Rhodes Financial Services, Inc. v. Edmund Taylor
Claim Number: FA1211001473681
Complainant is Rhodes Financial Services, Inc. (“Complainant”), represented by Marcy L. Sperry of Womble Carlyle Sandridge & Rice, LLP, Georgia, USA. Respondent is Edmund Taylor (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taxslayer.biz>, registered with 1&1 INTERNET AG.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 30, 2012; the National Arbitration Forum received payment November 30, 2012.
On December 3, 2012, 1&1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <taxslayer.biz> domain name is registered with 1&1 INTERNET AG and that Respondent is the current registrant of the name. 1&1 INTERNET AG verified that Respondent is bound by the 1&1 INTERNET AG registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2013, 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@taxslayer.biz. Also on January 22, 2013, 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 February 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
Policy ¶ 4(a)(i): Complainant’s rights and the domain name’s confusing similarity.
Complainant urges that it owns United States Patent & Trademark Office (“USPTO”) registrations to the TAXSLAYER mark (e.g., Reg. No. 2,007,202 registered Oct. 8, 1996) and uses the mark in its business of providing tax products and services.
The <taxslayer.biz> domain name was registered on October 9, 2005.
Respondent’s <taxslayer.biz> domain name is confusingly similar to the TAXSLAYER mark. The domain is simply the entire TAXSLAYER mark with the addition of the generic top-level domain (“gTLD”) “.biz.” Because previous panels have determined that gTLD are irrelevant under the Policy, the domain name is identical to the Complainant’s protected mark.
Policy ¶ 4(a)(ii): Respondent lacks rights and legitimate interests in the domain name.
Complainant urges that Respondent is not commonly known by the disputed domain name. Complainant has neither licensed nor otherwise permitted Respondent to use the TAXSLAYER mark in a domain name or otherwise. The WHOIS record reveals that “Edmund Taylor” registered the <taxslayer.biz> domain name.
Complainant also contends that Respondent’s use of the domain name does not further a bona fide offering of goods or services, and that it does not serve a legitimate noncommercial or fair use. Respondent is simply using the TAXSLAYER trademark in its domain name to attract Internet user’s to a competing website because the domain name resolves to the <turbotax.intuit.com> domain name—a direct competitor of Complainant.
Policy ¶ 4(a)(iii): Respondent’s bad faith use and registration of the domain name.
Complainant next urges that Respondent is using the domain name to attract Internet users to a competing product by way of confusing the user into believing the <taxslayer.biz> domain name is in some way associated with Complainant. Internet users will then be confused as to some affiliation between the competing TurboTax products offered on the resolving website and the TAXSLAYER trademarked products sold by Complainant.
Complainant contends that Respondent had constructive knowledge of Complainant’s TAXSLAYER trademark prior to registering the name and that Respondent’s use of the entire TAXSLAYER mark makes it difficult to argue that Respondent was without actual knowledge. No plausible reason otherwise explains why Respondent would have elected to use the TAXSLAYER mark for purposes other than to trade on the goodwill of Complainant.
Respondent’s Contentions
Respondent did not submit a Response in this proceeding.
The Panel notes that the disputed domain name was registered October 9, 2005, some 9 years after Complainant registered its protected mark.
Complainant established rights in the mark used in its entirety within the disputed domain name.
The disputed domain name is identical to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s use permits an inference that Respondent had actual knowledge of Complainant’s rights in the mark and that Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant contends that it owns USPTO registrations to the TAXSLAYER mark (e.g., Reg. No. 2,007,202 registered Oct. 8, 1996; Reg. No. 3,916,455 registered on Feb. 8, 2011) and that Complainant uses the mark in its business of providing tax products and services. Complainant’s evidence of USPTO registrations of the TAXSLAYER mark is a satisfactory showing of rights under Policy ¶ 4(a)(i) especially where Respondent is also located in the United States. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant also argues that Respondent’s <taxslayer.biz> domain name is confusingly similar to the TAXSLAYER mark. Complainant notes that the domain consists of the entire TAXSLAYER mark with the addition of the gTLD “.biz.” Complainant argues that because previous panels have determined that a gTLD is irrelevant under the Policy, the domain name is confusingly similar. The Panel finds that the combination of the TAXSLAYER mark and a gTLD such as “.biz” is at the very least confusingly similar if not identical since the gTLD is required. See Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have such 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 contends that Respondent is not commonly known by the disputed domain name. Complainant asserts that it has neither licensed nor otherwise permitted Respondent to use the TAXSLAYER mark in a domain name or in any way. Complainant also notes that the WHOIS record reveals that “Edmund Taylor” registered the <taxslayer.biz> domain name. The Panel agrees that Complainant has satisfactorily shown a lack of evidence connecting Respondent to the <taxslayer.biz> domain name, and the Panel finds that Respondent is not commonly known by the disputed 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 urges that Respondent’s use of the domain name does not further a bona fide offering of goods or services and does not serve a legitimate noncommercial or fair use. Complainant bases this assertion on the argument that Respondent is simply using the TAXSLAYER trademark in its domain name to attract Internet users to the <turbotax.intuit.com> domain name—a domain name operated by a direct competitor of Complainant. The Panel notes that it appears the <taxslayer.biz> domain name does nothing more than send the Internet user to the <turbotax.intuit.com> domain name, where the Internet user is provided advertisements and solicitations for tax products that compete with Complainant. See Complainant’s Ex. 8. A respondent cannot claim to have made a bona fide offering of goods or services, nor that it used its domain name in a legitimate noncommercial or fair use, when the domain name immediately redirects Internet users to the domain name of a complainant’s competitors. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Thus the Panel finds that Respondent has not used the <taxslayer.biz> domain name in a Policy ¶ 4(c)(i) bona fide offering of goods or services and has not engaged in a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <taxslayer.biz> domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the requirements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant urges that Respondent registered and uses the disputed domain name in bad faith. Complainant argues that Respondent is using the domain name to attract Internet users to a competing product by way of confusing the user into believing the <taxslayer.biz> domain name is in some way associated with Complainant. Complainant contends that Internet users will then be confused into believing some affiliation exists between the competing TurboTax products offered on the resolving website and the TAXSLAYER trademarked products sold by Complainant. The Panel notes that the disputed domain name resolves to a domain name used to promote the competing TurboTax brand and products. See Complainant’s Ex. 8. It is bad faith use and registration for a respondent to use a disputed domain name for the sole purpose of redirecting Internet users to the competitors of a complainant. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel finds that Respondent’s use of the <taxslayer.biz> domain name to redirect Internet users to TurboTax products is a Policy ¶ 4(b)(iv) act of bad faith use and registration calculated to confuse Internet users for Respondent’s own commercial gain.
Complainant finally argues that Respondent had constructive knowledge of Complainant’s TAXSLAYER trademark prior to registering the name and therefore should be found to have registered the <taxslayer.biz> domain name in bad faith. Complainant alternatively argues that Respondent’s use of the entire TAXSLAYER mark makes it more difficult to argue that Respondent did not have knowledge, as there is no plausible reason for Respondent to have elected to use the TAXSLAYER mark for purposes other than to trade on the goodwill of Complainant. Although constructive notice is not sufficient for a finding of bad faith, the Panel finds here that Respondent’s use of the disputed domain name permits the Panel to make an inference that Respondent had actual knowledge of Complainant's mark and rights. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <taxslayer.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 27, 2013.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page