HRB Innovations, Inc. v. Domain Administrator / Fundacion Privacy Services Ltd.
Claim Number: FA2001001880762
Complainant is HRB Innovations, Inc. (“Complainant”), represented by Timothy J. Feathers of Stinson LLP, Missouri, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hrbblock.com>, registered with Media Elite Holdings Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2020; the Forum received payment on January 28, 2020.
On February 4, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <hrbblock.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hrbblock.com. Also on February 10, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that its group is one of the largest providers of tax preparation services in the world and has prepared more than 800 million tax returns worldwide since 1955. Complainant claims that it has used the mark H&R BLOCK in connection with tax preparation services and software products since at least 1956 and it is currently used at approximately 11,000 retail offices in the United States and on Complainant’s website at <www.hrblock.com> since at least as early as 1996.
The only differences between the H&R BLOCK mark and the <hrbblock.com> domain name are the addition of the letter "b," the deletion of ampersand "&” and the addition of the generic top level domain <.com> extension. Complainant submits that the first difference is a classic example of typosquatting – Respondent adds a second "b" to H&R BLOCK which is a common typographical error. Thus, when Internet users inadvertently hit the "b" key twice, they end up on Respondent's site.
The second difference, i.e., the deletion of the ampersand "&" does not negate a likelihood of confusion in this instance because an ampersand may not be used in a domain name. Thus, in order to represent H&R BLOCK as a domain name, the "&" must be removed, as evidenced by Complainant's own <hrblock.com> domain name. Finally, the addition of the generic top-level domain <.com> extension is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See The Weather Underground, Inc. v. Navigation Catalyst Sys., Inc., FA 21002 (Forum Oct. 12, 2008) (finding the addition of a single letter and the top-level domain .com does not sufficiently distinguish a domain name from a mark).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant submits that Respondent has never been known by the disputed domain name <hrbblock.com> or any name corresponding to the domain name pursuant to the UDRP ¶ 4(c)(ii). There is no evidence that Respondent has in any way ever acquired or developed any rights or legitimate interests in the <hrbblock.com> domain name by virtue of being known by the name "hrbblock." To the contrary, Respondent has attempted to hide its true identity by registering through a privacy protection service. Further, the disputed domain name does not resolve to any website of Respondent but redirects traffic to Complainant’s own site. Complainant has not licensed or otherwise authorized Respondent to use Complainant's H&R BLOCK mark or any names confusingly similar thereto.
Complainant states that initially, the disputed domain name redirected users to a website which attempted to download malicious software onto users’ computers and which Complainant reported as a phishing page through multiple outlets. Currently, Respondent uses the disputed domain to resolve to Complainant’s own website. Complainant believes Respondent improperly receives commissions through Complainant’s affiliate program. The use of the disputed domain name in this manner is not a bona fide offering of goods or services pursuant to the UDRP ¶ 4(c)(i). See Provide Commerce, Inc. v. Media Int’l SA/Hector Ortega, FA 1422445 (Forum Mar. 6, 2012) (finding respondent’s use of the disputed domain to generate commissions in breach of complainant’s affiliate agreement is not a bona fide offering of goods); Barnesandnoble.com, LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006).
Complainant submits that Respondent’s use of the domain name is therefore for commercial gain and to misleadingly divert consumers and initially as the address of a website to host malware. Complainant submits that such uses are not noncommercial or fair use pursuant to the UDRP ¶ 4(c)(iii).
Complainant submits that it has made a prima facie case and that the burden of production therefore shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name Talecris, No. FA1170019 (Forum May 7, 2008) (“Once Complainant has established a prima facie case, the burden shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name.”)
Complainant submits that Respondent registered the disputed domain name well after Complainant’s first use of its H&R BLOCK mark in 1956 and registration in 2007 and argues that the disputed domain name was registered and is being used in bad faith. Complainant submits that the disputed domain name was registered with the intent to trade on the goodwill of Complainant's well-known H&R BLOCK mark. Previous panels have determined that a domain has been registered in bad faith where it is likely that the respondent was aware of the Complainant's well-known marks at the time of registration. Wikimedia Found., Inc. v. Domain Adm’r, Private Registration / Scott Elliott, Transcom Ltd., WIPO Case No. D2015-1404 (Sept. 25, 2015). Due to Complainant's long-time and wide-spread use of H&R BLOCK, it is likely that Respondent was aware of Complainant's mark at the time of registration.
Complainant alleges that Respondent uses <hrbblock.com> to commercially benefit each time a user inadvertently accesses Complainant’s website through the disputed domain. Presumably, Respondent profits from its typosquatting by receiving unearned commissions through Complainant’s affiliate program. The very practice of typosquatting 'is evidence of the bad faith registration of a domain name. See Amazon.com Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517 (Sept. 25, 2015)); Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Forum May 29, 2007).
Additionally, Complainant submits that the use of a domain name to abuse an affiliate program is evidence of bad faith under the UDRP ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is an affiliate of a group of companies that are under common ownership and control and provide tax preparation services. Complainant is the holder of the intellectual property rights including the trademarks used by the group.
Complainant is the owner of 12 United States federal registrations for the H&R BLOCK and similar service marks, which are used by itself and its licensees in connection with Complainant’s ongoing business activities including:
· United States registered service mark H&R BLOCK, registration number 3,338,962, registered on November 20, 2007 for use in connection with services in international classes 35, 36 and 41; and
· United States registered service mark registration number 3,213,068 registered on February 27, 2007 for use in connection with services in international class35.
The disputed domain name was created on March 3, 2003 and resolves, directing traffic, to Complainant’s own website.
There is no information available about Respondent except for that provided in the Complaint, the details on the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for verification of the details of the disputed domain name in the course of this proceeding. Respondent appears to avail of a privacy service which conceals its identity.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced uncontested evidence that it has rights in the H&R BLOCK mark established through its ownership of the abovementioned portfolio of registered service marks and the goodwill in the mark which it has established by extensive use in its tax return preparation services and software by itself and other members of its group.
The only differences between the H&R BLOCK mark and the <hrbblock.com> domain name are the addition of the letter "b," the deletion of ampersand "&” and the addition of the generic top-level domain <.com> extension.
Having compared both, this Panel finds that the disputed domain name is confusingly similar to the H&R BLOCK mark in which Complainant has rights because, as Complainant has argued, the appearance and overall commercial impression of the domain name and mark are substantially similar. In combination, the letters “hrbblock” have no apparent meaning or significance but together they bear a strong resemblance to Complainant’s mark. For the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the H&R BLOCK mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent has never been known by the disputed domain name <hrbblock.com> or any name corresponding to the domain name pursuant to the UDRP ¶ 4(c)(ii); that Complainant has not licensed or otherwise authorized Respondent to use Complainant's H&R BLOCK mark or any names confusingly similar thereto; that Respondent is using the disputed domain name for the purposes of phishing by creating confusion among Internet users by typosquatting and may be profiting from a perceived affiliation with Complainant, which are not a bona fide offering of goods or services; that Respondent’s use of the disputed domain name is for commercial gain and to misleadingly divert consumers which does not constitute a noncommercial or fair use pursuant to the UDRP ¶ 4(c)(iii).
It is well established that in circumstances such as this where a complainant has made out a prima facie case that a respondent has no rights or legitimate interests in a domain name, the burden of production shifts to the respondent to establish such rights. Respondent has failed to discharge the burden of production and so this Panel is obliged to find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Notwithstanding Complainant’s assertion that the disputed domain name was registered on February 5, 2019, the WhoIs information which is annexed to the Complaint shows that it was updated on that date, but that the registration is in fact much older and was in fact created on March 3, 2003. This is confirmed by information provided by the Registrar in response to the Forum’s request for verification of the registration details for the disputed domain name.
The information on the record therefore shows that the creation of the disputed domain name pre-dated the first service mark registration relied upon by Complainant viz. United States service mark H&R BLOCK, registration number 3,338,962, registered on November 20, 2007.
It is not necessary in this case to decide whether the renewal in 2019 was a registration for the purposes of Policy ¶ 4(a)(iii) because the record also shows that on the balance of probabilities the registrant of the disputed domain name in 2003 was aware of Complainant and its service mark rights. In its abovementioned 2007 service mark registration, Complainant claimed first use in commerce of H&R BLOCK mark for the purposes of tax returns in 1956 and the WhoIs information for Complainant’s own domain name < hrblock.com> submitted as evidence shows that it was created by Complainant as early as March 6, 1996.
This Panel finds that the disputed domain name was chosen and registered with Complainant’s mark in mind and accepts that it is improbable that the letters “hrbblock” were chosen and registered as a domain name for any reason other than their potential to create confusion with Complainant’s mark and reputation for the purposes of typosquatting to attract and divert traffic intended for Complainant’s website away to Respondent’s website.
While Complainant has alleged that the disputed domain name has been used for the purposes of phishing and that Complainant has taken steps in that regard, and that Complainant believes Respondent improperly receives commissions through Complainant’s affiliate program, these are unsupported bare assertions and no evidence of such alleged use or even the steps that Complainant claims to have taken has been adduced. This Panel makes no finding in that regard.
This Panel finds that on the evidence adduced, which has not been challenged in any way by Respondent, on the balance of probabilities the disputed domain name is presently being used in bad faith to resolve to Complainant’s website without Complainant’s authority or permission and such use is likely to cause confusion among Internet users and tarnish Complainant’s reputation, mark and goodwill.
This Panel finds that the disputed domain name was registered and is being used in bad faith. In making this finding this Panel is conscious that, while Complainant’s trademark is H&R BLOCK, with an ampersand, Complainant’s own name is HRB Innovations, Inc. and in the course of registration of the disputed domain name it is likely that the registrant became aware of Complainant’s pre-existing <hrblock.com> domain name.
Furthermore, this Panel is influenced in this present case by the fact that Respondent appears to be using a privacy service to conceal its identity as well as Respondent’s decision not provide any explanation as to why the disputed domain name was chosen or to more generally to defend this Complaint.
For completeness, it is appropriate to address the issue of delay, It would appear that Complainant has waited almost 17 years to file this Complaint, panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. See WIPO Jurisprudential Overview 3.0, section 4.17.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hrbblock.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________
James Bridgeman SC
Panelist
Dated: March 6, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page