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The Toronto-Dominion Bank v. TM WatchDog , British Columbia International Commercial Arbitration Centre, Case No. 00048 - by Eric Macramalla

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Domain Name: tdvisa.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Michael D. Manson

The Complainant had used the TD trade-mark in Canada since at least as early as 1969 in association with banking, securities, real estate and data processing services. It had also been licensed to use of the trade-mark VISA owned by VISA International Services Association.

The tdvisa.ca domain name was made to resolve to a customized Internet portal displaying links to competitors of the Complainant.

The Panel held that the domain name was confusingly similar to the Complainant's registered TD trade-mark and the Complainant's TD trade-mark when used in association with the licensed VISA trade-mark. Further, the Panel held that the Registrant had no legitimate interest in the domain name. Finally, the Panel held that the domain name was registered in bad faith as per subparagraph 3.7(c), which provides that bad faith will be established where it can be shown that the Registrant has registered the domain name primarily for the purpose of disrupting the Complainant, a competitor of the Registrant. In this case, the Panel noted that the Registrant registered the domain name for the purpose of directing potential customers of the Complainant to a website that advertised and offered for sale competing products of competitors. As well, the Panel noted that the Registrant had also engaged in a pattern of abuse of registrations as per subparagraph 3.7(b). Accordingly, the Complainant's Complaint was successful.

However, the Complainant had requested that the registration for the tdvisa.ca domain name

be transferred to the Complainant. The Panel was of the view that they could not make such an order, given that the domain name made use of both the Complainant's TD registered trade-mark and VISA's registered trade-mark, in which the Complainant had no rights. Accordingly, the Panel ordered the domain name cancelled rather than transferred to the Complainant.

Presumably, had both TD and Visa been parties to the action, the domain name would have been transferred and not cancelled.

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