ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is The Toronto-Dominion Bank, a company that operates within the industry of banking, insurance services, trust companies, real estate, securities and computerized data processing services.
The company is headquartered in the City of Toronto, Ontario, Canada.
The Registrant, according to the Complaint and the Whois database search results, is an individual or an entity called 'Merry Christmas Everyone!', headquartered in Las Vegas, Nevada, United States.
The domain name at issue is 'tdbank.net'; the Registrar is Network Solutions, Inc.
The remedy sought is the transfer of the domain name to the Complainant.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on March 29, 2001. The hardcopy of the Complaint Form and annexes were received on March 29, 2001. Payment was received on April 2, 2001.
Upon receiving all the required information, eResolution's clerk proceeded to:
- confirm the identity of the Registrar for the contested Domain Name;
- verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;
- verify if the contested Domain Name resolved to an active Web page;
- verify if the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on March 29, 2001. The requested information was received March 29, 2001.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on April 2, 2001. This date is the official commencement date of the administrative proceeding.
The emails to the email@example.com were returned 'undeliverable'. The faxes to the Respondent's only known fax number failed.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were returned to eResolution. The complaint, official notification and all the annexes were received by the Respondent email address.
Although the Respondent did send emails to the Clerks office regarding the case, the Respondent did not submit an official Response via eResolution's website nor a signed version.
On April 23, 2001, the Clerk's Office contacted Giovanni Ziccardi, and requested that he acts as panelist in this case.
On April 27, 2001, Giovanni Ziccardi accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On May 2, 2001, the Clerk's Office forwarded a user name and a password to Giovanni Ziccardi, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On April 27, 2001, the parties were notified that Giovanni Ziccardi had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 11, 2001.
3. Factual Background
The Complainant is the owner, among others, of the registered trademarks 'TD Bank' and 'TD Bank & Trust' in Canada and in the United States, used in association especially with banking services.
The Complainant uses also the mark 'Td Bank' in association with its Web site at the address 'tdbank.ca'.
The Respondent registered the domain name 'tdbank.net'. The domain name has never been used in connection with a business, brand, product or service that can be linked in any way to the word 'tdbank'.
The Complainant sent an initial cease and desist letter to the Registrant on October 2, 2000. The Registrant replied to this letter on October 2, 2000, with an offer to sell the domain name at issue to The Toronto-Dominion Bank for $5000 USD. The Web site associated with the domain name included an offer for sale of the domain name.
Solicitors for the Complainant sent a second 'cease and desist' letter to the Registrant demanding the transfer of the domain name on January 19, 2001. The Registrant replied to the Solicitors on January 26, 2001, claiming that the Complainant initially offered to purchase the domain name from the Registrant and that several banks use the name Td Bank, throughout the world. Examining the annexed documents, it is clear that no evidence of this was provided.
Solicitors further requested that the Registrant produce an offer to purchase from the Complainant. The Registrant replied on January 26, 2001 that a copy of the letter was forthcoming. Solicitors replied on February 5, 2001 indicating that the letter purporting to include the Complainant's offer to purchase had not yet been received. The Registrant replied on February 5, 2001 that he would 'let' the Complainant have the name for $500 and would send the transfer documents upon receipt of payment.
Solicitors replied on February 5, 2001 that they were still awaiting receipt of the correspondence soliciting purchase of the domain name by the Complainant. The response further indicated that the Complainant would not accept an offer where payment precedes confirmation of transfer by the registrar. The Registrant replied on February 5, 2001 that he would send the forms, and that payment was due on receipt of transfer documents.
Solicitors responded on February 7, 2001 that the Complainant was willing to pay $500 and would forward $150 on receipt of transfer documents and the balance upon acceptance by registrar of the transfer.
Solicitors corresponded with the Registrant on February 20, 2001 requesting a reply to the latest offer.
No further response has been received from the Registrant.
As of March 19, 2001, the web site associated with the domain name contained an offer to sell at $3,000 to $8,000 USD. As of March 25, 2001, the web site associated with the domain name contained an offer to sell for an undisclosed fee.
4. Parties' Contentions
The Complainant declares that the Registrant has clearly registered the domain name solely for the purpose of selling, renting or otherwise transferring it to the Complainant, who is the owner of the trade-mark, for valuable consideration well in excess of the Registrant's documented out-of-pocket costs directly related to the domain name.
The Toronto-Dominion Bank declares also that only the Complainant has or can have a legitimate interest in respect of the domain name.
As outlined in the annexed documents, the 'Td Bank' trade-mark has been used in relation to services since July 5, 1969 and was registered in Canada on September 4, 1970. In fact, TD Bank is the short form for the trade-mark 'The Toronto-Dominion Bank'.
In the United States, the trade-mark was registered on September 27, 1988 (filing date of March 6, 1981).
In Canada, says the Complainant, 'TD' and 'TD' Bank are well known marks which no doubt enjoy 'famous mark' status. The long standing use of the 'TD' trade-mark and the fact that the trade-mark amounts to a coined mark provides the Complainant, according to the Complainant itself, stronger trade-mark rights than those typically ascribed to a trade-mark holder.
The Registrant has never used the domain name in connection with the bona fide offering of goods or services; the domain name was registered on December 14, 1999 and has never been used by the Registrant.
According to the Complainant, there could be no legitimate use or rational business case that could justify the adoption of 'tdbank' as a domain name other than intentional encroachment upon the rights of The Toronto-Dominion Bank
The Complainant declares also that is evident that the Registrant cannot demonstrate an intention to use the domain name in connection with any bona fide offering of goods or services. There is a notice on the Web site providing that the domain name is for sale: clearly, the Registrant has no intention to use the domain name for any legitimate purpose.
There is also no evidence that the individual or entity 'Merry Christmas Everyone!' has ever been commonly known by the domain name 'tdbank' or has ever had any association with that name.
Finally, the Registrant is not making any use of the domain name, other than for soliciting offers for sale of the domain name itself. Accordingly, the Registrant cannot be said to be making any legitimate non-commercial or fair use of the domain name.
B. The Respondent
The respondent did not submit any response or document to this panel.
5. Discussion and Findings
A. Copy or Similarity.
The trade-mark at issue is 'Td Bank', Canadian trade-mark Registration TMA 170,940 for services which consist of, are inherent in, or are incidental to, the operation of a Canadian Chartered bank and insurance services. The registration documents are attached to the Complaint form as Annex 1.
There is also the trade-mark 'TD Bank & Trust', Canadian trade-mark Registration TMA 459,748 for banking, trust company, real estate, insurance, securities and computerized data processing services. The proof of registration of this mark is attached to the Complaint form as Annex 2.
There are, also, 302 registered Canadian trade-marks owned by the Complainant that include 'TD' as part of the trade-mark and there are fourteen registered Canadian trade-marks owned by the Complainant that include 'Td Bank' as part of the trade-mark. In the United States, the trade-mark 'Td Bank' was registered with registration number 1195870 for banking services.
Without doubt, the Complainant's trademark 'tdbank', registered in the United States and Canada, is identical to the domain name 'tdbank.net' forming the subject matter of the Complaint.
The first requirement is satisfied: the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, as appears from the whois search annexed, the record of the domain name 'tdbank.net' was created on 14 dec 1999, subsequent to the dates of first use of 'tdbank' by the complainant in both Canada and the United States, and subsequent to the date of registration of the trademark in Canada.
The Respondent has not advertised or promoted the use for commercial purposes, and there was not an active Web site but only a page with an offer ('domain for sale').
The Respondent's conduct is inconsistent with any rights or legitimate interests in respect of 'tdbank.net' and is only consistent with having incurred certain unspecified and alleged costs related to the domain name.
According to this Panel the second requirement is satisfied: the Respondent has no rights or legitimate interests in respect of the domain name.
C. Bad Faith
The domain name tdbank.net is identical to the Complainant's registered trade-marks for 'TD Bank' as evidenced above. In addition, the Complainant's web site URL is www.tdbank.ca. The Complainant has been using the 'TD Bank' branding since July 5, 1969 on various services.
The Respondent has never operated an active Web site in association with the domain name or URL address 'tdbank.net'. The Respondent offered to sell the rights of the domain name address to the Complainant.
The URL and domain name was inactive and the Respondent has demonstrated no use whatsoever of 'tdbank.net' in connection with a bona fide offering of goods or services, nor is there any evidence that the Respondent has been commonly known by the domain name 'tdbank.net'.
The extensive period of inactivity is compelling circumstantial evidence that the Respondent registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct. Such circumstances are evidence of bad faith.
According to this Panel, the name 'tdbank.net' was primarily registered for the purposes of either selling, renting, or otherwise transferring it to the owner of the trademark or service mark, or a competitor, for valuable consideration in excess of the documented out of pocket costs directly related to the Domain Name.
According to this Panel, the Domain Name has been registered and is being used in bad faith.
The evidence, submissions of the parties, examination of documents and ICANN Regulations compel this Panel to conclude and decide that:
- The domain name 'tdbank.net' registered by the individual or entity called 'Merry Christmas Everyone!' is identical to the registered mark 'tdbank' of The Toronto-Dominion Bank, a mark in which the Complainant has rights.
- Merry Christmas Everyone! has no legitimate interest in respect of that domain name, has not been commonly known by this domain name, and is not making legitimate non-commercial or fair use of the domain name 'tdbank.net'.
- The domain name at issue was registered and is being used in bad faith by 'Merry Christmas Everyone!'.
The Respondent did not prove any of the three circumstances set out in ICANN Policy at Paragraph 4 (c).
Accordingly, the Complainant's request is granted and, in accordance with Paragraph 3 (c), the Panel orders that the registration of the domain name at issue be transferred from 'Merry Christmas Everyone!' to The Toronto-Dominion Bank.
This done and signed in Castelfranco Emilia, Modena, Italy, on. 11st May, 2001.
Castalfranco Emilia, Modena, Italy
(s) Giovanni Ziccardi