TaxHawk, Inc. v. Pham Dinh Nhut
Claim Number: FA1202001431444
Complainant is TaxHawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freetaxusa.org>, registered with April Sea Information Technology Corporation (R1913-LROR).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Duc T. Dang 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. The Complaint and the Response were both submitted in Vietnamese and English.
On February 28, 2012, April Sea Information Technology Corporation (R1913-LROR) confirmed by e-mail to the National Arbitration Forum that the <freetaxusa.org> domain name is registered with April Sea Information Technology Corporation (R1913-LROR) and that Respondent is the current registrant of the name. April Sea Information Technology Corporation (R1913-LROR) has verified that Respondent is bound by the April Sea Information Technology Corporation (R1913-LROR) 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 13, 2012, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of April 2, 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@freetaxusa.org. Also on March 13, 2012, the Vietnamese language 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.
A timely Response was received and determined to be complete on April 2, 2012.
On May 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Duc T. Dang 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.
Pursuant to Rule 11(a) and the acquiescence of both Complainant and Respondent, the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, in light of the English language Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant alleges that:
B. Respondent alleges that:
1. Respondent resides in Vietnam and had never heard of Complainant prior to this dispute.
2. Respondent registered the disputed domain name because it contains the generic and common terms “free,” “tax,” and “USA.”
3. Complainant did not accurately report its trademark registration information.
4. Respondent’s predecessor-in-interest registered the <freetaxusa.org> domain name in 2006 and passed on its rights to Respondent when Respondent purchased the disputed domain name.
5. Respondent is not Navigation Catalyst System as Complainant alleges and, therefore, Respondent has not been involved in previous UDRP proceedings.
6. Respondent buys and sells generic domain names, which is a legitimate and good faith business.
Complainant, TaxHawk, Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the FREETAXUSA mark (in Class 42 for providing temporary use of on-line non-downloadable software for tax calculation and tax return preparation and filing), which was granted on June 22, 2010 (Reg. No. 3,805,696 filed May 27, 2009; registered June 22, 2010). Complainant began using its FREETAX USA mark on January 5, 2003 in connection with its online tax services. It registered the <freetaxusa.com> domain name on September 11, 2002. It is noted that Complainant’s USPTO trademark registration lists January 5, 2003 as the first use date of the mark.
Respondent, Pham Dinh Nhut, is a Vietnamese individual residing in Vietnam. Respondent’s predecessor-in-interest registered the <freetaxusa.org> domain name in 2006 (prior to Complainant being granted the trademark registration from the USPTO in 2010) and passed on its rights to Respondent when Respondent purchased the disputed domain name. Respondent uses the <freetaxusa.org> domain name to redirect Internet users to its website featuring generic hyperlinks to third-party websites, some of which compete with Complainant for online tax services.
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.
Complainant claims that its owns a USPTO trademark registration for its FREETAXUSA mark that it registered in 2002. Complainant does however in fact own a trademark registration for the FREETAXUSA mark with the USPTO, but the mark itself was not registered until June 22, 2010 (Reg. No. 3,805,696 filed May 27, 2009; registered June 22, 2010). See Complainant’s Exhibit E. Based on this USPTO trademark registration, the Panel finds that Complainant owns rights in its FREETAXUSA mark under Policy ¶ 4(a)(i), despite the mark not being registered in Respondent’s country, and that the mark dates back to the USPTO filing date of May 27, 2009. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); 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”).
While Complainant does not specifically argue common law rights, Complainant does contend that it began using its FREETAX USA mark on January 5, 2003 in connection with its online tax services. Complainant additionally alleges that it registered the <freetaxusa.com> domain name on September 11, 2002. The Complainant’s USPTO trademark registration lists January 5, 2003 as the first use date of the mark. Complainant claims that it has spent millions of dollars in advertising and promotion of the FREETAXUSA mark. The Panel holds that Complainant’s FREETAXUSA mark has acquired secondary meaning through continuous and extensive use, and as such the Panel finds that Complainant owns common law rights in the FREETAXUSA mark pursuant to Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant alleges that Respondent’s <freetaxusa.org> domain name is identical and confusingly similar to Complainant’s FREETAXUSA mark. Complainant claims that the disputed domain name fully incorporates Complainant’s mark and only adds the generic top-level domain (“gTLD”) “.org.” Complainant argues that such an addition is irrelevant to a Policy ¶ 4(a)(i) analysis. Therefore, under Policy ¶ 4(a)(i), the Panel finds that Respondent’s <freetaxusa.org> domain name is identical to Complainant’s FREETAXUSA mark. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
While Respondent argues that its registration of the <freetaxusa.org> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
While Respondent contends that the <freetaxusa.org> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, the Panel also finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The Panel holds that Complainant has established a prima facie case in support of its argument that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and as such 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.”).
Complainant argues that Respondent is not commonly known by the <freetaxusa.org> domain name. Complainant alleges that Respondent is not sponsored by, or legitimately affiliated with, Complainant and that Complainant has not granted Respondent permission or authorization to use Complainant’s FREETAXUSA mark. The Panel notes that the WHOIS information lists “Pham Dinh Nhut” as the registrant of the disputed domain name. Therefore, without evidence to the contrary, the Panel determines that Respondent is not commonly known by the <freetaxusa.org> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims that Respondent uses the <freetaxusa.org> domain name to resolve to a website that contains hyperlinks to third-party websites, some of which compete with Complainant’s online tax website. Complainant also argues that Respondent receives click-through fees from the hyperlinks. Complainant contends that such a use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <freetaxusa.org> domain name. The Panel agrees and determines that Respondent does not own rights or legitimate interests in the <freetaxusa.org> domain name under Policy ¶¶ 4(c)(i) and (iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent has been a respondent in a previous UDRP proceeding in which the panel ordered the respondent to transfer the disputed domain name to the complainant. Complainant provides the Panel with the UDRP case. See FCOA, LLC v. Pham Dinh Nhut, FA 1413706 (Nat. Arb. Forum Dec. 20, 2011). Complainant argues that Respondent also registered domain names that contain the mark of a third party. See Complainant’s Exhibit O. Based on the prior UDRP proceeding and the third-party domain names, the Panel concludes that Respondent’s registration of the <freetaxusa.org> domain name is a part of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also 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).
Complainant argues that Respondent’s registration and use of the <freetaxusa.org> domain name for the purpose of hosting competing hyperlinks disrupts Complainant’s business. Complainant contends that Respondent uses the disputed domain names to redirect Complainant’s potential customers to Complainant’s competitors in the online tax services business, which disrupts Complainant’s business. The Panel holds that Respondent registered and uses the <freetaxusa.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Finally, Complainant claims that Respondent attempts to generate revenue as a "click-through” website by using Complainant’s FREETAXUSA mark and providing hyperlinks that resolve to Complainant’s competitors’ websites. Complainant argues that Respondent is taking advantage of Complainant’s well-known mark to achieve a competitive advantage and commercial gain. The Panel agrees that Respondent is attempting to create a likelihood of confusion as to Complainant’s affiliation with the disputed domain name for commercial benefit. Therefore, the Panel holds that Respondent registered and uses the <freetaxusa.org> domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freetaxusa.org> domain name be TRANSFERRED from Respondent to Complainant.
Duc T. Dang, Panelist
Dated: May 28, 2012
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