Taxhawk, Inc. v. Dyk Dylina
Claim Number: FA1211001471440
Complainant is Taxhawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Dyk Dylina (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freetazusa.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2012; the National Arbitration Forum received payment on November 15, 2012. The Complaint was submitted in both English and Finnish.
On November 20, 2012, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <freetazusa.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 November 27, 2012, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of December 17, 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@freetazusa.com. Also on November 27, 2012, the Finnish language 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 December 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 Finnish language Complaint and Commencement Notification, and, absent a 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
a. Complainant owns trademark registrations for FREETAXUSA and uses the mark in providing temporary online non-downloadable software for the calculation of tax and for the preparation of tax return forms and filings.
b. Complainant has given the FREETAXUSA mark secondary meaning prior to the registration of the domain in 2008. Complainant registered <freetaxusa.com> on September 11, 2002, and began using the mark in commerce on November 3, 2003.
c. The <freetazusa.com> domain name is confusingly similar in that it otherwise only differs from the FREETAXUSA mark because the ‘x’ is replaced with a ‘z.’
d. Respondent has no rights or legitimate interests in the <freetazusa.com> domain name.
e. Respondent is not commonly known by the <freetazusa.com> domain name. Nothing in the WHOIS information suggests Respondent is known by the mark, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating the FREETAXUSA mark.
f. Respondent is using the <freetazusa.com> domain name to redirect Internet users to websites featuring generic links to third-party websites, some of which compete directly with Complainant. Respondent presumably receives pay-per-click fees from these linked websites. Therefore, Respondent is not using the domain name to provide a bona fide offering of goods and/or services, nor is Respondent providing a legitimate noncommercial of fair use of the domain name.
g. Respondent is engaging in typosquatting, a practice designed to take advantage of Internet users’ typographical errors.
h. Respondent’s <freetazusa.com> domain name resolves to a website that displays and promotes products that compete with Complainant. These links divert potential customers away from Complainant, and thus disrupt Complainant’s business in violation of Policy ¶ 4(b)(iii).
i. Respondent is using the <freetazusa.com> domain name to generate click-through revenues gained whenever an Internet user goes through one of the hyperlinks on the <freetazusa.com> domain name ‘s resolving website. Respondent is using Complainant’s mark to offer goods and services that compete with Complainant. Respondent is therefore taking advantage of Complainant’s well-known mark for wrongful competitive advantage and commercial gain.
j. Respondent’s recalcitrant and serial typosquatting behavior is in itself evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FREETAXUSA mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <freetazusa.com> domain name, and that Respondent registered and uses the domain name 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 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.”).
Complainant holds federal trademark registrations for the FREETAXUSA mark, filed on May 27, 2009. Complainant also has provided minimally sufficient evidence that its mark acquired secondary meaning dating back to January 2003. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) ("[S]etting aside the contrary statements about the date of Complainant's first actual use, the mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness.").
Complainant next argues that the <freetazusa.com> domain name is confusingly similar to the FREETAXUSA mark. Complainant contends that the addition of generic top-level domains (“gTLDs”), such as “.com,” does not affect the determination of whether Respondent’s <freetazusa.com> domain name is confusingly similar to the FREETAXUSA mark. Furthermore, Complainant argues the <freetazusa.com> domain name is confusingly similar in that it otherwise only differs from the FREETAXUSA mark because the ‘x’ is replaced with a ‘z.’ The Panel agrees that both the gTLD addition and letter-swapping made to the FREETAXUSA mark are insufficient to clear up the confusing similarity between the domain name and the mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). For these reasons, the Panel finds that the disputed domain name is confusingly similar to the FREETAXUSA mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <freetazusa.com> domain name. Complainant asserts that nothing in the WHOIS information suggests Respondent is known by the mark, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating the FREETAXUSA mark. The WHOIS information lists the domain name’s registrant as one “Dyk Dylina Luovontie.” The lack of evidence linking Respondent to the disputed domain name, combined with no affirmative showing by Respondent, suffices to show that Respondent is not commonly known by the <freetazusa.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further contends that Respondent is using the <freetazusa.com> domain name to redirect Internet users to websites featuring generic links to third-party websites, some of which compete directly with Complainant. Complainant believes that Respondent receives pay-per-click fees from these linked websites. The Panel agrees and finds that such a use of the disputed domain name does not fall within Policy ¶¶ 4(c)(i) or (iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). For these reasons, Respondent’s <freetazusa.com> domain name serves no legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), nor does it provide a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Complainant states that Respondent is engaging in typosquatting, a practice designed to take advantage of Internet users’ typographical errors. The main difference between Complainant’s mark and the disputed domain name is the exchange of the ‘x’ with a ‘z.’ This misspelling of the mark does not give Respondent any legitimate interest in the <freetazusa.com> domain name. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). For these reasons, the Panel concludes that Respondent lacks rights and legitimate interests in the <freetazusa.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in a pattern of bad faith registration in previous NAF and WIPO decisions by way of typosquatting. See, e.g., Choice Hotels Int’l, Inc. v. Dyk Dylina, FA 1374191 (Nat. Arb. Forum Mar. 30, 2011); Johnson & Johnson v. Dyk Dylina, FA 1380043 (Nat. Arb. Forum Apr. 26, 2011); Allstate Insurance Company v. Dyk Dylina/Privacy—Protect.org, D2011–0304 (WIPO Apr. 5, 2011). These decisions are indicative of Respondent’s bad faith use and registration under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant argues that Respondent’s <freetazusa.com> domain name resolves to a website that displays and promotes products that compete with Complainant. Complainant believes that these hyperlinks divert potential customers away from Complainant, and thus disrupt Complainant’s business in violation of Policy ¶ 4(b)(iii). The use of a disputed domain name to send Internet users to a complainant’s competitors, even if there is a link to complainant’s page, is evidence of bad faith. See 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)). The Panel agrees and finds that Respondent has sought to disrupt Complainant’s business contrary to Policy ¶ 4(b)(iii).
Complainant further contends that Respondent is using the <freetazusa.com> domain name to generate click-through revenues gained whenever an Internet user clicks on one of the hyperlinks on the resolving website. Complainant claims that Respondent is using a disputed domain name that is confusingly similar to Complainant’s mark in order to solicit goods and services that compete with Complainant. Complainant concludes that Respondent is therefore taking advantage of Complainant’s well-known mark for wrongful competitive advantage and commercial gain. A respondent has registered and used a domain name in bad faith when it seeks to take advantage of mistakes by Internet users in order to secure financial/commercial gains. 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). The Panel agrees. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel finds 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 <freetazusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 4, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page