Taxhawk, Inc. v. Silmaril ltd
Claim Number: FA1210001465276
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.
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.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
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).
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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.
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[b.] |
Respondent has no rights
or legitimate interests in respect of the Disputed Domain Name(s) for the
following reasons:
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[c.] |
The Domain Name(s) should
be considered as having been registered and being used in bad faith for the
following reasons:
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B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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.”).
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.
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.
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.
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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