The Federal Tax Authority, LLC v. James Scanlon
Claim Number: FA1108001402161
Complainant is Federal Tax Authority, LLC (“Complainant”), represented by Michael P. Matesky of Christensen O'Connor Johnson Kindness PLLC, Washington, USA. Respondent is James Scanlon (“Respondent”), represented by David Greenbaum of Edwards Angell Palmer & Dodge LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fedtax.com> (the “Domain Name”), registered with ENOM, INC on November 7, 1994.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding:
Tyrus R. Atkinson Jr.,
Houston Putnam Lowry, Chartered Arbitrator
Clive Lincoln Elliott (chair)
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2011; the National Arbitration Forum received payment on August 5, 2011.
On August 8, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the 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 August 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2011 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 firstname.lastname@example.org. Also on August 8, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 August 31, 2011.
On September 7, 2011 an additional submission was received from Complainant; the National Arbitration Forum received payment on September 7, 2011.
On September 12, 2011 an additional submission was received from Respondent; the National Arbitration Forum received payment on September 7, 2011.
On September 13, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the following panel:
Tyrus R. Atkinson Jr.
Houston Putnam Lowry, Chartered Arbitrator
Clive Lincoln Elliott (chair)
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant advises that it is the registered owner of trademarks FEDTAX (registered in the United States in April 2010) and FED-TAX.net (registered in June 2011).
Complainant submits that as well as the Domain Name being identical to its FEDTAX trademark, in that it consists of Complainant's registered trademark plus the ".com" generic top-level domain, that the Domain Name is nearly identical and confusingly similar to Complainant’s FED-TAX.NET trademark, with the only differences being the use of a different gTLD and the absence of a hyphen. Complainant contends that the removal of a hyphen in a domain name is not sufficient to differentiate the domain name from a trademark.
Complainant asserts that Respondent is not associated with Complainant, and that it has never authorized Respondent to use any of its FEDTAX trademarks. Complainant states that the Whois record for the Domain Name does not indicate that Respondent is commonly known by the Domain Name but rather, lists the registrant of the Domain Name as "James Scanlon". Complainant submits that Respondent has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use, but instead has passively held the Domain Name since its registration in 1994. Further, Complainant asserts that printouts from the Internet Archive indicate that Respondent has never operated a website, and contends that Respondent's passive holding of the Domain Name is evidence that Respondent has no rights or legitimate interest in the Domain Name.
Complainant advises that on July 29, 2010, David Campbell, president of Complainant, contacted Respondent by telephone and discussed Complainant's use of and registration for the FED-TAX.NET trademark, as well as Complainant's then-pending application for the FEDTAX trademark.
It is asserted that on the same day Respondent learned of Complainant's FED-TAX.NET registration and then-pending FEDTAX trademark application, Respondent filed his own competing federal application to register the FEDTAX trademark for "income tax preparation," despite the fact that he had never actually used the FEDTAX trademark. Complainant suggests that in doing so, Respondent has falsely declared that he had used the FEDTAX trademark in commerce since 1994 and that "no other person, firm, corporation, or association ha[d] the right to use the mark in commerce”. Complainant indicates it understands that the United States Patent & Trademark Office ("PTO") subsequently rejected Respondent's application for the FEDTAX trademark.
Complainant submits that upon receiving notice of Complainant's FEDTAX trademarks, Respondent made a web page available at the Domain Name stating "You have incorrectly typed a web page address. Please retype the address you wish to access."
Complainant contends that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor, and by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Complainant further contends that Respondent's failure to make use of the Domain Name for over 15 years demonstrates bad faith registration.
Complainant states that Respondent's demand for $25,000 for the transfer of the Domain Name is exorbitant as the amount far exceeds any out of pocket expenses Respondent may have incurred for the Domain Name. Complainant submits that this excessive demand indicates Respondent is seeking a financial windfall and is further evidence of bad faith registration and use.
Complainant submits that Respondent's use of the Domain Name as the basis for a competing trademark application, is designed to disrupt Complainant's legitimate use and registration of the FEDTAX trademark, and is further evidence that Respondent has no rights or legitimate interest in the Domain Name and demonstrates bad faith registration.
Complainant contends that Respondent's passive holding of the Domain Name has blocked and disrupted Complainant's use of its FEDTAX trademark by preventing it from using its FEDTAX trademark in the most common, popular, and expected gTLD extension. Complainant asserts that the fact that Respondent filed an application to register the FEDTAX trademark on the same day he received notice of Complainant's pending FEDTAX application, demonstrates Respondent's intention to block Complainant's registration of its FEDTAX trademark. It is asserted that Respondent's subsequent demand for $25,000 demonstrates that Respondent's attempts to block Complainant's use and registration of its FEDTAX trademark were designed to give Respondent leverage to obtain a financial windfall. Complainant submits that such use of the Domain Name to disrupt Complainant's legitimate use and registration of its FEDTAX trademark also demonstrates bad faith registration.
Complainant contends that Respondent's bad faith re-registration and knowing affirmation of false warranties under Policy 2 is a further demonstration of bad faith registration in that in addition to violating the Policy 2 warranties he made upon initial registration of the Domain Name, Respondent recently re-affirmed such warranties despite knowingly using the Domain Name in violation of Complainant's rights in the FEDTAX trademarks. When Complainant first contacted Respondent in June of 2010, the Domain Name registration was set to expire on November 6, 2010. Complainant notes that, after learning of Complainant's rights in and use of the FEDTAX trademarks, and after receiving a rejection of his application to register FEDTAX for himself, Respondent re-registered the Domain Name. Complainant contends that in doing so, Respondent necessarily re-affirmed that such registration and any subsequent use would not violate the rights of any third party, yet, Respondent knew of Complainant's rights in the FEDTAX trademarks, had no intention to make a legitimate use of the Domain Name, and had already demonstrated his intention to use the Domain Name to block Complainant's use of the FEDTAX trademark. This, Complainant submits, is yet further evidence of bad faith registration and use.
Respondent states that he is a certified public accountant and has used the Domain Name for his business since 1994, some sixteen years prior to Complainant's first use of the descriptive term "fedtax".
Respondent denies that the Domain Name is confusingly similar to Complainant's alleged trademarks and claims that the Complaint misrepresents or entirely omits material facts that show these proceedings are frivolous. Respondent contends that Complainant is using the UDRP procedure in bad faith to bully Respondent into surrendering the Domain Name.
Respondent states that he specializes in preparing federal and state tax returns and has been a certified public accountant in the State of Illinois since 1968.
Respondent advises that since he registered the Domain Name with eNom, Inc on November 7, 1994 he has advertised his services, conducted business, and communicated with clients and regulatory authorities through his e-mail address at <email@example.com>. Respondent asserts that his business cards, letterhead display, and e-mail signature block advertise his <fedtax.com> e-mail address. It is further asserted that associated accountants and administrators have also used the Domain Name in their e-mail addresses, under permission from Respondent.
Respondent advises that he was first contacted by an agent of Complainant on June 11, 2010. It is asserted that negotiations between the parties continued for over a year, leading to this proceeding on August 5, 2011. The following purports to be a summary of Complainant's offers and Respondent's sole counteroffer, which is partially recounted in a February 22, 2011 letter from Complainant's attorney D.C. Peter Chu:
o On June 11, 2010, Complainant initiated negotiations with Respondent through a third-party service to purchase the Domain Name. Respondent did not reply to the offer.
o On June 29, 2010, Complainant contacted Respondent by telephone, informing Respondent of its alleged rights and demanding that Respondent sell the Domain Name to Complainant. Respondent asserts that this was the first time he had heard of Complainant but because he thought the offer was a scam, refused it.
o On October 4, 2010, Complainant's attorney sent a letter to Respondent demanding Respondent refrain from using the Domain Name and immediately sell the domain name to Complainant for $5,000 on pain of legal action.
o On October 24, 2010, Respondent's attorney sent a letter to Complainant's attorney declining Complainant's October 4 offer.
o On November 17, 2010, Complainant demanded that Respondent sell the Domain Name for $5,000, while allowing Respondent to continue using various fedtax.00111 e-mail addresses. Respondent did not reply to this offer.
o On January 13, 2011, Complainant repeated its November 17 offer to Respondent.
o On February 10, 2011, Complainant offered to lease the Domain Name for $125.00 per year or, in the alternative, Complainant raised its offer to $7,000 to purchase the Domain Name, while allowing Respondent to continue using various fedtax.com e-mail addresses.
o On June 24, 2011, Complainant's attorney asked Respondent's attorney "What offer would satisfy your client?" In response, Respondent submitted a counteroffer to sell the Domain Name for $25,000. This was Respondent's first counteroffer in over a year of negotiations.
o On August 29, 2011, Complainant lowered its offer to sell the Domain Name to $5,000, and demanded that Respondent "relinguish [sic] all rights to and transfer the fedtax.com domain name" to Complainant.
Respondent refutes Complainant’s argument that its FED-TAX.NET and FEXTAX trademarks are "legally identical" to the Domain Name, because it submits, it ignores the fact that consumers recognize even minor differences between terms, including dissimilar generic top-level domains ("gTLDs") "com" and "net." The two terms are not identical because the Domain Name includes the term ".com".
Respondent submits that Complainant has failed to meet the burden of showing that Respondent lacks rights or legitimate interest in the Domain Name because Respondent has been using the Domain Name for his accounting business since 1994. Respondent further submits that he is commonly known by the Domain Name because he uses the email address <firstname.lastname@example.org> in connection with his accounting business. Respondent asserts that he has not passively held the Domain Name and claims that the use of his fedtax.com e-mail address is sufficient to demonstrate rights and legitimate interests in the Domain Name.
Respondent states that Complainant does not have an exclusive monopoly on the common and descriptive terms "fedtax" on the Internet. The Domain Name describes or is generic for tax-related services and is comprised of two terms: "fed" and "tax." The term "fed" is an abbreviation for "Federal" and a "tax" is "charge usually of money imposed by authority on persons or property for public purposes." Respondent argues that the term "fedtax" is descriptive because it is presumed that the holder of the Domain Name offers tax-related services.
Respondent points out that Respondent and Complainant are not the only parties using "fedtax" for tax-related products, including: <fedtaxcalculator.com> is an online income tax calculator, and the company behind <fedtaxresolution.com> offers tax preparation services.
Respondent argues that there is no evidence that he registered or has been using the Domain Name to interfere with Complainant because he had registered the Domain Name over sixteen years before Complainant used "fedtax" in commerce. Neither did he acquire the Domain Name for the purpose of selling it to Complainant or to disrupt Complainant's business and to the contrary, Respondent states that he acquired the Domain Name to continue to promote his tax-related services, which he had long marketed and continues to market under the designation. Respondent therefore denies that he registered and used the Domain Name in bad faith.
Respondent rejects Complainant’s allegation that Respondent's offer to sell fedtax.com is evidence of bad faith. Respondent asserts that Complainant furnished a short series of e-mail messages purporting to indicate Respondent's "ransom" demand to "extort" a "financial windfall" (all in Complainant's terms), yet Complainant withheld from the Panel over a year of correspondence in which Complainant initiated the negotiations and demanded that Respondent sell fedtax.com on numerous occasions prior to Respondent's sole counteroffer. It is contended that because Complainant initiated the negotiations, Respondent's counteroffer does not demonstrate bad faith use of the Domain Name but shows a reasonable business response to an inquiry about purchasing a business asset.
Respondent denies Complainant’s allegation that his renewal of the Domain Name is evidence of bad faith and "textbook cybersquatting". Respondent did not change its use subsequent to learning of Complainant and he has consistently used the Domain Name as his e-mail in connection with his certified public accountancy business for over sixteen years before Complaint's incorporation. Throughout his dealings with Complainant, Respondent has consistently, and correctly, maintained that he has superior rights in the Domain Name.
Respondent submits that Complainant's filing of the Complaint is an abuse of these administrative proceedings in attempting to deprive a registered domain name holder use of a domain name and constitutes reverse domain name hijacking. Respondent submits that further evidence of reverse domain name hijacking is that Complainant, with the benefit of counsel, knew that Respondent was a certified public accountant and used his fedtax.com e-mail address for business purposes for over sixteen years before Complainant’s first use the term "fedtax." It is contended that no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, Complainant baited Respondent into good faith negotiations, only to use a snippet of those discussions against him in these proceedings.
It is submitted that the omission of this material fact further suggests that Complainant was acting in bad faith in bringing this action. For these reasons, Respondent submits that this Complainant was brought in bad faith and constitutes abuse of the administrative proceeding.
C. Complainant’s Additional Submissions
Complainant rebuts the Respondent’s allegation that Complainant's initiation of this proceeding constitutes reverse domain name hijacking. Complainant submits that it has established all three elements necessary to satisfy a finding of reverse domain name hijacking is improper.
Complainant points out that regardless of whether a Policy violation is ultimately established, a finding of reverse domain name hijacking is warranted only in extraordinary circumstances, and not where a good-faith basis exists for Complainant's arguments.
It is contended that Complainant had a good-faith basis for the arguments set forth in its Complaint, based on prior UDRP decisions and its knowledge of the facts in this case Respondent's charge of reverse domain name hijacking is therefore unwarranted. Indeed, Respondent cites a case noting that a finding of reverse domain name hijacking is improper where "the Complainant owns a trademark registration and is pursuing a dispute resolution proceeding against an identical domain name."
Complainant notes that Respondent is not associated with the Complainant or authorized by the Complainant to use the Complainant's mark, and Whois information for the Domain Name indicates that Respondent is not commonly known by the Domain Name. It asserts that this constitutes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name.
Further, it is contended that although Respondent claims that he is "commonly known" by the Domain Name, he proffers no support for this claim other than the ipse dixit of his counsel. Respondent's own evidence shows that Whois information lists the registrant of the Domain Name as "James Scanlon," and that Respondent is commonly known by Jim Scanlon or some permutation thereof both personally and professionally,
Complainant also notes that Respondent cites no supporting evidence for the allegation that use of a Domain Name in a single e-mail address is enough to rebut such a prima facie case. Rather, the decisions relied upon by Respondent involved something more than just use of a domain name in a single e-mail address.
Complainant refutes Respondent’s suggestions that Complainant knew or should have known that Respondent had used the Domain Name for multiple e-mails, because Respondent did not provide any evidence of such use, either to Complainant or to the Panel.
Respondent argues that Complainant attempted to mislead the Panel into believing that Respondent initiated contact with Complainant. Complainant submits that this allegation is unfounded, and its falsity is demonstrated on the face of the Complaint. The Complaint explicitly states that Complainant reached out to Respondent, that Respondent demanded $25,000 "in response to Complainant's reasonable attempts to resolve this matter without an adversarial proceeding," and cites at least one decision in which an exorbitant counteroffer was taken as evidence of bad faith.
Complainant submits that, because its arguments are meritorious, and are made in good faith and grounded upon prior UDRP decisions, Respondent's allegations of reverse domain name hijacking must fail.
D. Respondent’s Additional Submissions
Respondent states that for sixteen years Respondent has been corresponding with his clients and regulatory authorities with the fedtax.com e-mail address. Clients regularly communicate with Respondent through his fedtax.com e-mail address. Since 1994, when Respondent registered the Domain Name, Respondent has been a partner of two accounting firms—Scanlon Keefe & Mathews and Scanlon & Mathews—as well as a solo practitioner. Throughout this period Respondent has consistently used <fedtax.com> as his business e-mail address, as well as the address of colleagues at Scanlon & Mathews. Respondent submits that from a practical standpoint, and despite Complainant's assertions to the contrary, the Domain Name is a valuable marketing tool for Respondent given that it is easy to remember and is descriptive of accounting services.
Complainant questions the evidence submitted with the Response, suggesting that Respondent puts forth no support showing he is known by his fedtax.com e-mail address "other than the ipse dixit of his counsel." Respondent claims that Complainant has incorrectly assumed, without the support of case law, that legitimate rights and interests in a domain name stems only from the use of the domain name as an operational website. This disregards history of the development of the Internet and the use of domain names as electronic addresses. Respondent believes that his use of the fedtax.com e-mail address is sufficient to show Respondent's legitimate rights and interests in the Domain Name.
Respondent states that he has consistently used <fedtax.com> as a business and personal e-mail address for over sixteen years before Complainant's incorporation but, unlike the cases cited by Complainant, Respondent did not alter his use subsequent to learning of Complainant's alleged rights and did not use the Domain Name to create an association with Complainant's business. Respondent therefore submits that his registration, renewal, and continuing use of the Domain Name is not in bad faith and requests the Panel to dismiss the Complaint.
The Panel finds that Complainant has failed to establish all three elements required under the ICANN Policy and accordingly concludes that the relief sought by Complainant should be denied. On the other hand, Respondent has established to the satisfaction of the Panel that Complainant has engaged in reverse domain name hijacking by initiating this dispute.
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.
Complainant claims it has established its rights in the FEDTAX mark by registering it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,979,532 filed July 15, 2010 registered June 14, 2011). Complainant submits the trademark certificate which appears to verify its claims that the mark is duly registered and that it is the rightful owner of the mark. Complainant does not claim it had rights in the mark via registration or the common law before July 15, 2010. The Panel finds Complainant has established its rights in the FEDTAX mark under Policy ¶ 4(a)(i) by registering it with the USPTO, and its rights date back to the filing date of July 15, 2010. 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).”).
Complainant also claims the Domain Name is identical to its FEDTAX mark. According to Complainant, the only difference between its mark and the Domain Name is the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds this addition fails to differentiate the Domain Name from Complainant’s FEDTAX mark, thereby making the two identical under Policy ¶ 4(a)(i).
While Respondent argues its registration of the Domain Name predates Complainant’s alleged rights in the mark, the Panel is of the view that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)).
While Respondent contends the Domain Name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)).
Accordingly, Complainant establishes this element of the Policy.
Respondent argues he is commonly known by the Domain Name because he has been using the Domain Name to identify its business e-mail addresses and customers have come to identify the Domain Name with his business. Respondent submits multiple email printouts dating back over a decade, indicating Respondent has used the site in conjunction with its business for that length of time. The Panel is satisfied Respondent is commonly known by and associated with the Domain Name under Policy ¶ 4(c)(ii). See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names).
Respondent claims he has been using the domain Name in a legitimate and bona fide commercial manner and has supplied copies of emails sent from his business email address incorporating the Domain Name. Respondent regularly conducted his accounting business via email and has been doing so for many years. On this basis, the Panel concludes Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i) using the Domain Name to support its business thereby, giving rights in the Domain Name under Policy ¶ 4(a)(ii). See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that the use of the disputed domain name <aspengrove.com> by the respondent as a family email address, when the use began before the complainant's company existed or had rights in the mark ASPEN GROVE, created legitimate rights and interests in the <aspengrove.com> domain name).
Accordingly, Complainant failed to establish this element.
The Panel finds Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii).
Having concluded Respondent has rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), the Panel concludes Respondent did not register or use the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent contends the Domain Name is comprised entirely of common terms that have many meanings apart from use in Complainant’s FEDTAX mark. Moreover, Respondent contends the registration and use of the Domain Name comprising such common terms is not necessarily done in bad faith. The Panel considers that Respondent is entitled to register a domain name consisting of common terms which partially describe Respondent’s business and that the Domain Name contains such common terms, and that being the case, the Panel is of the view that Respondent did not register or use the <fedtax.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis.").
Furthermore, it is very difficult to conceive how Respondent could have registered the Domain Name in bad faith when it registered the Domain Name a full 14 years before Complainant claimed any rights in the FEDTAX mark. Respondent bases its argument on the requirement in Policy ¶ 4(a)(iii) that the use and registration be in bad faith. Respondent argues it could not have possibly registered the Domain Name in bad faith for this reason alone and the Panel is satisfied that this significant time difference (between the date of registration for the Domain Name and Complainant’s ultimate registration of the FEDTAX mark) precludes a finding of bad faith under Policy ¶ 4(a)(iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).
Again, Complainant fails to establish this element.
Reverse Domain Name Hijacking
Respondent claims Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent claims Complainant is attempting to deprive Respondent, the rightful, registered holder of the Domain Name, of its rights to use the Domain Name. Respondent claims the mere length of time it has owned the Domain Name, over 17 years at the time Complainant filed the Complaint, indicates that Complainant is attempting to take from Respondent what Complainant knows is Respondent’s rightful property.
The doctrine of laches is not subject to a clear cut mathematical test regarding the passage of time. However, 17 years is beyond what other panels have allowed:
Opus Northwest Construction v. Opus Realty
VideoCall Company v M Koenig c/o Techton LLC
Target Brands, Inc. v. 4160894 Canada Inc.
Target Brands, Inc. v. ALDnet Media Group
Global Informational Licensing v. Bankers Online
Complainant also knew Respondent was using the Domain Name for email continuously for 17 years before initiating this proceeding. The UDRP does not require each and every domain name to have a web site. A domain name can be used for a number of purposes, such as:
1. Hosting a web site.
2. Providing email addresses.
3. Providing a “back-end” for ecommerce transactions.
4. Blocking another from using the domain name.
See Basic Chemical Solutions, LLC v. BCS California Corporation and Jason Singh, AF-0923 (8/3/2001) and Ulysses Learning Corporation v. G. Sone and Associates, Inc., FA0602000645878 (3/27/2006).
Domain names can be used for emails without having a web site associated with them. Domain names can have portals associated with them without having a visible web site (for instance having to go to a password protected subdirectory to gain access to a private web site). Failure to have a visible web site does not conclusively prove a domain name is being inactively held, it merely raises the rebuttable presumption that the domain name is being inactively held. Respondent explained the Domain Name was being used for email services to Complainant before the Complaint was filed.
The Panel finds Complainant knew or should have known that it was unable to prove Respondent lacks rights or legitimate interests in the Domain Name and Respondent registered and is using the Domain Name in bad faith. The Panel further finds there is sufficient evidence to conclude reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the relief sought by Complainant shall be DENIED. Respondent has however established Complainant has engaged in reverse domain name hijacking by initiating this dispute.
Accordingly, it is Ordered the <fedtax.com> domain name REMAIN WITH Respondent.
Clive Elliott, Chair
Tyrus R. Atkinson Jr., Houston Putnam Lowry
Dated: 29 September 2011
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