The Tax Man Inc. v. Kyle Kelley
Claim Number: FA0204000112437
Complainant
is The Tax Man Inc., Cambridge, MA,
USA (“Complainant”) represented by George
I. Goverman. Respondent is Kyle Kelley, Lake Mary, FL, USA
(“Respondent”).
The
domain name at issue is <taxman.biz>,
registered with Namescout.com.
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.
Sandra
Franklin as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 23,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On June 13, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Sandra Franklin as
the single 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 STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
disputed domain name <taxman.biz> is identical to Complainant’s
TAX MAN registered service mark.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent
registered the disputed domain name in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
Complainant is engaged in the business of
preparing tax returns and providing financial consulting services. Complainant has held registration of the
“words only” TAX MAN service mark, used in connection with those services,
since at least 1984. The mark is
registered on the Principal Register of the United States Patent and Trademark
Office (“USPTO”) as Registration Number 1,272,099.
Complainant asserts that it also holds
rights through prior marks, registered with the Commonwealth of Massachusetts
as early as 1967, and with the USPTO as early as 1972, although the USPTO mark
was inadvertently cancelled.
Complainant searched the Florida
Secretary of State’s database—Florida is Respondent’s state of residence—and
could find no trademarks in TAX MAN belonging to Respondent.
Respondent registered the disputed domain
name on March 27, 2002, and there is no available evidence that it made any use
of the name. Respondent’s provided
registration information suggests that Respondent is also a tax professional.
Paragraph 15(a) of the STOP 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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established its rights in TAX MAN through registration of the mark with the
USPTO. The <taxman.biz>
domain name is identical to the mark as spaces cannot be used in domain names
and the gTLD “.biz” is not relevant to the “identical” inquiry. See Hannover Ruckversicherungs-AG
v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
STOP
Policy ¶ 4(a)(i) has been satisfied.
Complainant has demonstrated its rights
to and interests in the TAX MAN mark.
Because Respondent has not supplied a Response in this matter, the Panel
may presume it has no such rights or interests in the <taxman.biz>
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Because Respondent has not provided any
argument or evidence to refute Complainant’s assertions, Complainant’s claims
will be accepted as true. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Complainant has conducted a search for
marks containing the words TAX MAN and found that Respondent holds no such
marks. Accordingly, the Panel finds
that Respondent has no rights in the domain name pursuant to STOP Policy ¶
4(c)(i). See Nat’l Acad. Of
Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11,
2002) (finding that, because Respondent did not come forward with a Response,
the Panel could infer that it had no trademark or service marks identical to
<grammy.biz> and therefore had no rights or legitimate interests in the
domain name).
Further, there is no evidence that
Respondent is commonly known as “taxman” or <taxman.biz> pursuant
to STOP Policy ¶ 4(c)(ii). See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Finally, although there is no evidence of
Respondent’s use of the domain name, any possible use of the infringing domain
name by Respondent, as a competitor of Complainant, will not constitute a bona
fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(iii). See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see
also Ticketmaster Corp. v.
DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website).
STOP Policy ¶ 4(a)(ii) has been
satisfied.
Complainant has provided evidence that
Respondent is also a tax preparation professional. As such, Respondent should certainly have been aware that another
party might hold rights in the TAX MAN mark.
Because the mark is registered on the Principal Register of the USPTO,
Respondent is presumed to have been aware of the mark, and its registration of
the infringing domain name was therefore in bad faith. See Victoria's
Cyber Secret Ltd. P'ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Furthermore, because the Registry
Operator notified Respondent that its registration of <taxman.biz>
was subject to challenge by another party that had asserted proprietary rights
in the domain name, Respondent had ample notice that its choice of domain name
would unlawfully infringe upon another’s rights. Given the opportunity to abandon its registration attempt,
Respondent elected to proceed with the registration, thereby registering the
name in bad faith. See Gene Logic
Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the
unique nature of the STOP Policy and the notice given to Respondent regarding
existing IP Claims identical to its chosen domain name precluded good faith
registration of <genelogic.biz> when Respondent registered it with “full
knowledge that his intended business use of this domain name was in direct
conflict with a registered trademark of a known competitor in exactly the same
field of business”); see also Valspar Sourcing,
Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum
June 4, 2002) (“Respondent was on notice of Complainant’s rights in PAINT.BIZ
when it registered the disputed domain name, because Respondent received notice
of Complainant’s IP Claim. Respondent’s
registration of the disputed domain name despite this notice when Respondent
had no right or legitimate interest in the domain name is evidence of bad
faith”).
STOP Policy 4(a)(iii) has been satisfied.
Having established all three elements
required under the STOP Policy, the Panel concludes that relief should be
hereby granted.
Accordingly, it is Ordered that the <taxman.biz>
domain name be transferred from Respondent to Complainant and that
further IP challenges under the STOP Policy shall not be permitted.
Sandra Franklin, Panelist
Dated: June 18, 2002
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