national arbitration forum

DECISION

THE TORONTO-DOMINION BANK v. Naveen Masade

Claim Number: FA1205001442973

PARTIES

Complainant is The Toronto-Dominion Bank (“Complainant”), Canada. Respondent is Naveen Masade (“Respondent”), Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tdcanadatrust.xxx>, registered with Wild West Domains, 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.

Dr. Reinhard Schanda as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2012; the National Arbitration Forum received payment on May 9, 2012.

On May 10, 2012, Wild West Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <tdcanadatrust.xxx> domain name is registered with Wild West Domains, Inc and that Respondent is the current registrant of the name. Wild West Domains, Inc has verified that Respondent is bound by the Wild West Domains, Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tdcanadatrust.xxx. Also on May 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on May 23, 2012.

On May 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant

Complainant

Complainant, The Toronto-Dominion Bank, provides banking, financial, and real estate services, among others, under its TD, TD BANK, and CANADA TRUST marks.
Complainant owns the following trademark registrations with the Canadian Intellectual Property Office (“CIPO”):

i. TD BANK (Reg. No. TMA549,396 registered August 7, 2001);

ii. TD and Design (Reg. No. TMA644,911 registered July 26, 2005); and

iii. CANADA TRUST (Reg. No. TMA409,300 registered March 12, 1993).

Complainant owns the following trademark registrations with the United States Patent and Trademark Office ("USPTO"):

i. TD BANK (Reg. No. 3,788,055 registered May 11, 2010); and

ii. TD (Reg. No. 1,649,009 registered June 25, 1991).

The <tdcanadatrust.xxx> domain name is confusingly similar to the TD and CANADA TRUST marks where it combines the marks and adds the top-level domain (“TLD”) “.xxx.”
Respondent is not commonly known by the domain name as evidenced by the WHOIS information on file and the fact that Complainant has not authorized Respondent’s use of Complainant’s marks.
Respondent’s is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <tdcanadatrust.xxx> domain name under Policy ¶ 4(c)(iii) as the domain name redirects Internet users to a parked website with GoDaddy.com.
Respondent registered the disputed domain name in bad faith because it had constructive and actual knowledge of Complainant’s famous marks.
Respondent has used the disputed domain name in bad faith by resolving the domain name to a parked website featuring third-party hyperlinks.

B. Respondent

1. Respondent has no interest in the disputed domain name and did not purchase the disputed domain name to conduct any business in bad faith.

2. Respondent no longer wishes to possess the disputed domain name.

3. Respondent has not conducted any business through the disputed domain name and did not learn that the disputed domain name was redirecting to the GoDaddy.com page until receiving the Complaint.

4. Respondent has never received any fees from its domain name usage.

5. Respondent was aware of Complainant’s marks and registered the disputed domain name because it was available, but never intended to offer any content through the domain name.

6. Respondent would like to release the disputed domain name to Complainant.

FINDINGS

The Panel finds that:

1. the Domain Name <tdcanadatrust.xxx> is confusingly similar to Complainant’s registered trademarks,

2. the Respondent has not established any right or legitimate interest in the Domain Name <tdcanadatrust.xxx> and

3. the Respondent has registered and is using the Domain Name <tdcanadatrust.xxx> in bad faith.

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."

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.

Preliminary Issue: Consent to Transfer

The Panel holds that Respondent consents to transfer the <tdcanadatrust.xxx> domain name to Complainant. However, after the initiation of this proceeding, Wild West Domains, LLC, placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <tdcanadatrust.xxx> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

Thus, the Panel decides to honor Respondent’s request and to issue a decision ordering the immediate transfer of the <tdcanadatrust.xxx> domain name to Complainant.

DECISION

Having established and determined that the requests of the parties in this case are identical, the Panel concludes that relief shall be GRANTED.

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

Dr. Reinhard Schanda, Panelist

Dated: June 4, 2012