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Meloche Monnex Inc., and The Toronto-Dominion Bank v. Konstantin Vydria [2005] GENDND 159 (22 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Meloche Monnex Inc., and The Toronto-Dominion Bank v. Konstantin Vydria

Case No. D2004-1045

1. The Parties

The Complainants are Meloche Monnex Inc., Montreal, Quebec, Canada, and The Toronto-Dominion Bank, Toronto, Ontario, Canada, represented by Goudreau Gage Dubuc, Canada.

The Respondent is Konstantin Vydria, Richmond Hill, Ontario, Canada, represented by Malcolm Mansfield, Canada.

2. The Domain Name and Registrar

The domain name in dispute <tdmelochemonnex.com> (hereinafter “the domain name in dispute”) is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2004. On December 10, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December 10, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2005. The Response was filed with the Center on January 24, 2005.

The Center appointed J. Nelson Landry as the sole panelist in this matter on February 14, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Meloche Monnex Inc. (hereinafter “Complainant Meloche Monnex”) is a Canadian Insurance company with approximately 3000 employees across Canada and a portfolio of approximately 1,300,000 policies in force and is the owner of the several registered trademarks in Canada, with a disclaimer for the word Meloche, being primarily a surname. According to the registrations, MELOCHE MONNEX and MELOCHE MONNEX & design are used since September 1991 in connection with insurance services. The trademark MELOCHE MONNEX is also registered in the United States since February 1995 and a section 8 affidavit was filed and accepted in 2001. Complainant Meloche Monnex owns at least 6 other trademarks registered in Canada and constituted of one or both of the terms MELOCHE and MONNEX (herein referred to as the “Trademark” or “Complainants’ Trademarks”).

The Toronto-Dominion Bank (hereinafter “Complainant TD Bank”) is a major bank and part of TD Bank Financial Group, which offers a full range of financial services and owns TD Canada Trust, TD Waterhouse. Complainant TD Bank has offices around the world and the TD Bank Financial Group has more than 51,000 employees with approximately 13 million customers worldwide. Complainant TD Bank is the owner of at least 200 active pending or registered trademarks incorporating the particle “TD”, used since at least 1970 in connection with banking and financial services. (herein referred to as the “Trademarks” or “Complainants’ Trademarks”). Complainants Meloche Monnex and TD Bank are related companies within the same group.

Complainant Meloche Monnex owns 16 domain names registered in 1996 and 2001 while Complainant TD Bank owns 6 domain names registered in 2001. Thirty-five other domain names were registered by the Complainants or affiliates thereof in October 2004. All these domain names are constituted of one or both of the terms TD, MELOCHE and MONNEX.

Complainant Meloche Monnex also uses the expression TD Meloche Monnex as a trade name further to a license granted by the Complainant TD Bank. The trade name TD Meloche Monnex is used extensively on its website “www.melochemonnex.com”.

The domain name in dispute was registered by the Respondent on March 15, 2004.

The Complainants have not licensed or otherwise permitted the Respondent to use Complainants’ Trademarks and trade name or to apply for any domain name incorporating these Trademarks.

Complainant Meloche Monnex first acknowledged the registration of the domain name in dispute by the Respondent further to an investigation in 2004 as to the status of the domain names which it had planned to register for its own use. A series of e-mails was exchanged between September 8 and November 12, 2004, Complainant Meloche Monnex having written to the Respondent to express its rights then responded to legal counsel of the Respondent who asked the amount the Complainant would be willing to pay to acquire the domain name in dispute and offered to pay the direct expenses related to the registration of the domain name. Then Respondent’s legal counsel contacted Complainant Meloche Monnex and informed it of his client’s refusal and demanded the sum of 20,000 Canadian dollars.

On December 6, 2004, the domain name in dispute was used with a home page entitled “Insurance Portal for Canadians”.

5. Parties’ Contentions

A. Complainant

The Complainants represent that they have invested substantial amounts for the advertising and promotion of their Trademarks and that they have, through the years, developed valuable goodwill in such Trademarks and that as a result of their efforts, Complainants’ Trademarks have become distinctive and have come to identify the source of the Complainants’ services and products from the services and products of others.

Complainants submit that the domain name in dispute consists of the two registered Trademarks MELOCHE MONNEX and TD, added together, and that a consumer would have no difficulty noting that this composition is confusingly similar to the registered Trademarks of the Complainants, the Complainants’ domain names and trade name and in that the domain name in dispute incorporates TD, MELOCHE and MONNEX together and that that the inclusion of the top level domain designator “.com” does not help to distinguish the Respondent’s domain name from the Complainants’ Trademarks.

Complainants further submit that the fact that the domain name in dispute is a combination of different Trademarks as well as the TD Meloche Monnex trade name should not be an impediment to the application of the Policy and refer to four decisions previously rendered by other WIPO panels which decisions were rendered in the context of the registration of litigious domain names incorporating two well known marks on the same day that two major corporations identified by their respective trademarks announced their eventual merger. See Perfetti S.p.A., Van Melle N.V. and Van Melle Nederland B.V.v. MIC, WIPO Case No. D2001-0400; Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142; The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones, WIPO Case No. D2000-0731; and Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112.

According to Complainants, it is clear that the Respondent’s intention from the outset is to force the Complainants to purchase the domain name in dispute at a price wholly disproportionate to the Respondent’s cost incurred and that Respondent must also have been aware of the Complainants’ Trademark rights when he registered the domain name in dispute on March 15, 2004. At that time, the Complainants had been using the Trademarks TD and MELOCHE MONNEX for quite some time and the Complainants’ Domain names and trade name TD Meloche Monnex was already used by Complainant Meloche Monnex on its website.

Complainants allege that the use of the domain name in dispute only after the first contact of the Complainant Meloche Monnex further indicates that the domain name in dispute is used as an instrument of extortion in order to attract financial gain. Indeed, the Respondent has started using the domain name in the same business domain as the Complainants, i.e. in the financial and insurance domain, and has even offered links to direct competitors of the Complainants, which add to the likelihood of confusion.

It is obvious that the combined form of the domain name in dispute could not have been coined by pure coincidence but is an opportunistic act since it includes “Meloche Monnex” which is quite distinctive and reflects the association of Complainant Meloche Monnex and “ TD” of the related company, the chartered bank Complainant TD Bank, which is unique.

The use of the domain name in dispute <tdmelochemonnex.com> constitutes trademark, domain name and trade name infringement of the Complainants’ rights.

Moreover, according to the Complainants, the Respondent was well aware that by using the domain name in dispute and by offering links to the websites of competitors on its website, it would interfere with the Complainants’ businesses by diverting potential customers from the Complainants’ websites to their competitors’ websites and by demanding a sum of 20,000 Canadian dollars to transfer the domain name in dispute to the Complainants, acts which are all made in bad faith.

B. Respondent

Respondent submits that bad faith is primarily known for the purpose of selling, renting or otherwise transferring a domain name registration to a complainant who is the owner of the trademark or to a competitor of that complainant for valuable consideration in excess of the documented out of pocket costs directly related to the domain name and that Respondent’s domain name was not acquired for such purpose. He alleges that he never had the intention to contact the Complainants to sell, rent, or transfer the name registration.

Respondent contends that he was using the domain name in dispute in good faith as a conduit for public discussion on insurance in general. He had set up a chat line and a rating system for insurance and insurance companies, being merely an advocate of the public, attempting to monitor the insurance industry in general for the benefit of the public.

Respondent represents that the Complainants contacted him and demanded that he transfer the domain name in dispute. After careful consideration and instruction from counsel, he decided to offer the domain name for sale to the Complainants. Having developed the website, maintained it, and monitored the correspondence therein allegedly at considerable cost to him, he refused the direct cost amount and asked 20,000 Canadian dollars, a sum he considered to be fair and equitable and not to be in bad faith.

The Respondent further submits that he never, under any circumstances, disrupted or diverted business of the Complainants to a competitor nor did he attempt to attract, for commercial gain, internet users to the website or created confusion with the Complainants’ mark as an endorsement, source, sponsorship application of the Respondent’s website or of a product or service on the website.

The Respondent contends that he had no intention of attempting to prevent the Complainants from reflecting their Trademarks in a corresponding domain name, having noted that they are the owners of the trademarks and domain names of every conceivable permutation of TD and Meloche Monnex. The Respondent thought that if the name was valuable to the Complainants, they would have already claimed it. The Complainants had ample opportunity to register the domain name in dispute since the two companies merged in March 1992. In requesting every other conceivable name, it was thought that the name selected by the Respondent was not wanted by the Complainants since top level designations are the first chosen.

The Respondent contends he has rights and legitimate interests to the domain name in dispute in that before the Respondent received any notice of the dispute about the domain name, the Respondent was using the name and had developed a website and was engaged in public discussion with regard to insurance and insurance issues, making a legitimate and fair use of the domain name in dispute using it to evaluate insurance companies in general and to actively monitor the insurance companies in general for the good of the public.

The Respondent states that he is not using the domain name in bad faith, reiterating that he had no intention of selling the domain name to anyone. When approached by the Complainants, a question of how much would be paid for the transfer of the site arose and a figure was represented allegedly corresponding to many hours spent on research, building a website, advertising the site and engaging in public discussion on the site, all time and effort he thought to be worth something.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and

(ii) The respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant Meloche Monnex Inc. has amply demonstrated both in the Complaint and in the evidence adduced that it has rights in the Trademarks MELOCHE MONNEX which have been used since 1991 and are still used at the time of the Complaint in connection with insurance services. It is the owner of several registrations in Canada, in the United States and other countries in this respect wherein there is either Meloche or Monnex or both terms. The fact that there is a disclaimer for the surname Meloche does not deter from the unique and distinctive character of the combination of terms, namely the Trademarks which have acquired significant goodwill by reason of their long use.

The Complainant TD Bank has also amply demonstrated by its statements in the Complaint supported by ample evidence that it has rights in the Trademark TD which term TD is the distinctive element of several registrations, not only for the Trademark TD but also for numerous trademarks constituted of the term TD associated with other terms, all in association with its financial services.

As a consequence thereof, the Complainants have rights in their respective family of Trademarks comprising Meloche Monnex on the one hand and TD on the other hand. By reason of the extensive use thereof across Canada, they have in their own field of activities acquired a high level public recognition.

The domain name in dispute comprises the distinctive part TD of Complainant TD Bank and the Meloche Monnex part of Complainant Meloche Monnex and each component of the domain name in dispute is identical to the respective Trademarks of the Complainants. The Panel considers that the domain name in dispute is confusingly similar to the Complainants’ Trademark. As it was held by the Panel in Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112, “persons, worldwide, accessing the disputed domain name would be bound to think that the domain name has a connection with either Complainant or with the merge entity”. This Panel has verified at random several of the first twenty two domain names of Complainants and each time was linked to the home page of “www.meloche-monex.com”. An Internet visitor using the domain name in dispute would have expected to be linked to the same home page and not to the Respondent Insurance Portal for Canadians home page, as it was the case at least in December 2004.

The Panel decides that the domain name is confusingly similar to the Complainants’ Trademarks.

The first criteria has been met.

B. Rights or Legitimate Interests

The Respondent has attempted to answer the allegation of the Complainants that the former had no rights and interests in the domain name in dispute. Respondent attempted to demonstrate his legitimate interests in stating various reasons such as that the domain name in dispute was used as a conduit for public discussion on insurance in general, setting up a chat line and rating system for insurance and insurance companies and not diverting business of the Complainants to a competitor.

Yet Respondent has not adduced any evidence to that effect. The only evidence is that adduced by the Complainants. The Panel has examined carefully the evidence of the website of the Respondent as it has been put in evidence in Annex 12. It is of interest to observe that it is not using as domain name a generic description such as “insurance portal for Canadians” when Respondent invites Canadian consumers to its website. Once the Internet visitor, using the domain name in dispute, has, contrary to his or her expectations, reached the page “Insurance Portal for Canadian”, the visitor would see some windows where he or she is invited to do his or her own comparison homework or to engage in life chats. However, as it is put in evidence by the Complainants in Annex 12, we see that the visitor is given access to a window entitled “Search for StateFarm.ca Agency” and there he is linked to the “www.StateFarm.ca” website wherein he is invited to two area of investigations, one entitled “Locate a StateFarm Agent by postal code” and another one entitled “Learn more about- What a StateFarm Agent can do for you”.

In the Panel’s view, this is certainly evidence that Internet visitors, upon using the domain name in dispute, are invited or directed to a competitor’s website despite the fact that visitors using the domain name in dispute would likely expect to reach a website of either of the Complainants.

In an effort to further verify the website of the Respondent, the Panel attempted on three different occasions during the decision period to visit the said website. In using the domain name in dispute, each time the Panel reached a website page entitled “Go Daddy.com - coming soon this web page is parked free, courtesy of Go Daddy”. The Panel could not access the website of the Respondent and further investigate what the Complainants have been able to do and observe on December 6, 2004, which was produced as Annex 12 to the Complaint.

It would appear that subsequent to the reception of the Complaint and the evidence, Respondent has either interrupted or terminated his activities under his website. It is certainly a surprising behavior for someone who contends that he has legitimate rights and interests in the domain name in dispute on one hand and spent so much time and effort and money to put up the website to claim 20,000 Canadian dollars of expenses and compensation for his development efforts on the other hand. This has created, in this Panel’s opinion, circumstances whereby Respondent’s position as to his rights and good faith is hardly credible.

By reason of the evidence adduced by the Complainants, first whereby Internet visitors are diverted to competitors such as StateFarm.ca or Agents, second the simple statements of the Respondent as to his intentions and activities without any evidence in support and third the unexplained interruption of its website under the domain name in dispute, this Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.

The second criteria has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainants contend, with reason, that the domain name in dispute was registered and used in bad faith.

The Complainants have observed the registration of the domain name in dispute when it wanted to proceed to additional registrations of various domain names in the fall of 2004. They already had registered sixteen (16) domain names in 1991 and six (6) in 2001.

As a result of discussion and negotiation entered by the Complainants’ counsel to find a solution and an offer to buy the domain name for the amount of the direct cost incurred for its registration, the Respondent refused the offer of Complainants and requested the payment of a sum of 20,000 Canadian dollars. These discussions took place between the period of September 8 to November 12, 2004, according to the evidence of Complainants which is not denied by the Respondent. It is interesting to observe again according to the Complainants that the latter did not see any use of the domain name in dispute or website by the Respondent on September 8, 2004, or before (par. C, B-3 and B-4 of the Complaint and the Respondent did not provide any documentary or corroborating evidence thereof.

It would appear that the Respondent has started to use the domain name at a date unknown thereafter and it was on December 6, 2004, that the Complainants could see use of the domain name with a homepage entitled “Insurance Portal for Canadians” but the site was also offering links to different websites including to competitors of the Complainants, as the Panel has observed in the evidence adduced by the Complainants (Annex 12). The link to a competitor of the Complainant is a business activity. This fact of “wanting to do business at that site” was expressly admitted by his lawyer in his October 6 e-mail. (see Annex 13). It is also of interest to observe that when, on November 12, 2004, legal counsel for the Respondent demanded the sum of 20,000 Canadian dollars, there is no evidence by Respondent that, at that time, the website was in operation and that its set-up had justified this high amount of expenses.

The Respondent further advanced that if the Complainants have wanted to protect their domain name, they should have registered many variations including the one that the Respondent had registered. Yet to the Panel notes that when the Respondent registered the domain name in dispute with Go Daddy, he accepted the Uniform Domain Name Dispute Resolution Policy. This Policy does not state that a registrant may register a domain name as long as it has not already been adopted or registered by another party. The Policy stipulates that the registrant clearly represents, as stated in paragraph 2b), that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”. It is clear, here, that the domain name in dispute is in violation of the Trademark rights of both Complainants in respect of their respective Trademarks.

Furthermore, in the opinion of this Panel, the Respondent was well aware of the existence of these Meloche Monnex and TD families of Trademarks. This is even confirmed by Respondent himself when he observed in his Response that the Complainants “had ample opportunity to register the domain name in question since the two companies merged in March 1992”. This and the observation of available domain names are constituting a clear acknowledgment by Respondent of his awareness of the existence of the two companies and their Trademarks and the twenty two (22) domain names at the time that the domain name in dispute was registered.

The Panel finds that the domain name in dispute was registered in bad faith.

As already mentioned hereinabove the set up of the website under the domain name in dispute was made by the Respondent between September 8 and December 6, 2004, and, as proven, Internet visitors using the domain name in dispute were redirected to competitors of the Complainants. Furthermore, while the Complainants offered to buy the domain name for the direct costs at a time when all appearances were to the effect that the domain name was not in use and furthermore Complainant Meloche Monnex having stated on October 7 that any other financial consideration will be perceived as lack of good faith, the Respondent, without any detailed justification or explanation for the amount he requested, on November 12 demanded the payment of a sum of 20,000 Canadian dollars which is quite considerable considering that a domain name registration direct cost is less than 1,000 Canadian dollars. This was done at the Respondent’ sole initiative having received clear notice as to possible bad faith.

In his Response, the Respondent made numerous statements to justify his rights and activities but these statements were contradicted by documentary evidence of the Complainants on the one hand and were not supported by evidence that the Respondent may have adduced, if available, to confirm his assertions.

For these reasons, the Panel is of the view that the domain name in dispute has been registered and is being used in bad faith.

The third criteria has been met.

7. Decision

The Panel concludes that:

(a) the domain name <tdmelochemonnex.com> is confusingly similar to the Complainants’ Trademarks;

(b) the Respondent has no rights or legitimate interests in the domain name in dispute;

(c) the domain name in dispute has been registered and is being used in bad faith.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tdmelochemonnex.com> be transferred to the Complainant Meloche Monnex Inc.

J. Nelson Landry
Sole Panelist

Date: February 22, 2005