Taxhawk, Inc. v. Yevgeniy Leshchinskiy
Claim Number: FA1202001431324
Complainant is Taxhawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Yevgeniy Leshchinskiy (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freetax-usa.com>, registered with Moniker Online Services LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2012; the National Arbitration Forum received payment on February 24, 2012.
On February 24, 2012, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <freetax-usa.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 March 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2012 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@freetax-usa.com. Also on March 6, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following submissions.
1. Complainant owns the FREETAXUSA mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,805,696 filed May 27, 2009; registered June 22, 2010).
2. Complainant began using the FREETAXUSA mark on January 5, 2003.
3. Complainant registered the <freetaxusa.com> domain name on September 11, 2002).
4. Complainant uses the FREETAXUSA mark to provide online tax preparation software that allows tax filings with the United States Internal Revenue Service.
5. Respondent registered the disputed domain name on February 4, 2009.
6. Respondent’s domain name resolves to <turbotax.com>, a competing tax preparation website, for which Respondent receives affiliate compensation.
7. Respondent registered and uses the domain name in bad faith by disrupting Complainant’s business and profiting from such use.
8. Respondent is a serial cybersquatter that has been involved in a prior UDRP proceeding where it has been ordered to transfer a trademark-infringing domain name to the respective owner.
9. Respondent has registered several other domain names that infringe upon the trademark rights of third parties.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant owns the FREETAXUSA mark registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,805,696 filed May 27, 2009; registered June 22, 2010).
2. Complainant uses the FREETAXUSA mark to provide online tax preparation software that allows tax filings with the United States Internal Revenue Service.
3. Complainant registered the domain name <freetaxusa.com> on September 11, 2002 and has used it extensively since then in the course of its business.
4. Complainant has thus established common law trademark rights to the FREETAXUSA mark that have been effective since at least September 11, 2002.
5. Respondent registered the disputed domain name on February 4, 2009. The domain name resolves to <turbotax.com>, a competing tax preparation website, for which Respondent receives affiliate compensation.
6. Respondent has been involved in a prior UDRP proceeding where it has been ordered to transfer a trademark-infringing domain name to the respective owner.
7. Respondent has registered several other domain names that infringe upon the trademark rights of third parties.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
The Panel finds that Complainant has rights in the FREETAXUSA mark and that the disputed domain name is confusingly similar to the mark. Complainant contends that it has Policy ¶ 4(a)(i) rights in the FREETAXUSA mark and in support of that contention it has submitted to the Panel a trademark registration printout from the USPTO for the FREETAXUSA mark (Reg. No. 3,805,696 filed May 27, 2009; registered June 22, 2010). The Panel therefore finds that Complainant’s trademark registration is evidence of rights under Policy ¶ 4(a) (i) and that those rights date back to the filing date of May 27, 2009. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant also alleges that its FREETAXUSA mark has been in use in commerce since January 5, 2003, as noted by the first-use-in-commerce date listed on the trademark certificate. See Exhibit E. Complainant asserts that it has securely filed over 7 million federal tax returns with the IRS and offers taxpayers help with services for individuals and businesses at its <freetaxusa.com> domain name. Complainant contends that it registered its <freetaxusa.com> domain name containing its mark on September 11, 2002. See Exhibit J. Complainant alleges that its business conducted under the FREETAXUSA mark has been recognized by the Better Business Bureau and numerous articles promoting its services. Complainant argues that it has spent millions of dollars in advertisement and promotion of the FREETAXUSA mark on the Internet through its website. Based on these arguments and the evidence adduced in support of them, the Panel holds that Complainant has shown continuous use of the mark sufficient to establish common law rights in the mark under Policy ¶ 4(a) (i) dating back at least to September 11, 2002. In this regard the Panel notes that the disputed domain name was not registered until February 4, 2009. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant then argues that the <freetax-usa.com> domain name is confusingly similar to its FREETAXUSA mark where the only applicable change to the mark is the addition of a hyphen between the words “freetax” and “usa”. Complainant also argues that the addition of the generic top-level domain (“gTLD”) “.com” cannot negate confusing similarity for the purposes of Policy ¶ 4(a) (i). The Panel agrees with Complainant and finds accordingly. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a) (i) analysis).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Having regard to those principles, the Panel finds that Complainant has made out its prima facie case based on the following considerations;
(a) Complainant has chosen for its domain name Complainant’s well-known FREETAXUSA trademark and has embodied the whole of the trademark in the domain name , adding only a hyphen , which cannot change the meaning of the domain name and the generic top level domain “.com”;
(b) Respondent’s domain name resolves to <turbotax.com>, a competing tax preparation website, for which Respondent must be presumed to receive affiliate compensation.
(c) This use by Respondent of Complainant’s trademark has clearly been without the knowledge or approval of Complainant;
(d) Complainant also argues that Respondent is neither commonly known by the disputed name nor authorized to use Complainant’s mark in any way and the Panel accepts that submission. Complainant alleges that the WHOIS information indicates that Respondent is known as an entity other than Complainant or its trademark. The Pane notes that the WHOIS information identifies “Yevgeniy Leshchinskiy” as the registrant of the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
(e) Complainant further argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii) and the Panel agrees with that submission. Complainant asserts that Respondent’s domain name redirects Internet users to <turbotax.com>, a direct competitor of Complainant, through an affiliate agreement that Complainant has traced to Respondent. The Panel finds that redirecting a disputed domain name to a direct competitor of Complainant does not amount to a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
These matters go to establish the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant argues that Respondent is using the disputed domain name to redirect Internet users to one of Complainant’s competitors, <turbotax.com>, through an affiliate program and it has submitted evidence to that effect that the Panels accepts. Complainant argues that such use constitutes bad faith disruption under Policy ¶ 4(b) (iii). The Panel agrees and finds accordingly. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).
Further, Complainant contends that Respondent, through the affiliate agreement, is commercially benefitting from its use of the disputed domain name. Complainant argues that Respondent is by that means attempting to create confusion as to Complainant’s sponsorship of the domain name. The Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b) (iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant also contends that Respondent has been the named respondent in a prior UDRP case involving Respondent’s registration and use of a domain name containing the trademark of a third party. See Johnson & Johnson v. Leshchinskiy, FA 1285852 (Nat. Arb. Forum Nov. 2, 2009). Complainant also supplies WHOIS information for three other domain names that are purportedly owned by Respondent that contain the trademarks of other third parties. The Panel accepts these arguments and finds on the totality of the evidence that Respondent has engaged in a pattern of bad faith registrations of domain name, thereby allowing the Panel to find bad faith under Policy ¶ 4(b) (ii) in the instant proceeding, which it does. See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).
In addition and having regard to the totality of the evidence submitted by Complainant, the Panel finds that Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression. The Panel also finds that as the disputed domain name was registered on February 4, 2009 and that, as the Panel has already held, Complainant’s common law trademark rights date back to at least September 11, 2002, the conduct engaged in by Respondent shows a bad faith intention in both registering the domain name and subsequently using it.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freetax-usa.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 11, 2012
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