Taxhawk, Inc. v. Pham Dinh Nhut
Claim Number: FA1307001508730
Complainant is Taxhawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, <myfreetaxusa.com>, and <reetaxusa.com>, registered with April Sea Information Technology Corporation.
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 July 9, 2013; the National Arbitration Forum received payment July 9, 2013. The Complaint was submitted in both Vietnamese and English.
On July 11, 2013, April Sea Information Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, <myfreetaxusa.com>, <reetaxusa.com> domain names are registered with April Sea Information Technology Corporation and that Respondent is the current registrant of the names. April Sea Information Technology Corporation verified that Respondent is bound by the April Sea Information Technology Corporation 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 July 23, 2013, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of August 12, 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@freeetaxusa.com, postmaster@freetaaxusa.com, postmaster@freetasusa.com, postmaster@freetaxeusa.com, postmaster@freetaxua.com, postmaster@freetsxusa.com, postmaster@freettaxusa.com, postmaster@freeyaxusa.com, postmaster@myfreetaxusa.com, and postmaster@reetaxusa.com. Also on July 23, 2013, the Vietnamese 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 August 20, 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 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.
domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark, with the addition of the generic top-level domain (“gTLD”) “.com.” The <myfreetaxusa.com> domain name contains a generic term, “my,” with Complainant’s entire mark, with the addition of the gTLD “.com.”
i. Respondent has not been commonly known by the disputed domain names.
ii. Respondent is using all of the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent is using the <freetaaxusa.com> and <freetasusa.com> domain names to redirect Internet users to a website operated by Complainant’s competitors.
i. Respondent is a recalcitrant, serial cybersquatter.
ii. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
iii. Respondent has registered and used the disputed domain names to attract and mislead consumers for its own commercial gain.
iv. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
v. Respondent surely had actual knowledge of Complainant’s rights in the at-issue trademarks at the time it registered the disputed domain names.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings Vietnamese. The Panel, after review of the applicable rules on language of the proceedings under the UDRP, finds as follows:
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant established that it had rights in the mark contained in various misspelled forms in the disputed domain names.
Respondent has no rights to or legitimate interests in the disputed domain names.
The disputed domain names are confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 urges that it is the owner of the FREETAXUSA mark for online tax preparation software and services. Complainant asserts that it is the owner of a trademark registration with the USPTO for the FREETAXUSA mark (Reg. No. 3,805,696, registered June 22, 2010). See Exhibit E. The Panel finds that although Respondent appears to reside in Vietnam, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides so long as it can demonstrate rights in the mark in some jurisdiction. 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). Thus, the Panel finds that Complainant’s registration of the FREETAXUSA mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to 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, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant contends that the <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, and <reetaxusa.com> domain names are confusingly similar to Complainant’s FREETAXUSA mark because they differ by only a single character from Complainant’s mark. The Panel notes that Respondent adds the generic term “my” to its <myfreetaxusa.com> domain name, and thus this domain name is confusingly similar as well. The Panel finds that Respondent’s addition of a generic term to Complainant’s mark does not negate confusing similarity under Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”). The Panel observes that Respondent adds additional letters to its <freeetaxusa.com>, <freetaaxusa.com>, <freetaxeusa.com>, and <freettaxusa.com> domain names. The Panel holds that Respondent’s inclusion of additional letters does not differentiate the domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). The Panel notes as well that Respondent substitutes one letter in Complainant’s FREETAXUSA mark for another letter in its <freetasusa.com>, <freetsxusa.com>, and <freeyaxusa.com> domain names. The Panel finds that this substitution of letters does not distinguish the domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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”). The Panel also observes that Respondent removes letters from Complainant’s FREETAXUSA mark in its <freetaxua.com> and <reetaxusa.com> domain names. The Panel finds that Respondent’s removal of letters does not negate a finding of confusing similarity 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”). Lastly, the Panel notes that Respondent adds the gTLD “.com” to all of the disputed domain names. The Panel finds that Respondent’s inclusion of a gTLD to its domain names is inconsequential to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel finds that Respondent’s <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, <myfreetaxusa.com>, and <reetaxusa.com> domain names are confusingly similar to Complainant’s FREETAXUSA mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected 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 of proof shifts to Respondent to show that 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) (l“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 that Respondent has not been commonly known by the disputed domain names. Complainant alleges that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant argues that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel notes that the WHOIS records for the <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, <myfreetaxusa.com>, and <reetaxusa.com> domain names identify “Pham Dinh Nhut” as the domain name registrant. See Exhibit I. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Thus, the Panel here finds that Respondent is not commonly known by the <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, <myfreetaxusa.com>, and <reetaxusa.com> domain names under a Policy ¶ 4(c)(ii) analysis.
Complainant contends that Respondent is using all of the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that all of the disputed domain names lead to competing websites containing hyperlinks in direct competition with Complainant’s business, such as “Free Tax Filing” “H&R Block Official Site,” and “Income Tax Preparation.” See Exhibit H. The Panel finds that Respondent’s use of the <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, <myfreetaxusa.com>, and <reetaxusa.com> domain names to provide competing links or link to Complainant’s competitors is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).”
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 names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent is a recalcitrant, serial cybersquatter. Complainant alleges that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. See Exhibit N: TaxHawk, Inc. v. Pham Dinh Nhut, FA 1431444 (Nat. Arb. Forum May 28, 2012); The Charlotte-Mecklenburg Hospital Authority d/b/a Carolinas HealthCare System v. Pham Dinh Nhut, FA 1434556 (Nat. Arb. Forum May 28, 2012); Thrivent Financial for Lutherans v. Pham Dinh Nhut, FA 1460791 (Nat. Arb. Forum Oct. 10, 2012). Prior panels have held that a respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer demonstrated bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). Therefore, this Panel finds that Respondent’s prior UDRP proceedings evidence bad faith use and registration pursuant to Policy ¶ 4(b)(ii).
Complainant argues that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. The Panel observes that Respondent’s <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxua.com>, <freettaxusa.com>, <freeyaxusa.com>, <myfreetaxusa.com>, and <reetaxusa.com> domain names lead to a competing hyperlink directory featuring links titled “Free Tax Filing,” “H&R Block Official Site,” and “Income Tax Preparation.” See Exhibit H. Complainant asserts that these links divert potential customers away from Complainant to third-party websites, disrupting Complainant’s business. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel concluded that “The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).” Consequently, this Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business, evidencing bad faith use and registration of the domain names under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent registered and used the disputed domain names to attract and mislead consumers for Respondent’s own commercial gain. Complainant contends that Respondent has set up a “click through” website from which it likely receives revenue. The Panel notes that Respondent’s <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, <myfreetaxusa.com>, and <reetaxusa.com> domain names link to websites containing tax service hyperlinks. See Exhibit H. Prior panels have held that a respondent’s use of a disputed domain name to provide competing hyperlinks, for which it attracts Internet users to its own website for commercial gain, constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel here finds that Respondent’s use of the <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, <myfreetaxusa.com>, and <reetaxusa.com> domain names constitutes bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant claims that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that Respondent adds or deletes letters to create typographical errors in its <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, and <reetaxusa.com> domain names. Thus, the Panel finds that Respondent has engaged in typosquatting, showing bad faith use and registration under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant argues that Respondent surely had actual knowledge of Complainant’s rights in the at-issue trademarks at the time it registered the disputed domain names. Complainant claims Respondent’s actual knowledge of Complainant’s rights in the FREETAXUSA mark is evidenced by Respondent’s common misspelling of Complainant’s mark for its domain names. Complainant further argues that Respondent was a member of Complainant’s affiliate program, showing that Respondent must have known of Complainant and its FREETAXUSA mark before it registered the <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, and <reetaxusa.com> domain names. The Panel finds that, due to Respondent’s membership in Complainant’s affiliate program, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
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 <freeetaxusa.com>, <freetaaxusa.com>, <freetasusa.com>, <freetaxeusa.com>, <freetaxua.com>, <freetsxusa.com>, <freettaxusa.com>, <freeyaxusa.com>, <myfreetaxusa.com>, and <reetaxusa.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 3, 2013.
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