TMIRS Enterprises, LTD d/b/a TaxMasters v. Rhodes & Company
Claim Number: FA0807001217398
Complainant is TMIRS Enterprises LTD d/b/a
represented by Alex
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taxmasters.com>, registered with Network Solutions, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 29, 2008.
On July 25, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <taxmasters.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 2, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on September 2, 2008.
An Additional Submission was received from Complainant on September 4, 2008 and determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Submission was received from Respondent on September 9, 2008 and determined to be timely and complete pursuant to Supplemental Rule 7.
On September 15, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, TMIRS Enterprises, LTD D/B/A Taxmasters, contends that it has been offering tax resolution services under the TAXMASTERS mark since 2003. The disputed domain name <taxmasters.com> should be “considered as having been registered to Complainant because it is the Complainant’s name.” Complainant says that it has been using the TAXMASTERS name in its national advertising campaign on which it has spent millions of dollars. Complainant contends that it has a pending trademark application with the United States Patent and Trademark Office. Complainant contends that “Respondent should not have any rights or legitimate interest with respect to the [disputed] domain name because [Respondent] is not using [the disputed domain name] and has no other purpose for having it other than to sell it to [Complainant] for an extremely high price.” At numerous times in the Complaint, Complainant states that Respondent is only holding onto the disputed domain name for the purpose of extorting an “exorbitant amount of money” from Complainant.
The Response was filed by John F. Rhodes, who is shown as the administrative contact for Respondent, Rhodes & Company. Mr. Rhodes says that he is a certified public accountant and sole proprietor specializing in income tax preparation and advice. Mr. Rhodes contends that the disputed domain name <taxmasters.com> is being utilized in connection with the tax services he provides his clients.
Arguing that Complainant does not
have exclusive rights to or use of TAXMASTERS, Mr. Rhodes states that there are
at least 44 different businesses, including 5 in
Respondent has been using <taxmasters.com> since August 24, 1996, the date of registration, which is more than 6 years before Complainant was formed and began using the TAXMASTERS mark.
Respondent did not acquire the disputed domain name for the sole purpose of selling it to Complainant. With no web site, Respondent is not disrupting the business of any competitor.
C. Additional Submissions
In its Additional Submission, labeled 1st Amended Complaint, Complainant repeats many of its previous allegations. Complainant argues that “This complaint is based on the fact that Respondent has reserved the domain name TaxMasters which is the assumed name of Complainant.” Complainant’s advertisements are seen all over the world. Complainant alleges that it has acquired “equitable rights to [the] domain name and common law prior use rights because Complainant has been doing business as TaxMasters since 2003 and spent millions on advertising.” Complainant contends that “[t]he domain name should be considered as having been registered to Complainant because it is the Complainant’s name . . . .”
Mr. Rhodes contends that his registration and use of the disputed domain name clearly predates Complainant’s use of the TAXMASTERS mark.
Complainant has been offering tax resolution services under the TAXMASTERS mark since 2003. The domain name <taxmasters.com> was registered on August 24, 1996, to Respondent, Rhodes & Company. The Response was filed by John F. Rhodes, who is shown as the administrative contact for Rhodes & Company. Mr. Rhodes has not operated a website at the domain name because “[h]e was never able to design and maintain a web site commensurate with the quality of his services, and decided not having a web site was preferable to having a bad one.” However, Mr. Rhodes provides evidence that the disputed domain name is used extensively for electronic messaging and appears on his letterhead, business cards, and signage.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel finds that Complainant has failed to show bad faith registration. Since Complainant has failed to satisfy the third element under Policy ¶ 4(a)(iii), there is no need to address the first and second elements.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent’s use of the disputed domain name has been for over twelve years, roughly six years earlier than when Complainant began to use the disputed domain name. In order to show bad faith under Policy ¶ 4(a)(iii), Complainant must demonstrate bad faith registration and use. See Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant). The Panel finds that Respondent’s registration of the <taxmasters.com> domain name prior to Complainant’s use of the TAXMASTERS mark demonstrates that Respondent lacked the requisite bad faith needed at the time of registration. Therefore, the Panel finds that Respondent did not register the disputed domain name in bad faith pursuant Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant's company did not exist at the time of registration); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Therefore, Complainant has failed to satisfy the third element under Policy ¶ 4(a)(iii).
Having failed to establish the third element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <taxmasters.com> domain name NOT BE TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Dated: September 29, 2008
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