Bank receives transfer in domain name dispute
In Toronto-Dominion Bank v Zhelizko Vodenichrov, a National Arbitration Forum (NAF) panellist has ordered the transfer of the domain name 'tcanadatrust.com' to the complainant.
Toronto-Dominion Bank (TDB), headquartered in Toronto, Canada, owns a TD CANADA TRUST mark and the 'tdcanadatrust.com' domain name, which hosts a website offering financial and banking services. It filed a complaint with NAF under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Zhelizko Vodenichrov (ZV), a Bulgarian entity, which was using 'tcanadatrust.com' to divert internet traffic to its website that provides similar services to those offered by TDB. No response to the complaint was filed by ZV.
NAF panellist James Carmody found that TDB had satisfied all the elements required for transfer under Paragraph 4(a) of the UDRP, namely:
- the domain name was identical or confusingly similar to a trademark or service mark in which TDB has rights;
- ZV had no rights or legitimate interests in respect of the domain name; and
- the domain name had been registered and used in bad faith.
In relation to the first element, Carmody found that deleting a letter from TDB's trademark and adding the top-level domain '.com' did not negate the confusing similarity between the disputed domain name and the mark.
Next, since ZV had failed to respond to the complaint, Carmody was free to accept all reasonable allegations submitted by TDB. He held that ZV's use of a domain name that was confusingly similar to TDB's mark to redirect internet users interested in TDB's financial and banking services to a website offering similar services was neither a bona fide offering of goods and services, nor a legitimate non-commercial or fair use of the domain name.
Finally, Carmody found that ZV registered 'tcanadatrust.com' for its own commercial gain. The domain name diverted internet users, searching for a website under TDB's TD CANADA TRUST mark, to a website sponsored by ZV that directly competed with TDB's business. ZV's practice of diversion, motivated by commercial gain through the use of a confusingly similar domain name was evidence of bad-faith registration and use.
Moreover, Carmody held that ZV had engaged in typosquatting. This practice itself evidences bad faith registration and use of a domain name under Paragraph 4(a)(iii).
Accordingly, Carmody ordered the transfer of the domain name to TDB.
Peter W Choe, Gowling Lafleur Henderson LLP, Toronto
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