Toronto-Dominion Bank v. Karpachev

‘‘‘Citation:’’’ Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110 (D. Mass. 2002).

Factual Background
Plaintiff owns the marks TD WATERHOUSE and "tdwaterhouse.com" for brokerage services. Defendant, a disgruntled customer, registered sixteen domain names composed of various misspellings of the "tdwaterhouse.com" domain name that connected to websites on which defendant criticized plaintiff for "webfacism" and "white-collar crime," and compared plaintiff's business methods to what "Nazi or Soviet Totalitarists did to their victims." Defendant also filed a complaint against plaintiff with the Securities and Exchange Commission.

Plaintiff then brought a UDRP action against defendant regarding the names "tdwatergouse.com" and "dwaterhouse.com," and the UDRP panel ordered defendant to transfer them to plaintiff.

Trial Court Proceedings
To stay the UDRP decision, defendant brought suit in a Massachusetts state court, which was eventually removed by plaintiff to federal court. Before the defendant's state court case was removed, plaintiff filed suit in federal court alleging trademark infringement and unfair competition.

On the parties' cross-motions for summary judgment, the court granted plaintiff's motion regarding its ACPA claim. There was no dispute about plaintiff's right to the TD WATERHOUSE mark, and defendant did not dispute that he registered and used "conspicuously similar" domain names to cause confusion and provide a forum for his campaign against plaintiff. The court found that defendant registered the domain names in bad faith primarily to cause confusion and to "tarnish or disparage" the TD WATERHOUSE mark, and that defendant did not use the names in connection with the offering of goods or services or in any other "fair use" manner.

The court ordered defendant to "forfeit his interests in, or use of" his sixteen "tdwaterhouse.com" formative domain names, and to "cease and desist from registering any additional domain names for the purpose of creating confusion with the TD Waterhouse mark."

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