Taxhawk, Inc. v. Milan Kovac
Claim Number: FA1210001465278
Complainant is Taxhawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <frretaxusa.com>, registered with Hebei Guoji Maoyi Shanghai Ltd d/b/a Hebeidomains.Com.
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.
Sandra J. Franklin 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. The Complaint was submitted in both Slovak and English.
On October 5, 2012, Hebei Guoji Maoyi Shanghai Ltd d/b/a Hebeidomains.Com confirmed by e-mail to the National Arbitration Forum that the <frretaxusa.com> domain name is registered with Hebei Guoji Maoyi Shanghai Ltd d/b/a Hebeidomains.Com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi Shanghai Ltd d/b/a Hebeidomains.Com has verified that Respondent is bound by the Hebei Guoji Maoyi Shanghai Ltd d/b/a Hebeidomains.Com 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 16, 2012, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of November 5, 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@frretaxusa.com. Also on October 16, 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 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <frretaxusa.com> domain name is confusingly similar to Complainant’s FREETAXUSA mark.
2. Respondent does not have any rights or legitimate interests in the <frretaxusa.com> domain name.
3. Respondent registered and used the <frretaxusa.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns the FREETAXUSA mark through trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,805,696 filed May 27, 2009; registered June 22, 2010). Complainant has used the mark since 2001 to conduct its tax business, and also operates a website at <freetaxusa.com>.
Respondent registered the <frretaxusa.com> domain name on October 8, 2008, and uses it to redirect Internet users to its website, where it displays links to businesses that directly compete with Complainant’s business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s trademark registration with the USPTO secures its rights in its FREETAXUSA mark pursuant to Policy ¶ 4(a)(i). Policy ¶ 4(a)(i) does not require Complainant to register its FREETAXUSA mark in the country of Respondent’s residence. The panel in UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007), held that the complainant had established rights in its asserted mark under the Policy through its USPTO trademark registrations. See also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Further, Complainant’s rights in the FREETAXUSA mark date back to the filing date of the mark with the USPTO, May 27, 2009. 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”).
Complainant states that it began offering its tax preparation software under the FREETAXUSA mark in 2001. The Panel notes that Complainant’s trademark registration identifies a “first use in commerce” date of January 5, 2003, and Complainant notes that its primary domain name was registered in 2002. The Panel determines that Complainant’s consistent use of the FREETAXUSA mark since 2001, along with its expenditure of substantial resources on advertising to promote its mark, establish Complainant’s rights in the mark under common law for the purposes of Policy ¶ 4(a)(i). See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Respondent’s <frretaxusa.com> domain name is confusingly similar to its FREETAXUSA mark, because the domain name simply eliminates one character (the letter “e”), and adds another character in its place (the letter “r”), and includes the generic top-level domain (“gTLD”) “.com.” These changes do not distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(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 that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 could not be commonly known by the <frretaxusa.com> domain name, due to the WHOIS information associated with the domain name, and the fact that Respondent has not been given permission to use the FREETAXUSA mark in any way. The registrant associated with the <frretaxusa.com> domain name is identified in the WHOIS information as “Milan Kovac,” not similar to the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent uses the <frretaxusa.com> domain name to redirect Internet users to its website, and offers competing links to businesses which directly compete with Complainant’s business, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. In Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panel stated that where a respondent did not offer goods or services on its website aside from links to third-party website, it did not use a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent fails to demonstrate use of the <frretaxusa.com> domain name to make 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).
Complainant contends that the <frretaxusa.com> domain name is an intentional misspelling, or typosquatting, of Complainant’s FREETAXUSA mark, designed to capitalize on consumer’s typing errors. The Panel agrees and finds that this is further evidence that Respondent does not have rights or legitimate interests in the disputed domain name. The panel in LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), held that the disputed domain names were intentional misspellings of the complainant’s mark, which constituted typosquatting.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that multiple prior UDRP decisions involving Respondent demonstrate that Respondent is a “serial cybersquatter,” engaged in a pattern of bad faith registration. The Panel notes that Complainant makes reference to prior UDRP decisions against Respondent, but the referenced Exhibit is not included in Complainant’s Annex. Therefore, the Panel declines to make a finding of Respondent’s bad faith registration and use under Policy ¶ 4(b)(ii).
Respondent uses the disputed domain name to display links to businesses promoting products that compete with Complainant, diverting customers away from Complainant’s website. The Panel finds that this disrupts Complainant’s business, demonstrating that Respondent registered and uses the <frretaxusa.com> domain name in bad faith under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), where the panel concluded that the respondent registered and used the domain name in bad faith when it hosted a commercial website with links to the complainant’s competitors.
Respondent registered and uses the <frretaxusa.com> domain name to divert consumers to its own website, no doubt receiving referral fees in exchange for hosting competitors’ hyperlinks. The Panel finds that this constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, typosquatting is additional evidence of bad faith registration and use. The panel in Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), concluded that the respondent capitalized on Internet users’ typographical mistakes, which constitutes typosquatting and provides evidence of bad faith registration and use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <frretaxusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 21, 2012
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