Taxhawk, Inc. v. Above.com Domain Privacy
Claim Number: FA1208001459727
Complainant is Taxhawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <feeetaxusa.com>, <freetaxsa.com>, <frreetaxusa.com>, <tawhawk.com>, and <taxhawl.com>, registered with Above.Com Pty Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2012; the National Arbitration Forum received payment on August 24, 2012.
On August 31, 2012, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <feeetaxusa.com>, <freetaxsa.com>, <frreetaxusa.com>, <tawhawk.com>, and <taxhawl.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 August 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@feeetaxusa.com, postmaster@freetaxsa.com, postmaster@frreetaxusa.com, postmaster@tawhawk.com, and postmaster@taxhawl.com. Also on August 31, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the FREETAXUSA and the TAXHAWK trademarks with regard to its online tax preparation software and services. Complainant’s websites at <freetaxusa.com> and <taxhawk.com>, offer services for individuals and small businesses such as tax forms, tax preparation software, tax calculations, copies of past year tax returns, tax extensions, tax tips, audit assistance, and other related services.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TAXHAWK (Reg. No. 3,728,199 filed May 27, 2009, registered December 22, 2009) and FREETAXUSA marks (Reg. No. 3,805,696 filed May 27, 2009 registered June 22, 2010).
Respondent registered the <feeetaxusa.com> domain name on July 1, 2010; the <freetaxsa.com> domain name on May 2, 2009; the <frreetaxusa.com> domain name on February 27, 2008; the <tawhawk.com> domain name on January 12, 2011; and <taxhawl.com> domain name on February 21, 2011.
The at-issue domains name are each confusingly similar to one of Complainant’s trademarks.
Respondent’s registration of the disputed domain names constitutes typosquatting.
Respondent has no rights or legitimate interests in the disputed domain names and is not commonly known by any of the disputed domain names.
Complainant has not granted Respondent permission to use either its TAXHAWK mark or its FREETAXUSA mark.
Respondent does not use any of the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial of fair use.
Respondent hosts pay-per-click hyperlinks at the websites referenced by the at-issue domain name.
These websites compete directly with Complainant’s business, as well as offer competing services via one of the refered websites.
Respondent is an affiliate of H&R Block, one of Complainant’s largest competitors.
Respondent generates income by hosting the pay-per-click links at its resolving websites. Respondent’s registration and use of the disputed domain names is in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for the TAXHAWK and FREETAXUSA trademarks.
Complainant has not granted Respondent permission to use either its TAXHAWK mark or its FREETAXUSA mark.
Complainant acquired rights in its relevant trademarks prior to Respondent’s registration of each of the at-issue domain names.
Respondent generates income by hosting pay-per-click links at its at-issue domain name referenced websites.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant establishes rights under Policy ¶ 4(a)(i) in its TAXHAWK and TAXFREEUSA marks by having registered such marks with the USPTO. 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.”).
The <feeetaxusa.com> domain name replaces the letter “r” with the letter “e” and the <frreetaxusa.com> domain name includes an extra letter “r,” while the <freetaxsa.com> domain name omits the letter “u.” The <feeetaxusa.com>, <freetaxsa.com>, and <frreetaxusa.com> domain names all include the generic top-level domain, “.com.” These typographical alterations do not take Respondent’s domain names out of the realm of confusing similarity as the changes do not materially alter the sight, sound or meaning of Complainant’s FREETAXUSA trademark. Therefore, the Panel concludes that the <feeetaxusa.com>, <freetaxsa.com>, and <frreetaxusa.com> domain names are each confusingly similar to Complainant’s FREETAXUSA mark for the purpose of Policy ¶4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Correspondingly, Respondent’s <tawhawk.com> and <taxhawl.com> domain names are confusingly similar to Complainant’s TAXHAWK mark due to the misspelling of the TAXHAWK mark within the domain names. The <tawhawk.com> domain name replaces the letter “x” with the letter “w,” and the <taxhawl.com> domain name replaces the letter “k” with the letter “l.” Both domain names include the top level domain name, “.com.” Replacing one letter with another and appending a gTLD does not distinguish either domain name from Complainant’s TAXHAWK mark for the purposes of Policy ¶ 4(a)(i). See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent lacks both rights and legitimate interests in respect of each of the at‑issue domain names. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain names lists “Above.com Domain Privacy” as the registrant thereby suggesting that Respondent is known by a name other than the trademarks associated with Complainant. Moreover the record contains no evidence tending to prove that Respondent is otherwise known by one or more of the at-issue domain names. Therefore, the Panel concludes that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), (holding that the complainant had not authorized the respondent to register domain names containing the complainant’s mark, and the WHOIS information did not indicate that the respondent was commonly known by the disputed domain names).
Respondent uses the <freetaxsa.com> domain name to offer products and services, including tax preparation assistance, that compete with those offered by Complainant under its FREE TAX USA mark. Respondent’s use of the <freetaxsa.com> domain name in this manner is not 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 Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
Respondent uses the <feeetaxusa.com>,<freetaxsa.com>, <frreetaxusa.com>, <tawhawk.com>, and <taxhawl.com> domain names to maintain multiple websites that offer hyperlinks to competing third-party entities in order to collect referral fees. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) or Policy ¶4(c)(iii). See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), (finding that because the respondent’s disputed domain names resolve to a website that contains advertising links to third-party businesses in competition with the complainant, the respondent’s use of the disputed domain names was not for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Furthermore, Respondent registered the <feeetaxusa.com>, <freetaxsa.com>, <frreetaxusa.com>, <tawhawk.com>, and <taxhawl.com> domain names to capitalize on Internet users’ misspellings of Complainant’s trademarks. Respondent thereby engages in typosquatting by taking advantage of common spelling errors associated with Complainant’s marks. Using a domain name to typosquat demonstrates that Respondent does not possess rights or legitimate interests in such domain name pursuant to Policy ¶ 4(a)(ii). See Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), (holding that the disputed domain names were intentional misspellings of the complainant’s mark, which constituted typosquatting and provided evidence of the respondent’s lack of rights or legitimate interests).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at-issue domain names were each registered and are each being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith.
Respondent’s bad faith registration and use of the domain names under Policy ¶ 4(b)(iii) is evident by its disruptive use of the <feeetaxusa.com>, <freetaxsa.com>, <frreetaxusa.com>, <tawhawk.com>, and <taxhawl.com> domain names. Respondent uses the confusingly similar domain names to divert potential customers away from Complainant’s website and to Respondent’s websites where competing services are offered. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Respondent benefits commercially, or intends to, when consumers visit websites associated with one or more of the at-issue domain names. Respondent is thereby “capitalizing on the likelihood that consumers will confuse the source” of the at-issue domain names as being associated with Complainant. Using the domain names in this manner demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv) and otherwise. 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 See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), (where the disputed domain name resolved to a website that featured links to competing third-party websites and took advantage of Internet user mistakes, the respondent acted in bad faith).
Respondent registered and is using the <feeetaxusa.com>, <freetaxsa.com>, <frreetaxusa.com>, <tawhawk.com>, and <taxhawl.com> domain names for typosquatting. Each of the domain names constitutes a mistyped version of Complainant’s FREETAXUSA or TAXHAWK marks. Registering the at-issue domain name was calculated to improperly take advantage of certain typing errors made when an Internet user attempts to find Complainant. Respondent’s typosquatting further demonstrates that Respondent registered the at-issue domain names in bad faith under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <feeetaxusa.com>, <freetaxsa.com>, <frreetaxusa.com>, <tawhawk.com>, and <taxhawl.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 28, 2012
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