national arbitration forum

 

DECISION

 

Taxhawk, Inc. v. Silmaril ltd

Claim Number: FA1210001465276

 

PARTIES

Complainant is Taxhawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Silmaril ltd (“Respondent”), Turkey.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <feetaxusa.com> and <fretaxusa.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2012; the National Arbitration Forum received payment on October 1, 2012.

 

On October 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <feetaxusa.com> and <fretaxusa.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@feetaxusa.com and postmaster@fretaxusa.com.  Also on October 9, 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 November 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Mark: FREETAXUSA

 

Complainant, Taxhawk, Inc., is the owner of the US Federal Trademark for FREETAXUSA in Class 42 for providing temporary use of on-line non-downloadable software for tax calculation and tax return preparation and filing; and, providing temporary use of on-line non-downloadable software for processing tax payments. FIRST USE: 20030105. FIRST USE IN COMMERCE: 20030105 (US Reg. No. 3805696).

 

1. FACTUAL AND LEGAL GROUNDS

 
This Complaint is based on the following factual and legal grounds:

 

FreeTaxUSA is an online, tax preparation service owned by Taxhawk, Inc. Founded in 2001 by a certified public accountant and a team of professional software developers, Taxhawk is an original member of the IRS Free File Alliance and an authorized IRS e-file provider. The company has securely filed over 7 million federal tax returns with the IRS, and their multiple websites offer taxpayers help with a diverse number of online tax services for individuals and small businesses. 

 

FREETAXUSA.COM offers software with features including, but not limited to, the following tax preparation products and services: tax forms; tax calculation with built-in itemized and standard deductions and error checking; copies of past year tax returns, tax extensions; important tax dates; calculators and estimates, free military tax returns; tax tips; quick refunds; audit assistance; online support; and email subscriptions. Their straightforward pricing structure and excellence in performance have earned FreeTaxUSA an A+ approval rating with the Better Business Bureau. 

 

Taxhawk, Inc. owns the FREETAXUSA Mark cited in Section 4(c) above for which it has obtained the US federal trademark. The FREETAXUSA Mark issued in 2010 by the USPTO, and has been in continuous use in connection with online, tax services since its First Use in Commerce date of January 5, 2003.

 

Taxhawk, Inc. has spent millions of dollars in advertisement and promotion of the FREETAXUSA Mark on the Internet through its website located at FREETAXUSA.COM. The FreeTaxUSA e-filing option is featured on various US state websites, and many articles have been written promoting the free Federal Income Tax filing option offered on the website FREETAXUSA.COM.

 

The FREETAXUSA trademark is well known, and well-received in the community at large, and based on the US Federal Trademark Registration and the extensive use of the FREETAXUSA Mark, Taxhawk owns the exclusive right to use the FREETAXUSA Mark in connection with online tax products and services.

[a.]

The Disputed Domain Name(s) are nearly identical and confusingly similar to Complainant's Marks.

i.

 

 

 

 

 

 

 

 

 

 

ii.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

iii.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 


iv.

 

 

 

 

 

 

 

 

 

v.

 

 

 

 

 

 

 

 

 

 

 

vi.

 

 

 

 

 

 

 

 

 

 

 

 

 

vii.

By virtue of its federal trademark and/or service mark registrations, Complainant is the owner of the Complainant's Mark(s). See, e.g., United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202 ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)"). As in other cases, it is also important to note that it is irrelevant for the purposes of Policy ¶4(a)(i) whether Complainant registered the mark in the country where Respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).

 

Although the Complainant’s trademark,  FREETAXUSA, was not registered until after the registration of the Disputed Domain Name(s), the Complainant’s first use in commerce, January 5, 2003, registration of Complainant’s primary website in 2002, and press releases of the brand prior to the registration of the Disputed Domain Name(s) should be considered in determining prior rights.  The Panel should refer to the passage in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (accessible on the WIPO website), which reads:

 

“1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered? The consensus view is that the registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights……”, see Madrid 2012, S.A. v. Scott Martin-Madrid Man Websites, WIPO Case No. D2003-0598, <2m12.com> inter alia; Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc., Domain Administrator, WIPO Case No. D2007-0856, <iscrub.com>.

 

In addition to the above, although the Complainant did not have a registered trademark or service mark matching the Disputed Domain Name(s), this fact standing alone is not fatal to a finding of identity or confusing similarity under the Policy. According to paragraph 4(a)(i) of the Policy, common law rights are sufficient to support a domain name complaint. To establish common law rights in a mark, a complainant must show that its mark has acquired secondary meaning, i.e., that the public associates the asserted mark with complainant's goods and services. See First Place Financial Corp. v. Michele Dinoia c/o SZK.com, FA 506772 (Nat. Arb. Forum August 22, 2005). ICANN Panels have found relevant evidence of secondary meaning to include "length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition". Candy Direct, Inc. v. italldirect2u.com, FA 514784 (Nat. Arb. Forum August 22, 2005). It is well settled that the term "trademark or service mark" as used in Paragraph 4(a)(i) encompasses both registered marks and common law marks. See also, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000 0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002 0005, The Professional Golfers' Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001 0218; Cybertania Inc v. The Domain Queue c/o Domain Admin, Claim Number: FA0904001258292.

 

When comparing the Disputed Domain Name(s) to the Complainant's Mark(s), the evant comparison to be made is between only the second-level portion of the Disputed Domain Name(s) and the Complainant's Mark(s). See Rollerblade, Inc. v. McCrady, WIPO case No. D2000-0429 (finding that the top-level domain, such as ".net" or".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he addition of atop-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.")

 

The Disputed Domain Name(s) (is/are) confusingly similar to Complainant's Mark(s) because (it/they) differ(s) by only a single character from Complainant's Mark(s), or because it differs by only the juxtaposition of two characters when compared to Complainant's Mark(s). For clarification, the Disputed Domain Name(s) contain(s) either:

[i.] the addition of one extra character, or...
[ii.] the removal of one character, or...
[iii.] one character which is incorrect, or...
[iv.] two juxtaposed characters


as compared to Complainant's Mark(s).

 

As it pertains to, FEETAXUSA.COM, the only difference between the Disputed Domain Name and Complainant’s Mark is that the Disputed Domain Name omits the letter “r.” The difference of only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000); State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark). See also Cybertania Inc v. The Domain Queue c/o Domain Admin; NAF Claim Number : FA0904001258292 (finding that the domain name <myfeecams.com > is confusingly similar to the complainant’s MYFREECAMS.COM mark) and Cybertania, Inc v. Domain Drop S.A., NAF Claim Number:  FA0712001118626 (finding that the domain name < feepaysite.com > is confusingly similar to the complainant’s MYFREEPAYSITE.COM mark).

 

The Disputed Domain Name(s) (is/are), simply put, a classic example of "typosquatting". The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the names must be confusingly similar by design. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No.FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks).

 

 

 

[b.]

Respondent has no rights or legitimate interests in respect of the Disputed Domain Name(s) for the following reasons:

i.

 

 

 

 

 

 

 

ii.

 

iii.

Respondent has not been commonly known by the Disputed Domain Name(s). See Policy, ¶4(c)(ii). Where, as here, "the WHOIS information suggests Respondent is known as" an entity other than the trademark associated with Complainant, and Complainant has not "licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's... mark," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202.

Respondent is not sponsored by or legitimately affiliated with Complainant in any way.

 

Complainant has not given Respondent permission to use Complainant's Mark in a domain name.

 

iv.

A "Cease and Desist" letter was sent to the Respondent. The letter informed the Respondent that it was infringing on Complainant's IP rights and allowed the Respondent the opportunity to respond if they have any IP rights. The Respondent was provided with the information of the Complainant's trademark(s), hence showing proof that the Complainant has rights to the brand(s). To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.

 

v.

Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. Rave Club Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing 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). Further,  Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."

 

vi.


 

 

 

 

 

 

 

 

 

 

 

 


vii.

 

 

 

 

 

 

Respondent is using (some or all of) the Disputed Domain Name(s) to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name(s) to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent's use of the 24hrsfitness.comgt, 24-hourfitness.com.gt and 24hoursfitness.com.gt, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names).

 

The earliest date on which Respondent registered the Disputed Domain Name(s) was March 24, 2004, which is significantly after Complainant's first use in commerce on January 5, 2003, as specified in their relevant registration with the USPTO.

 

viii.

 

 

 

The earliest date on which Respondent registered the Disputed Domain Name(s) was March 24, 2004, which is significantly after Complainant's registration of FREETAXUSA.COM on September 11, 2002.

[c.]

The Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:

i.

 

 

 

 

 

 

 

 

Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'.. . through Respondent's persistent practice of 'typosquatting'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.").

 

ii.






 

 

 

 

 





iii.

 

 

 

 

 

 

 

 

 

 

iv.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

v.

 

 

 

 

 

vi.

 

 

 

 

 

 

 

 

Respondent's bad faith is further shown by the Respondent using the Disputed Domain Name(s) website in connection with generating revenue as a "click through" website by using the Complainant's registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant's well known mark to achieve a wrongful competitive advantage and commercial gain. In WIPO Decision D2008-1470, AIDA Cruises German Branch of Societa di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / BelgiumDomains "the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies' websites related to cruises and travels, in the form of a "clickthrough" website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a "click-through" website has to be considered as an evidence of bad faith (see, e.g. Abercrombie &amp; Fitch Trading Co. v. Digi Real Estate Foundation, WIPO Case No. D2007-0440; Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)".

 

Respondent has caused the website(s) reachable by (some or all of) the Disputed Domain Name(s) to redirect Internet users to a website featuring products/services in direct competition with Complainant. This constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).

 

Complainant asserts that Respondent benefits commercially when consumers purchase products or services from the website that redirects from Respondent's infringing domain name. Respondent is therefore capitalizing on the likelihood that consumers will confuse the source of the Disputed Domain Name(s) as being affiliated with Complainant and using the Disputed Domain Name(s) to attract and mislead consumers for its own profit.  This is further evidence of bad faith registration and use under Policy ¶4(b)(iv).  See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates the mark belonging to another with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). See also Meadowbrook, L.L.C. d/b/a The Land of Nod v. Venkateshwara Distributor Private Limited, Claim Number: FA1112001419361 and Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, Claim Number: FA1204001439309, where the same behavior of bad faith is demonstrated and agreed by the panel, pursuant to Policy ¶4(b)(iv).

 

Respondent has caused the website(s) reachable by (some or all of) the Disputed Domain Name(s) to display Complainant's Mark(s) spelled correctly (even though the domain name(s) (is/are) a misspelled version of the same mark(s)). This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark(s).

 

Respondent has caused the websites reachable by (some or all of) the Disputed Domain Name(s) to display content and/or keywords directly related to Complainant's business. This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark and its related business.

 

By registering domain names that are confusingly similar to trademarks owned by others, to prevent the owner of the Mark from reflecting the mark in a corresponding domain name, the Disputed Domain Name owner has engaged in a pattern of such conduct. Respondent is thereby a recalcitrant, serial cybersquatter / typosquatter.

 

Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior.

 

By registering domain names similar to various famous trademarks to which he has no rights, such as Match.com, Viagra, Cartoon Network and Overstock, Respondent has provided evidence a pattern of holding multiple domain names which are confusingly similar to trademarks of others.  These domains that appear to be straightforward examples of typosquatting. Although those names are not directly involved in this complaint, they serve as further evidence of bad faith intent on the part of Respondent. See Policy, 4(b)(ii) and Time Warner Inc. v. Zone MP3, NAF Claim No. FA0706001008035 (typosquatting combined with registration of as few as four domain names that are identical or confusingly similar to "protected marks" is sufficient to establish a pattern leading to bad faith). See also Citigroup Inc. v. Digi Real Estate Foundation, NAF Claim No. FA0704000964679. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(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.”).

 

Identical and/or Confusingly Similar

Complainant contends it has used the FREETAXUSA mark for online tax preparation services and has done so since at least January 5, 2003.  Complainant owns a trademark registration with the United States Patent & Trademark Office (“USPTO”) for its FREETAXUSA mark (Reg. No. 3,805,696 filed May 27, 2009; registered June 22, 2010).  Complainant’s trademark registration with the USPTO is sufficient for Complainant to establish its rights in the mark under Policy ¶4(a)(i).  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).  However, Respondent’s registration of FreTaxUSA.com on March 24, 2004 and FeeTaxUSA.com on March 20, 2005 predate this.

 

Complainant’s rights in the mark date back to its filing date with the USPTO of May 27, 2009 (Registration #3805696).  See 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”).  The fact Respondent is located in Turkey does not preclude a finding Complainant has adequately established its rights in the FREETAXUSA mark by registering it with the USPTO.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).  However, Respondent’s registration of FreTaxUSA.com on March 24, 2004 and FeeTaxUSA.com on March 20, 2005 still predate this.

 

Although Complainant did not register its FREETAXUSA mark before Respondent registered the disputed domain names, Complainant’s prior use of the marks can be shown by its “first use in commerce” date and the registration of its primary website.  Complainant is claiming a first use date of January 5, 2003 both in its Complaint and on its trademark certificates.  Complainant registered its FreeTaxUSA.com domain name on September 11, 2002.  Complainant also notes it was featured in several articles showing its use of the FREETAXUSA mark, some of which date back to 2003.  Complainant argues it has spent millions on advertising its mark and its continuous use of the mark in commerce provides it with common law rights dating back to at least 2003.  The Panel concurs and finds Complainant has established common law rights in the FREETAXUSA mark that date back at least to its first use in commerce date of January 5, 2003.  See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).

 

Complainant claims Respondent’s <feetaxusa.com> and <fretaxusa.com> domain names are confusingly similar to Complainant’s FREETAXUSA mark.  The disputed domain names remove either the letter “r” or the letter “e” from the mark while also adding the generic top-level domain (“gTLD”) “.com.”  The Panel concurs with Complainant and finds Respondent’s <feetaxusa.com> and <fretaxusa.com> domain names are confusingly similar to Complainant’s FREETAXUSA mark under Policy ¶4(a)(i).  See 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.”).

 

The Panel finds Policy ¶4(a)(i) satisfied. 

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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 claims Respondent has not been commonly known by the disputed domain names based upon the WHOIS information and has not been given permission to use Complainant’s mark.  The WHOIS information identifies “Silmaril ltd” as the registrant of the domain names at issue.  Absent a response by Respondent, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant claims Respondent is using the disputed domain names to resolve the disputed domain names to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.  Complainant’s screenshots of the resolving website show link headings such as “Free Income Tax Preparation,” “Free Tax Filing,” “Tax Prep,” “Www.Freetaxusa.Com,” and “IRS Tax Return,” among others.  Based upon this information, Respondent is not using the disputed domain names 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).  See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).

 

The Panel finds Policy ¶4(a)(ii) satisfied. 

 

Registration and Use in Bad Faith

Complainant argues Respondent has been the respondent in prior UDRP proceedings where Respondent was ordered to transfer the disputed domain names to the respective complainants.  See AOL Inc. v. Silmaril Ltd, FA 1308201 (Nat. Arb. Forum Apr. 1, 2010); see also The Neiman Marcus Group, Inc. v. Silmaril Ltd, FA 1263874 (Nat. Arb. Forum June 30, 2009); see also LTD Commodities, LLC v. Silmaril Ltd., FA 1045829 (Nat. Arb. Forum Sept. 19, 2007).  Complainant contends such prior adverse decisions against Respondent indicate Respondent’s bad faith in the current dispute under Policy ¶4(b)(ii).  The Panel disagrees because Complainant has been able to register a domain name containing its mark; FreeTaxUSA.com.  This claim is factually insufficient under Policy ¶4(b)(ii) to prove bad faith.  The fact Respondent has contested other UDRP proceedings and lost does not change Complainant’s burden of proof in this case.

 

Complainant argues Respondent has caused the websites resolving from the disputed domain names to redirect Internet users to a website featuring products and services competing with Complainant.  Complainant claims this use constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶4(b)(iii).  Based upon the screenshots provided, the Panel concurs and finds Respondent has registered and is using the disputed domain names to disrupt Complainant’s business.  This disruption is evidence of bad faith under Policy ¶4(b)(iii).  See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).

 

Complainant also claims Respondent commercially benefits when consumers purchase products or services from the websites that resolve from Respondent’s disputed domain names.  Complainant argues Respondent is capitalizing on the likelihood consumers will confuse the source of the disputed domain names as being affiliated with Complainant to Respondent’s commercial gain.  Complainant claims such activity demonstrates Respondent’s bad faith registration and use of the disputed domain names under Policy ¶4(b)(iv).  The Panel concurs based upon the screenshots provided and finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Lastly, Complainant argues Respondent’s typosquatting behavior is further evidence of Respondent’s bad faith registration and use of the domain names.  The Panel is not persuaded by this argument.  The UDRP does not provide for “typosquatting” as an independent ground to recover a domain name.  Complainant has already proven its case under Policy ¶4(b)(i) and Policy ¶4(b)(iv).  There has not been a sustainable claim Respondent competes with Complainant, making a claim under Policy ¶4(b)(iii) impossible to sustain.  But this finding does not prevent Complainant from recovering because Complainant need only prove bad faith registration and use once.

 

The Panel finds Policy ¶4(a)(iii) satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <feetaxusa.com> and <fretaxusa.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Wednesday, November 7, 2012

 

 

 

 

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