The Toronto-Dominion Bank v. Forsyte Corporation
Claim Number: FA0808001219604
Complainant is The Toronto-Dominion Bank (“Complainant”), represented by Peter
W. Choe, of Gowling Lafleur
Henderson LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcnadatrust.com>, registered with Nametorrent.ca.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 11, 2008.
On August 14, 2008, Nametorrent.ca confirmed by e-mail to the National Arbitration Forum that the <tdcnadatrust.com> domain name is registered with Nametorrent.ca and that Respondent is the current registrant of the name. Nametorrent.ca has verified that Respondent is bound by the Nametorrent.ca 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
19, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 8, 2008
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@tdcnadatrust.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 16, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tdcnadatrust.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 <tdcnadatrust.com> domain name.
3. Respondent registered and used the <tdcnadatrust.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The
Toronto-Dominion Bank, is one of
Respondent, Forsyte Corporation, registered the <tdcnadatrust.com> domain name on September 28, 2007, which resolves to a website offering services competing with Complainant.
Respondent has also been the respondent in other UDRP decisions wherein the disputed domain names were transferred to the respective complainants in those cases. See, e.g., Fireman’s Fund Ins. Co. v. Forsyte Corp., FA 1055246 (Nat. Arb. Forum Sept. 17, 2007); see also Citizens Fin. Group, Inc. v. Forsyte Corp., FA 1086584 (Nat. Arb. Forum Nov. 12, 2007); see also Assurant, Inc. v. Forsyte Corp., FA 1216476 (Nat. Arb. Forum Sept. 9, 2008).
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
The Panel finds that Complainant’s registration with the CIPO is sufficient to establish rights in the TD and CANADA TRUST marks pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also 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 the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s <tdcnadatrust.com>
domain name is a typosquatting version of the combination of its TD and CANADA
TRUST marks with the “a” of “
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
In consideration of Policy ¶ 4(a)(ii),
the Panel first examines whether or not Complainant has met its burden of
establishing a prima facie case
against Respondent. The Panel finds that
Complainant has met this threshold, and that the burden shifts to Respondent to
affirmatively demonstrate that it has rights or legitimate interests in the <tdcnadatrust.com>
domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also F. Hoffmann-La Roche AG v. Di
Salvatore, D2006-1417 (WIPO Feb. 1, 2007)
(“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the
burden of proof shifts from the Complainant to the Respondent once the
Complainant has made out a prima facie case that the Respondent has no rights
or interests in the domain names.”).
However, the Panel has received no response in this
case. Therefore, the Panel may infer
that Respondent lacks rights and legitimate interests in the disputed domain
name. Nonetheless, the Panel will
evaluate whether or not the elements of Policy ¶ 4(c) have been met. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it
is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also
Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Complainant contends that Respondent has no connection, license or other affiliation with Complainant to use the TD and CANADA TRUST marks in connection with the <tdcnadatrust.com> domain name. Moreover, there is nothing else in the record that indicates that Respondent is or ever was commonly known by the disputed domain name; even the WHOIS information states that Respondent is known as “Forsyte Corporation.” Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant asserts that the disputed domain name is being
used commercially and in competition with Complainant due to the display of
competing links on the resolving website.
The <tdcnadatrust.com> domain name sells products and
services in direct competition with those offered in association with
Complainant’s business. The Panel finds
this is neither a bona fide offering
of goods or services under Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO
Jan. 21, 2003) (“Typosquatting . . . as a means of redirecting consumers
against their will to another site, does not qualify as a bona fide offering of
goods or services, whatever may be the goods or services offered at that
site.”); see
also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003)
(finding that the respondent was not using the domain name within the
parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain
name to take advantage of the complainant's mark by diverting Internet users to
a competing commercial site).
Additionally, the Panel finds that
Respondent lacks rights and legitimate interests in the disputed domain name
due to its typosquatting of Complainant’s TD and CANADA TRUST marks pursuant to
Policy ¶ 4(a)(ii).
See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19,
2003) (finding that the 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’”); see also 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> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
This Panel has found that Respondent registered a
typosquatted version of Complainant’s TD and CANADA TRUST marks for its
disputed domain name pursuant to Policy ¶ 4(a)(i). In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel stated “Respondent’s
registration and use of [the <zonelarm.com> domain name] that capitalizes
on the typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).”
Similarly, this Panel finds that Respondent’s use of the typosquatted
domain name constitutes evidence of bad faith registration and use under Policy
¶ 4(a)(iii). See K.R.
USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb.
Forum Sept. 18, 2003) (finding that the respondent’s
registration and use of the <philadelphiaenquirer.com> and
<tallahassedemocrat.com> domain names capitalized on the typographical
error of Internet users seeking the complainant's THE PHILADELPHIA
INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith
pursuant to Policy ¶ 4(a)(iii)); see also
Dermalogica, Inc. v. Domains to Develop,
FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding
that the <dermatalogica.com> domain name was a “simple misspelling” of
the complainant's DERMALOGICA mark which indicated typosquatting
and bad faith pursuant to Policy 4 ¶ (a)(iii)).
Furthermore, Respondent has been the respondent in previous UDRP decisions wherein the disputed domain names were transferred to the respective complainants in those cases. See, e.g., Fireman’s Fund Ins. Co. v. Forsyte Corp., FA 1055246 (Nat. Arb. Forum Sept. 17, 2007); see also Citizens Fin. Group, Inc. v. Forsyte Corp., FA 1086584 (Nat. Arb. Forum Nov. 12, 2007). The Panel finds that these previous decisions demonstrate a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Moreover, the disputed domain name resolves to a website offering products and services in direct competition with Complainant. The Panel finds this competitive and disruptive use sufficient to establish Respondent’s bad faith registration and use of the <tdcnadatrust.com> domain name pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The fact that the <tdcnadatrust.com> domain name is
confusingly similar to Complainant’s marks and commercially offers competitive
products for Respondent’s commercial gain strengthens the Panel’s findings that
Respondent registered and is using the disputed domain name in bad faith under
Policy ¶ 4(b)(iv).
See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan.
8, 2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdcnadatrust.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 30, 2008
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