interests in the disputed domain name where Respondent was using Complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under Complainant’s mark.

There is nothing in the record, including the WHOIS domain name registration information, which indicates that Respondent is commonly known by 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 Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”).

Registration and Use in Bad Faith

Respondent has registered a domain name that would be identical to Complainant’s TD CANADA TRUST BANK except for the inversion of the letters “s” and “u.”  The Panel infers that Respondent had actual notice of Complainant’s rights in the mark and was relying on attracting Complainant’s customers by preying on those who misspelled Complainant’s mark.  This practice is known as “typosquatting.”   The Panel finds that typosquatting is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> disputed domain names were typosquatted versions of Complainant's LTD COMMODITIES mark and "Respondent's 'typosquatting' is evidence that Respondent lacks rights or legitimate interests in the disputed domain names"; see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (WIPO Sept. 19, 2003) finding that Respondent lacked rights and legitimate interests in the disputed domain names because it "engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter 'x' instead of the letter 'c'". 

Respondent has appropriated Complainant’s mark in the disputed domain name to advertise others’ financial services.  The Panel finds that appropriating another’s mark in a domain name for commercial gain is bad faith pursuant to Policy ¶ 4(b)(iv).  See 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; see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name to a website that offers a number of web services.

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 <tdcanadatrsut.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  December 30, 2004

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