WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Toronto-Dominion Bank v. Boris Karpachev
Case No. D2000-1571
1. The Parties
The Complainant is The Toronto-Dominion Bank, a Canadian corporation with a principal place of business at Toronto-Dominion Center, King Street W. and Bay Street, Toronto, ON M5K 1A2, Ontario, Canada, represented by Mr.Ronald Daignault of Pennie & Edmonds LLP of New York.
The Respondent is Mr. Boris Karpachev of 535 Auburn Street, Apartment 2, Newton, Massachusetts 02466, USA, representing himself.
2. The Domain Names and Registrar
The disputed domain names are "tdwatergouse.com" and "dwaterhouse.com" and the Registrar is 1stDomain.Net of Hawaii, USA.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on November 14, 2000, and in hard copy on November 15, 2000. The Center acknowledged receipt on November 20, 2000. On November 23, 2000, the Center sought registration details from the Registrar. On December 5, the Registrar confirmed that the respondent is the registrant, the Policy applies to the domain names and that the status of each of the disputed domain names is "active."
On November 14, 2000, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee; printed out a copy of the disputed Web pages from the "tdwatergouse.com" site; formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The formal date of the commencement of the proceeding was accordingly December 6, 2000. The last day specified in the notice for a response was December 25, 2000. On December 14 the Respondent transmitted to the Center an "open letter to Toronto-Dominion Bank", which he specifically said was not the formal answer to the Complaint. On December 24, 2000, the Respondent filed a Response by email and on December 27, 2000, in hardcopy. Its receipt was acknowledged by the Center on December 24, 2000.
On January 3, 2001, the Center notified the parties of the appointment of Alan L Limbury as the administrative panel, Mr Limbury having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated January 17, 2001, as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; the Response was filed within the time specified by the Rules and the single-member administrative panel was properly constituted.
On January 4, 2001, the complainant sought leave to submit a reply, referring to the "open letter" as a document the complainant did not know would form part of the record until it was so informed by the Center. That document was included in the file forwarded to the panel pursuant to Rule 2(h)(iii). On January 4, 2001, the panel, having read the complaint, the response and the "open letter", each in electronic form, without exhibits, decided not to grant leave at that stage, saying that, after considering the whole file, the panel would make a request under Rule 12 for any supplementary submission the panel considered warranted and would provide reasons in this decision.
The Panel does not regard the "open letter" as part of the Response and has therefore disregarded it entirely.
The panel now provides its reasons for declining to grant leave to the Complainant to file a Reply: in Goldline International, Inc. v. Gold Line, (WIPO Case No. D2000-1151) the 3-member panel said:
"The Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), though, do not provide the parties with any right to file replies on their own volition. Rather, Rule 12 provides that only the Panel may request further submissions. Plaza Operating Partners, Ltd. v. Pop Data Technologies, Case No. D2000-0166 (WIPO June 1, 2000)…"
"…many panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as discovery of evidence not reasonably available to the submitting party at the time of its initial submission, or arguments by the respondent that the complainant could not reasonably have anticipated. Id.; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO June 6, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000); Wal-Mart Stores, Inc. v. Richard MacLeod, Case No. D2000-0662 (WIPO Sept. 19, 2000); Electronic Commerce Media, Inc. v. Taos Mountain, File No. FA0008000095344 (NAF October 11, 2000); Parfums Christian Dior S.A. v. Jadore, Case No. D2000-0938 (WIPO November 3, 2000); Viz Communications, Inc. v. Redsun "dba www.animerica.com", Case No. D2000-0905 (WIPO December 22, 2000)."
In this case the complainant has not contended that it has discovered evidence not reasonably available to it at the time of its Complaint, nor does the Response appear to have raised arguments that the complainant could not reasonably have anticipated. There appear to be no other exceptional circumstances that would justify admission of a Reply. For the same reasons, the panel does not request any further submission under Rule 12.
4. Factual Background (uncontested facts)
On June 14,1999, the Respondent, a professional scientist with degrees in physics and mathematics and an immigrant to the U.S.A. from Uzbekistan, became a customer of an electronic brokerage company which had been established in 1979, Waterhouse Securities, Inc., of 100 Wall Street, New York, trading as Waterhouse Webbroker ("the broker"). At about this time the Complainant acquired a majority interest in the broker, which changed its corporate name to TD Waterhouse Investor Services, Inc., its trading name to TD Waterhouse Webbroker and its domain name from "waterhouse.com" to "tdwaterhouse.com" to reflect its ownership by the Toronto-Dominion Bank. The domain name "tdwaterhouse.com" was registered by the Complainant on July 25, 1999.
The online brokerage service conducted at the domain name address "tdwaterhouse.com" has 2.2 million online accounts, and is the third-largest online brokerage in the United States.
On July 16, 1999, the Complainant filed United States service mark application for the mark TD WATERHOUSE, Appl. No. 75/759,863, for services including on-line discount brokerage services in the fields of stocks, bonds, mutual funds and related securities. It has corresponding registrations in the U.K., France and Benelux and applications in other countries.
A transaction occurring in September 1999 has given rise to a contractual dispute between the Respondent and the broker. The Respondent, having failed to obtain satisfaction from the broker and having found attempted arbitration at the Boston Stock Exchange impossible, reacted "towards Violence", which he sees as an inherited reaction, having regard to horrific experiences, dating back to World War I, of his grandfather, father, uncle, aunt, cousins and the father of the Respondent’s half-brother, involving numerous deaths [Response, page 13].
The Respondent saw "the only possible bloodless way" for him to respond to the brokers "insult" was "to attack it on the Internet for the purpose" of recovering money taken and damages ("satisfaction money"); to create a precedent for other customers and the general public to show "the way to take satisfaction without blood" and to make "WebFascism" (a term coined by the Respondent signifying violence on the Internet) unprofitable, by forcing the broker to give up WebFascism or be made bankrupt [Response, page 13].
Accordingly, the Respondent registered the domain names "tdwatergouse.com" on June 29, 2000, and "dwaterhouse.com" on October 15, 2000, and established identical websites at those addresses containing strong criticism of the broker, recounting his view of the dispute and of the conduct of the broker and raising the question whether the broker engages in WebFascism. The 13 web pages at each site compare the behaviour of the broker with that of the Nazis and include quotations from Hitler, Goebbels and Himmler.
By registering the disputed domain names and operating websites at those addresses, the Respondent intended to draw TD Waterhouse customers to his websites when they either misspell or err in typing "tdwaterhouse.com" [Response, page 17].
5. Parties’ Contentions
[The Complainant refers to the Complainant and its subsidiaries, including the broker, as "TD Waterhouse". That expression thus fails to distinguish between the bank and the broker. Nevertheless, it may be assumed that when the Complainant refers to the Complainant, it is referring to the bank].
The disputed domain names are confusingly similar to the TDWATERHOUSE mark in which the Complainant has exclusive rights; the Respondent has no rights or legitimate interests in them and they were registered and are being used in bad faith.
Identity and confusing similarity
"dwaterhouse.com" is virtually identical to "tdwaterhouse.com" except for the missing "T" in front of the domain name, and "tdwatergouse.com" is virtually identical to "tdwaterhouse.com " except for the "G" in place of the "H".
Respondent registered his confusingly similar domain names approximately one year after Complainant’s registration of "tdwaterhouse.com".
TD Waterhouse has not licensed the name and mark TD WATERHOUSE to Respondent, who does not have any right or authorization to include the TD WATERHOUSE name and mark as the address for his websites.
Further, Respondent has never been commonly known by the name TD WATERHOUSE or any variation thereof, and has never acquired any federal, state, or common law trademark or service mark rights in the name or any variation thereof.
Respondent is clearly intending to confuse TD Waterhouse customers and draw them to his websites when they either misspell or err in typing TD Waterhouse’s domain name address "tdwaterhouse.com". Respondent is using confusingly similar domain names to tarnish and malign Complainant and its reputation, and its TD WATERHOUSE name and mark.
Although Respondent does make commercial use out of his website as a result of the two links on his site, including an unauthorized link to "tdwaterhouse.com", Respondent’s use of the disputed domain names is not "bona fide" because he is using the domains to confuse consumers, and divert them to his website. See People for the Ethical Treatment of Animals, Inc. v. Doughney, 2000 U.S. Dist Lexis 9474 (E.D. Va.) (stating that one hyperlink to a Website with commercial use operations satisfies the commercial use requirement of the Lanham Act); AltaVista Company v. Saeid Yomtaobian, Case No. D2000-0937 (respondent has no legitimate interests in a website where domain names were registered in bad faith to divert users to respondent’s website).
Respondent wants to disrupt TD Waterhouse’s business, and drive it to bankruptcy. In particular, Respondent states that "[t]he violence must be made being very expensive, in order to drive TD Waterhouse Webbroker to bankruptcy, unless it has given the violence up."
Respondent specifically chose and registered the disputed domain names in bad faith and with the hope of tricking people into going to his websites. Clearly, Respondent’s domain names were registered with the intention of capitalizing on TD Waterhouse’s customers’ mistakes and typos. If a TD Waterhouse customer mistyped the "tdwaterhouse.com " domain name by leaving out the "T" or types a "G" instead of an "H," then that customer is diverted unknowingly to Respondent’s website.
Indeed, similar sets of facts were presented in ICANN proceedings before the World Intellectual Property Organization in Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, Case No. D2000-0869 and E. & J. Gallo Winery v. Hanna Law Firm, Case No. D2000-0615.
In accordance with paragraphs 4(b)(iii) and 4(b)(vii) [sic] of the Policy, clearly Respondent is not making fair use of Complainant’s TD WATERHOUSE name and mark, but instead has registered and is using the disputed domain names in bad faith to disrupt and tarnish Complainant’s business, and its TD WATERHOUSE name and mark by confusing TD Waterhouse customers and diverting them from Complainant’s website to its own.
This episode is only a continuation of the main dispute between Boris Karpachev and the broker, which is not within the scope of the Policy.
The domain name is used by the broker, not the bank. So, for the purpose of paragraph 4(a) (ii) of the Policy, the bank does not have legitimate interests in respect of the domain name "tdwaterhouse.com". The broker does.
The Internet is developing very fast. The name "WebFascism" was used for the first time on the website at the disputed domain names. WebFascism is a new social phenomenon. There are not yet juridical means of recognizing it and there are no juridical remedies for it yet. Because of that Respondent tries to use all other possible legal means to defend his dignity (to take the satisfaction), compensation damages (for breach of contract) and return of his stolen property (money in the broker’s account).
The bank proposed to drop its claim for the debt made by the broker to the Respondent’s account in return for the transfer to it of the disputed domain names. The Respondent considers the Complaint to be Reverse Domain Name Hijacking. Therefore the Respondent believes he has the moral right to double the amount of satisfaction money he requires.
Rights in the trademark
The Complainant asserts:
"Complainant, through TD Waterhouse Investor Services, Inc. and its other subsidiaries (collectively "TD Waterhouse"), has used the TD WATERHOUSE name and mark over the past twenty years, since at least as early as 1979".
This is a false statement. The evidence shows the trademark "Waterhouse Securities, Inc." was first used in April 1979 but not TD WATERHOUSE. The applications for the trademark TD WATERHOUSE were filed and published for opposition not earlier than the second half of 1999. And the trademark TD WATERHOUSE is not available yet in the USA. So there is no legitimate ground for the complaint as the dispute has arisen in the USA.
Identity or confusing similarity
The domain names are similar to the TD Waterhouse mark but not confusingly so. There is no confusion as the Respondent is not doing any business at his websites. So anyone coming to his website will not seek or have the services offered by the broker or the bank.
The Respondent is making a legitimate noncommercial and fair use of the disputed domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
The Respondent’s personal, noncommercial website under the disputed domain names, similar to "tdwaterhouse.com", was created and is being used with the purpose of obtaining compensation for damage caused by the broker, criticizing the broker (that uses "tdwaterhouse.com"), telling the Respondent’s personal experience and his attitude towards the incident that occurred, in order to let customers of the broker and the general public estimate the possible negative experience they may have while having relations with the broker. There is no lie on the website.
The Respondent has the right to register and use the disputed domain names under the First Amendment to the US Constitution.
Before the Complaint was filed, the Respondent became known by the name DWATERHOUSE - AntiWebFascism site.
By registering the disputed domain names and operating websites at those addresses, the Respondent is clearly intending to draw TD Waterhouse customers to his websites when they either misspell or err in typing TD Waterhouse’s domain name address "tdwaterhouse.com" but not intending to confuse them.
The Respondent does not make commercial use out of his websites. The second website under the domain name "mediamost.com" is far future project to help people of the USA and Russia (both are the Nuclear and Thermonuclear Super Powers) to get contacts accompanied with money flows in order to discharge the inevitable passions onto money not onto human lives. This is an Appeal to Humans not to die, not to end the Earth’s Biosphere, tiny island of Life in desert Universe. Respondent is planning to manage only webspace addressity at this project. The contacts, money flows, services are for others.
The use of the website under the disputed domain names is "bona fide", with the honorable purpose of defending personal dignity, recovering the property stolen and taking money damages.
The disputed domain names were registered and are being used in good faith.
The Respondent wants to disrupt TD Waterhouse’s WebFascism and drive it to bankruptcy if it has not given up webfascism. TD Waterhouse’s violence (as any violence) must be made very expensive in money amounts, as stated on the Respondent’s website.
The Respondent specifically chose and registered the disputed domain names in good faith to prevent the unlawful practice of the broker "allegedly refusing to compensate investors for losses suffered because of the trades". There was and is no intention of capitalizing at all.
I am not a competitor of the broker. I am its customer. I do not act in opposition to it, but in opposition to its allegedly refusing to compensate respondents for losses suffered because of unauthorized trades and unfair treatment.
There is no confusion, no bad faith, no confusingly similar, only similar.
The Respondent has registered and is using the disputed domain names in good faith to disrupt practicing Webfascism by the broker and to recover the Respondent’s damages and property. The TD WATERHOUSE name and mark are tarnished by the unlawful behavior of the broker. The bank should have a claim on the broker and pay damages to the Respondent.
There is nothing in the Rules about remedies available to a Respondent. This is inequality. The litigation process in the USA contains the possibility for defendant to make a counterclaim. As there is the possibility under the Rules of "submitting the dispute to a court"- Rule 4(k), and provision for a panel to "decide a complaint on … principles of law"- Rule 15(a), the Respondent has a legitimate right to make a countercomplaint, proposing remedies he considers appropriate, namely cancellation of the domain name "tdwaterhouse.com" or, better, suspension until the dispute between the Respondent and the broker has been resolved.
[The Response sets out a countercomplaint in detail. The panel does not reproduce or summarize it, for reasons set out below]
Reverse Domain Name Hijacking.
The complaint is Reverse Domain Name Hijacking. The broker continues webfascism treatment of customers, and does not want them know that. The bank, owner of 88% of the broker’s outstanding shares, is trying to shut up the website under the disputed domain names by means of Reverse Domain Name Hijacking, in order not to lose the market value of the broker ($5 - $10 billions).
6. Discussion and Findings
The Policy and Rules provide, by means of contractual provisions incorporated in every Registration Agreement between ICANN-accredited domain-name registrars and domain name registrants, a mechanism for resolving disputes over the registration and use of domain names ending in .com, .net, .org and certain country-code top-level domains. The Policy does not exclude resort to litigation, arbitration or other proceeding. Its subject matter is limited, the remedies available are limited and the parties are limited to Complainants asserting rights in trade marks and Respondents with registered domain names.
The obligation of the panel under Rule 15(a) to apply "any rules and principles of law it deems applicable" is confined to the determination of complaints within these limitations. There is no provision for Respondents to make counterclaims or countercomplaints and the panel has no power to determine them. Respondents who assert that they have trade mark rights are free to initiate separate complaints under the Policy against Complainants who have registered domain names.
For these reasons, the panel has not summarized or reproduced the substance of the Respondent’s countercomplaint and has disregarded it, save to the extent that it sheds light on the issues for determination in this proceeding. It should be noted in this regard that, in responding to the Complaint and articulating his countercomplaint, the Respondent has adopted some of the Complainant’s assertions, usually with an important qualification. For example, in responding to the Complainant’s assertion (in paragraph 13) that "the Respondent’s domain names…are confusingly similar to Complainant’s famous name and mark", the Respondent says "There has to be: ’Respondent’s Domain Names Are Similar to Complainant’s Name and Mark, but Not Confusingly’"[emphasis in the Response]. In such a case, the panel has taken it to be common ground that the disputed domain names are similar but that there is a dispute as to whether the similarity is confusing.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
● the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
● the Respondent has no rights or legitimate interests in respect of the domain names; and
● the disputed domain name have been registered and are being used in bad faith.
As to the Respondent’s argument that, for the purpose of paragraph 4 (a) (ii) of the Policy, the bank does not have legitimate interests in respect of the domain name "tdwaterhouse.com" but that the broker does, it is sufficient for the Complainant to prove it has rights in a trade mark. The argument is therefore not to the point.
The Respondent correctly points out that there is no evidence of use of the trade mark TD WATERHOUSE as early as 1979. On the material before the panel, having regard to the acquisition by the Complainant of the broker in about mid-1999, it is doubtful whether that mark was in use before the acquisition. Nevertheless, that mark appears to have been in widespread use in the USA, Canada and elsewhere from about mid-1999, including as part of the Complainant’s domain name "tdwaterhouse.com"(used by the broker, which is controlled by the Complainant). Having regard to the number of accounts of the broker and other undisputed assertions by the Complainant as to the size of its corporate group, activities and promotional expenditure, the panel is satisfied that the Complainant had established common law rights in and to the trade mark TD WATERHOUSE in the field of online broking in the USA and Canada before the respondent registered the disputed domain names. It is also relevant that the Complainant had been granted registered trade mark rights in that name and mark in other countries before filing its complaint.
The Respondent argues that because the application to register the trade mark in the United States has not yet been granted and the dispute arose there, the Complainant has no standing to bring this complaint.
There are two reasons why that argument cannot succeed: (1) the Policy affords protection to those having common law trademark rights (acquired through use) as well as to those having rights in registered trademarks: see, for example, David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla (D2000-1459) citing numerous cases including Cedar Trade Associates, Inc., v. Gregg Ricks (NAF93633); Bennett Coleman & Co. Ltd. v. Steven S. Lafwani (D2000-0014); SeekAmerica Networks Inc. v. Tariq Masood (D2000-0131) and Passion Group Inc. v. Usearch, Inc. (AF-0250); and (2) it is not necessary under the Policy that the Complainant have trade mark rights in any particular country, so long as the Complainant has some trade mark rights.
Identity or confusing similarity
It has been decided in many cases under the Policy that "essential" or "virtual" identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (WIPO case D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO case D2000-0102).
US cases have adopted the same approach, see Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sporty’s" and the domain name "sportys.com" – specifically, an apostrophe in the trademark and the addition of .com in the domain name – are "inconsequential", such that the domain name is "indistinguishable" from and "certainly ‘confusingly similar’ to the protected mark"); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1055 (9th Cir. 1999) (differences between the domain name "moviebuff.com" and the mark "MovieBuff" are "inconsequential"). See also Public Serv. Co. v. Nexus Energy Software, Inc., 36 F.Supp.2d 436 (D. Mass. 1999) ("energyplace.com" and "Energy Place" are virtually identical); Minnesota Mining & Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D.Minn. 1998) ("post-it.com" and "Post-It" are the same); Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997)(epix.com "is the same mark" as EPIX); Planned Parenthood Federation of America, Inc. v. Bucci, No. 97-0629, 1997 WL 133313, at *8 (S.D.N.Y. Mar. 24, 1997) ("planned-parenthood.com" and "Planned Parenthood" are essentially identical), aff’d, 152 F.3d 920 (2d Cir. 1998), cert. denied, 525 U.S. 834, 119 S.Ct. 90, 142 L.Ed.2d 71 (1998).
The suffix ".com" is of no significance. See The Forward Association, Inc., v. Enterprises Unlimited (NAF case FA0008000095491, October 3, 2000):
"It should be noted that when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL, nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address".
This applies equally where a domain name is composed in whole or in part of a trade mark.
The Respondent admits the disputed domain names are similar to the Complainant’s trade mark but denies they are confusingly similar, saying there is no confusion as the Respondent is not doing any business at his websites, so anyone coming to his website will not seek or have the services offered by the broker or the bank. However, the test for confusing similarity is confined to a consideration of the disputed domain name and the trade or service mark: Gateway, Inc., v. Pixelera.com, Inc. (WIPO case D2000-0109); The Forward Association (supra).
In terms of sight and sound, the domain names "tdwatergouse.com" and "dwaterhouse.com" are virtually identical to Complainant’s TD WATERHOUSE name and mark - only one letter differentiates Respondent’s domain names from TD WATERHOUSE.
Except for the missing "T" in front of the domain name, "dwaterhouse.com" is identical to "tdwaterhouse.com". Accordingly, if a TD Waterhouse customer were to mistype the "tdwaterhouse.com"domain name by leaving out the "T", that customer would be unknowingly directed to Respondent’s website. The same is true for the website at "tdwatergouse.com". If a TD Waterhouse customer makes a mistake and types in a "G" instead of an "H" when trying to reach the "tdwaterhouse.com" website, the customer will arrive at Respondent’s website. Not surprisingly, the letter "G" is directly next to the letter "H" on standard computer keyboards. Thus, it is easy for a customer to tap the "G" by mistake, and arrive at Respondent’s website.
The Respondent accepts that by registering the disputed domain names and operating websites at those addresses, the Respondent is clearly intending to draw TD Waterhouse customers to his websites when they either misspell or err in typing TD Waterhouse’s domain name address "tdwaterhouse.com". However, the Respondent denies intending to confuse them.
In determining whether a domain name is confusingly similar to a trade mark, the intention of the domain name registrant is irrelevant. It is the objective likelihood of confusion that must be assessed. The panel finds that the disputed domain names are likely to attract customers of the broker seeking to access the broker’s website who misspell or err in typing the domain address they seek. The close misspellings at issue here are confusingly similar to the Complainant’s mark. See, e.g., Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, ( D2000-0330); Oxygen Media, LLC v. Primary Source, (D2000-0362).
The panel finds that the disputed domain names "tdwatergouse.com" and "dwaterhouse.com" are essentially identical and confusingly similar to the Complainant’s trademark TD WATERHOUSE. The Complainant has established this element.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. The Complainant has the onus of proof on this, as on all issues.
The Complainant has not authorized the Respondent to use the TD WATERHOUSE name and mark nor to include that mark in any domain names.
Insofar as the Respondent is using the domain names to divert customers of the broker to his websites as a means of recovering money he claims was misappropriated by the broker in the commercial transaction which gave rise to the wider dispute of which this domain name dispute forms part, the panel finds such use is commercial and cannot be regarded as legitimate under subparagraph 4(c)(iii) of the Policy. It is unnecessary for the panel to consider the Complainant’s argument based on the link on the Respondent’s websites to the Complainant’s website.
Insofar as the Respondent uses the domain names to criticise the broker, this is no doubt what he has in mind in asserting the right to register and use the disputed domain names under the First Amendment to the US Constitution. As to this, in Monty and Pat Roberts, Inc. v. Bill Keith (D2000-0299), the learned panelist said:-
[T]he right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine.
In the instant case, Respondent is using as its identifier the domain name "montyroberts.net". When an Internet user searches for Complainant’s mark, it will find Respondent’s website address. There is nothing in the domain name to indicate that the site is devoted to criticism of Complainant, even though this criticism is apparent upon visiting Respondent’s site. By using Complainant’s mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users".
Those remarks are of equal force in this case and dispose of the Respondent’s First Amendment argument. See also Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, (D2000-0869) and E. & J. Gallo Winery v. Hanna Law Firm, (D2000-0615).
The Respondent says that before the Complaint was filed, the Respondent became known by the name DWATERHOUSE - AntiWebFascism site. It is unclear whether the Respondent is here seeking to invoke subparagraphs (i) or (ii) of Policy 4(c), since this assertion appears to run parts of each together.
Subparagraph (i) requires a showing of use or demonstrable preparations to use the domain names, before notice of the dispute, in connection with a bona fide offering of goods or services. The Respondent asserts both sites are noncommercial and accordingly makes no claim to offer goods or services.
Subparagraph (ii) requires a showing that a Respondent has been commonly known by the domain name and does not require this to have been the case before any notice of the dispute.
The issue arises whether this subparagraph should be interpreted as referring only to registrants having been known by the domain name before they registered it, or whether registrants may demonstrate legitimacy by reason of use of the very domain name in dispute.
It is unnecessary to resolve that issue in this case because the reference to the Respondent on the "dwaterhouse.com" website (as a customer of the broker, "author Boris Karpachev") would not necessarily convey to the reader that the Respondent is associated with the domain name or the author of the website, let alone that he is known by the name DWATERHOUSE. The panel is not satisfied that the Respondent is known by the name DWATERHOUSE. The Respondent has not claimed that he is known by the name TDWATERGOUSE.
The Respondent says that, by registering the disputed domain names and operating websites at those addresses, the Respondent is clearly intending to draw TD Waterhouse customers to his websites when they either misspell or err in typing TD Waterhouse’s domain name address "tdwaterhouse.com" but not intending to confuse them. The panel does not regard this as establishing that the Respondent has a legitimate interest in the disputed domain names.
The Respondent says his use of the website under the disputed domain names is "bona fide", with the honorable purpose of defending personal dignity, recovering the property stolen and taking money damages. The panel rejects this as a basis for claiming a legitimate interest in the disputed domain names. The broker has no opportunity to state its side of the issues in dispute; the Respondent seeks to exert pressure on the broker and the Complainant by the content of his websites, to which he intentionally diverts customers of the broker by the use of domain names which those customers might enter by mistake. No matter how sincerely the Respondent believes in the righteousness of his cause, resort to such trickery does not deserve the appellation honorable nor does it justify a finding of a legitimate interest in the disputed domain names.
The panel finds that the Complainant has proved that the Respondent does not have any rights or legitimate interests in either of the disputed domain names.
There is no evidence of circumstances within subparagraphs 4(b)(i) or (ii) of the Policy.
The Respondent says he specifically chose and registered the disputed domain names in good faith to prevent the unlawful practice of the broker "allegedly refusing to compensate investors for losses suffered because of the trades". The panel rejects this as demonstrating absence of bad faith for the same reason it rejects it as establishing a legitimate interest.
As to subparagraph 4(b)(iii), the Respondent denies he is a competitor of the broker. He is its customer. He says he does not act in opposition to it, but in opposition to its allegedly refusing to compensate respondents for losses suffered because of unauthorized trades and unfair treatment. A similar situation was addressed in Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna (D2000-0869):
"Under paragraph 4(b)(iii) of the Policy, a finding by the Panel that Respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" is evidence of registration and use in bad faith. Respondent argues that that paragraph of the Policy is not applicable because Complainant and Respondent are not "competitors". This is true in the sense that the parties do not sell competing products, but the definition of competitors is not so restricted in the Policy. This Panel adopts and agrees with the broader meaning that was assigned to the word "competitor" in Mission Kwa Sizabantu v. Benjamin Rost, Case No. D2000-0279 (" ‘competitor’ is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor"); Accord, Gallo v. Hanna Law Firm, Case No. D2000-0615. The fact that the terms of paragraph 4(b)(iii) of the Policy, unlike those of paragraph 4(b)(iv), do not require that a party be motivated by "commercial gain", further supports the fact that the genre of competition referred to need not be commercial."
This panel finds that the respondent’s opposition to the practices of the broker, which he criticizes, is sufficient to qualify him for the description of "competitor". The Respondent says he wants to disrupt TD Waterhouse’s WebFascism and drive it to bankruptcy if it has not given up webfascism. "TD Waterhouse’s violence (as any violence) must be made very expensive in money amounts", as stated on the Respondent’s website. This suffices to establish that the Respondent registered the disputed domain names primarily for the purpose of disrupting the business of a competitor, within the meaning of subparagraph 4(b)(iii).
As to subparagraph 4(b)(iv), the panel adopts the following passage from AltaVista Company v. Saeid Yomtobian (D2000-0937):
The use of misspellings alone is sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by making a likelihood of confusion with the Complainant’s mark".
The panel has found that the domain names are being used for the commercial gain of recovering money said to have been misappropriated in a commercial transaction. The panel finds the requirements of this subparagraph satisfied.
Accordingly, the Complainant has proved that the domain names were registered and are being used in bad faith.
Reverse domain name hijacking
Respondent claims the Complaint constitutes an attempt at domain name hijacking. This is defined in Rule 1 as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e). To prevail on such a claim, Respondent must show that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., (D2000-1224) and Goldline International, Inc. v. Gold Line (D2000-1151). In Smart Design LLC v. Hughes, (D2000-0993) bad faith was found to encompass both malicious intent and recklessness or knowing disregard of the likelihood that the Respondent possessed legitimate interests.
The complaint having been upheld, the Respondent cannot succeed on this point.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain names "tdwatergouse.com" and "dwaterhouse.com" to be transferred to the Complainant.
Alan L Limbury
January 15, 2001