DECISION

The Toronto-Dominion Bank v. Party Night Inc. c/o Peter Carrington

Claim Number:  FA0304000155908

PARTIES

Complainant is The Toronto-Dominion Bank, Toronto, ON, CA (“Complainant”) represented by Peter W. Choe, of Gowling Lafleur Henderson LLP. Respondent is Party Night, Inc. c/o Peter Carrington, Amsterdam, NL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <tdcanadatrus.com> and <tdcanadaturst.com>, registered with Key-Systems Gmbh.

PANEL

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

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 29, 2003; the Forum received a hard copy of the Complaint on April 30, 2003.

On April 30, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain names <tdcanadatrus.com> and <tdcanadaturst.com> are registered with Key-Systems Gmbh and that Respondent is the current registrant of the names. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 May 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 22, 2003 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@tdcanadatrus.com and postmaster@tdcanadaturst.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 Forum transmitted to the parties a Notification of Respondent Default.

On June 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <tdcanadatrus.com> and <tdcanadaturst.com> domain names are confusingly similar to Complainant’s TD CANADA TRUST family of registered marks and TD CANADA TRUST common law mark.

2. Respondent does not have any rights or legitimate interests in the <tdcanadatrus.com> and <tdcanadaturst.com> domain names.

3. Respondent registered and used the <tdcanadatrus.com> and <tdcanadaturst.com> domain names in bad faith.

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

FINDINGS

Complainant, The Toronto-Dominion Bank, holds many Canadian registrations for various marks in its TD CANADA TRUST family, including the TD TRUST mark (Reg. No. TMA427238, registered with the Canadian Intellectual Property Office (CIPO) on May 13, 1994) and the CANADA TRUST mark (Reg. No. TMA409300, registered with the CIPO on March 12, 1993). Complainant is one of Canada’s largest financial institutions. Under the registered TD CANADA TRUST family of marks, Complainant provides, inter alia, interactive online banking services; banking, real estate, insurance, securities, computerized data processing and trust company services; automobile and travel services.

In addition to its registered marks, Complainant has carried on its banking business using a composite mark styled as TD CANADA TRUST since 2001. Since its first use of the TD CANADA TRUST composite mark, Complainant has spent over $181,543,000 in advertising, generating billions of dollars in revenues under the mark. In addition to representing itself to the public under this mark, Complainant has registered the <tdcanadatrust.com> domain name, from which all its online services are directed.

Respondent, Party Night Inc. c/o Peter Carrington, registered the <tdcanadatrus.com> and <tdcanadaturst.com> domain names on September 28, 2002, and is not licensed or authorized to use any of Complainant’s marks for any purpose. Respondent uses the disputed domain name to redirect Internet users to the “Hanky-Panky-College,” an adult-oriented website at http://amaturevideos.nl/hanky-panky-party.html. Internet users who are redirected to the <amaturevideos.nl> domain name are also subjected to pop-up advertisements

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 has established rights in the TD CANADA TRUST family of marks through proof of registration of those marks with the CIPO. Complainant has also established common law rights in the TD CANADA TRUST mark through widespread use of the mark in commerce and evidence of secondary meaning associated with the mark. Both Complainant’s family of registered marks and Complainant’s common law TD CANADA TRUST mark are sufficient to grant standing for Complainant to bring a claim under the UDRP, despite the fact that Complainant and Respondent are domiciled in different countries. See 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 Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <tdcanadatrus.com> and <tdcanadaturst.com> domain names are confusingly similar to Complainant’s TD CANADA TRUST mark. One of the disputed domain names deletes a letter from Complainant’s mark, while the other transposes two letters. In both instances, Respondent registered domain names that prey upon spelling errors by Internet users attempting to reach Complainant’s <tdcanadatrust.com> domain name, and the end result is two domain names that are confusingly similar to Complainant’s mark. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)  (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark); see also 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”).

Accordingly, the Panel finds that the <tdcanadatrus.com> and <tdcanadaturst.com> domain names are confusingly similar to Complainant’s TD CANADA TRUST mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant is able to meet its burden of proving that Respondent has no rights or legitimate interests in the <tdcanadatrus.com> and <tdcanadaturst.com> domain names by demonstrating that Respondent does not qualify for the three “safe harbors” provided for domain name registrants in Policy ¶¶ 4(c)(i)-(iii). Such a showing shifts Complainant’s burden to Respondent, who must come forward with evidence rebutting Complainant’s allegations in order to prevail on this element. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Neither Respondent’s <tdcanadatrus.com> nor <tdcanadaturst.com> domain names spell a phrase with any significance outside of their similarity to Complainant’s TD CANADA TRUST mark and domain name. Both disputed domain names capitalize on spelling errors to direct Internet users attempting to reach Complainant’s <tdcanadatrust.com> domain name to an adult-oriented website instead of their intended destination. Such use of a domain name does not evidence a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

The record before the Panel demonstrates that Respondent is not “commonly known by “ either of the disputed domain names. Respondent, Party Night c/o Peter Carrington, has not rebutted Complainant’s assertions and evidence on this matter, and the Panel thus finds that Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <tdcanadatrus.com> and <tdcanadaturst.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s <tdcanadatrus.com> and <tdcanadaturst.com> domain names are simple misspellings of Complainant’s TD CANADA TRUST mark and Complainant’s <tdcanadatrust.com> domain name.  In registering these misspellings of Complainant’s mark, Respondent created a likelihood of confusion as to the source or sponsorship of Respondent’s website in the minds of Internet users who inadvertently misspelled Complainant’s domain name while browsing the web. Respondent presumably created this likelihood of confusion for commercial gain via pop-up advertisements and referral fees from an adult-oriented website. This is evidence of bad faith use and registration of a domain name pursuant to Policy ¶ 4(b)(iv). See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

The Panel thus finds that Respondent registered and used the <tdcanadatrus.com> and <tdcanadaturst.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <tdcanadatrus.com> and <tdcanadaturst.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  June 5, 2003

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