Rhodes Financial Services, Inc. v. Matt Moran
Claim Number: FA1212001474885
Complainant is Rhodes Financial Services, Inc. (“Complainant”), represented by Marcy L. Sperry of Womble Carlyle Sandridge & Rice, LLP, Georgia, USA. Respondent is Matt Moran (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taxslayer.org>, registered with eNom, Inc.
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.
Luz Helena Villamil Jimenez as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2012; the National Arbitration Forum received payment on December 7, 2012.
On December 10, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <taxslayer.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 December 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@taxslayer.org. Also on December 11, 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.
A timely Response was received and determined to be complete on December 31, 2012.
On January 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luz Helena Villamil Jimenez 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based upon the ownership and extensive use of the trademarks TAXSLAYER and TAXSLAYER.COM for financial products and services registered by the Complainant in the United States of America. According to Complainant use of the TAXSLAYER mark dates back to 1996 while use of the TAXSLAYER.COM mark dates back to 2002, both in connection with tax related products and services. Said marks are claimed to be extremely valuable business assets of Complainant, and have become widely recognized in the industry due to the high quality products and services offered thereunder.
Complainant also contends that it has invested substantial sums of money advertising and promoting its TAXSLAYER marks, including sponsorship of the NASCAR® events as well as sponsorship of other nationally televised sporting events.
Based on the foregoing, Complainant’s main contentions are as follows:
1. Respondent, Matt Moran, registered the <taxslayer.org> domain name on or about April 13, 2003.
2. The domain name <taxslayer.org> is confusingly similar to Complainant’s registered and well known trademarks TAXSLAYER and TAXSLAYER.COM. Thus, Respondent infringes upon and violates the Complainant’s rights under ICANN Policy 4(a)(i).
3. Respondent’s registration of the <taxslayer.org> domain name violates the Policy because:
a) The domain <taxslayer.org> is confusingly similar to Claimant’s registered Marks under Policy ¶4(a)(i). The domain name includes the entirety of Complainant’s TAXSLAYER trademark and merely adds the .org top-level domain name.
b) Respondent has no rights or legitimate interest in the domain <taxslayer.org> under Policy ¶ 4(c)(ii). Respondent has no connection or affiliation with Complainant, and Complainant has not consented to or licensed Respondent’s use of the Domain Name. In addition, Respondent is not known by the name TAXSLAYER.
c) Respondent registered the <taxslayer.org> domain in bad faith as evidenced by certain facts:
- First, Respondent is offering the Domain Name for sale as shown at the top of web site where the statement “This domain name could be for sale” appears, together with a link to a domain store that allows users to make an offer.
- Second, Respondent is using the Domain Name as a link farm and presumably receives click-through advertising fees. The use of a Domain Name that contains the identical trademark TAXSLAYER in this manner is an attempt to create confusion and benefit from the goodwill of Complainant’s marks.
- Third, Respondent had constructive knowledge of Complainant’s TAXSLAYER trademark prior to registration of the Domain Name, which further supports an inference of bad faith on the part the Respondent.
- Fourth, Respondent’s use of Complainant’s entire TAXSLAYER trademark in the Domain Name serves as a further indication of bad faith.
B. Respondent
The main arguments of the response given by the Respondent are:
- The <taxslayer.org> domain name is in the Respondent’s list of domains since April 13, 2003.
- The <taxslayer.org> domain name is used as an educational website.
- According to ALEXA the domain name <taxslayer.org> has no rating and no links at all, and therefore the use and registration of the domain name do not cause consumer confusion nor it infringes any trademark rights.
- As regards the contention according to which “Rhodes has invested substantial sums of money advertising and promoting its trademarks and service”, from bing.com you can see that there are no advertising for TAXSLAYER.COM, and most advertising are switched to Turbotax.
- Nine years after Respondent registered and used, with legitimate interests and good faith, the <taxslayer.org> domain name, Complainant is attempting to have the disputed domain name transferred. Complainant is attempting to take the <taxslayer.org> domain name by force as it cannot buy the <taxslayer.org> domain name.
Complainant is the owner of the trademarks TAXSLAYER and TAXSLAYER.COM, as it is evidenced with the trademark registration copies submitted with the Complaint. The panel therefore finds that with such registrations Complainant has established rights in the marks TAXSLAYER and TAXSLAYER.COM under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”)
The Panel also finds that the simple addition of the .org top-level domain to the domain name <taxslayer.org> does not contribute to establish a difference between said domain and the trademark TAXSLAYER, registered and well known. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark). The panel considers that in order to determine the similarity of a given domain name with a previously registered trademark a comparison shall be made between the distinctive portions irrespective of any generic words or any other terms they may contain, such as top-level domains. In the particular case at hand a comparison shall be made between TAXSLAYER (registered trademark) and TAXSLAYER (studied domain name). Based on the foregoing, the Panel finds that Respondent’s <taxslayer.org> domain name is identical to Complainant’s TAXSLAYER mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent is not commonly known by the disputed domain name or any of Complainant’s marks. The Panel notes that the disputed domain name registrant information identifies “Matt Moran” as the registrant. Based upon this information, the Panel finds that indeed, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further contends that the <taxslayer.org> domain name is being held by Respondent with an ultimate goal of selling it for a profit, as indicated at the top of the resolving website which displays the message: “This domain name could be for sale.” This statement contains a link to a domain store allowing Internet users to make an offer for purchase of the <taxslayer.org> domain name. The Panel finds that the information contained in the <taxslayer.org> website according to which the domain could be for sale, together with the link to a domain store allowing potential interested parties to make an offer to buy the domain name is a clear indication of the fact that the domain name was not registered with a bona fide purpose of offering goods or services, but to obtain a benefit from the sale thereof.
Respondent contends that Complainant is attempting to have the disputed domain name <taxslayer.org> transferred nine years after Respondent registered and used it, with legitimate interests and good faith. Respondent adds that Complainant is attempting to take the <taxslayer.org> domain name by force as it cannot buy it. The Panel finds that the doctrine of laches does not apply as a defense, and therefore disregards Respondent’s assertions in this concern. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. )
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.
The first requirement of the Policy in Paragraph 4(a)(i) for the Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by the Respondent.
In the present case, Complainant demonstrated with the trademark registration copies submitted with the complaint that it is the exclusive owner of the trademarks TAXSLAYER and TAXSLAYER.COM. Moreover, it was demonstrated that the trademark TAXSLAYER is widely used and promoted to an extent that it is not possible for anyone to argue that it did not know the existence of said mark.
The domain name <taxslayer.org> is identical to the trademark TAXSLAYER. The sole pronunciation of the terms TAXSLAYER and TAXSLAYER is identical, and therefore in practice it is evident for the Panel that indeed the domain is likely to be viewed as incorporating the TAXSLAYER trademark by visitors to Respondent’s website, a circumstance that no doubt may lead consumers to erroneously believe either that the website <taxslayer.org> belongs to the Claimant, or that there is a business association between the Claimant and the Respondent.
In light of the foregoing, there is no doubt for the Panel that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <taxslayer.com> can cause confusion with the trademarks TAXSLAYER and TAXSLAYER.COM owned by the Claimant.
The disputed domain name consists of the entire trademark TAXSLAYER previously registered by the Claimant, considering that the “.org” top-level domain should be left out in order to compare the two names. The panel considers that inclusion of an identical trademark – which in the present case consists of the fantasy word TAXSLAYER - in a given domain name is not a chance result, but instead it is the result of an assertive action usually performed with a specific purpose: To derive a certain benefit from the confusion created to visitors by the identity of names.
It is clear for the Panel, after a thorough review of the documentation and evidence submitted to the case, that the Claimant is the type of entity who due to the well known condition of its trademarks, the efforts it makes to position and promote them and the recognition it gains in the market, frequently suffers the type of unfair competition that is made by third parties through the registration of domain names that are “designed” just to let registrants share the sales revenues obtained by the legitimate owners of the trademarks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
According to Paragraph 4 (b) of the Policy, when certain circumstances are present in a given case they shall be evidence of the registration and use of a domain name in bad faith. Among such circumstances the Policy mentions in Paragraph 4(b)(iv) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant 's mark as to the source, sponsorship, affiliation, or endorsement of you’re the Respondent’s site or location or of a product or service on the Respondent’s web site or location..
In the present case, the fact that the disputed domain name is identical to the registered trademark TAXSLAYER clearly indicates that there was a prima facie intention of the Respondent to attract internet users for commercial gain, either to make them believe that the website also belongs to the owner of the trademark TAXSLAYER, this being also the owner of the taxslayer.com and taxslayer.net websites, or to encourage visitors to purchase the domain name, as suggested at the top of the <taxslayer.org> website.
One last remark deemed necessary in the present case is regarding the statement by Respondent according to which Complainant is attempting to take the <taxslayer.org> domain name by force as it cannot buy the <taxslayer.org> domain name.
This type of response cannot be accepted since the bottom line is that a Complaint based on an identical trademark as in the present case is not brought to win a new domain name to add it to the collection, but instead to obtain the protection of such trademark and to strongly take measures against its dilution, which would be unavoidable if trademark owners allowed third parties incorporating their trademarks or similar ones to their domain names. In other words, it is not a matter of compelling trademark owners to register the infinite number of domain names that could be coined with a given trademark to prevent third parties from illicitly using their trademarks to make domain names that in the end have the clear intention of benefiting from other’s efforts and property.
Moreover, the Respondent asserts out of the blue that Complainant is attempting to take the <taxslayer.org> domain name by force as it cannot buy the <taxslayer.org> domain name. If as it is indicated at the top of the <taxslayer.org> website the domain name “could be for sale”, there are no reasons to contend that Complainant cannot buy it and therefore wishes to take it by force. The Panel considers that it is not a matter of being able to buy the <taxslayer.org> domain name but a matter of not accepting to buy a name that has appropriated the goodwill of Claimant.
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 <taxslayer.org> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil Jiménez, Panelist
Dated: January 22, 2013
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