TaxHawk, Inc. v. James McAvoy
Claim Number: FA1504001614644
Complainant is TaxHawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is James McAvoy (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taxhalk.com>, registered with Key-Systems GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2015; the Forum received payment on April 15, 2015.
On April 21, 2015, Key-Systems GmbH confirmed by e-mail to the Forum that the <taxhalk.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 April 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2015 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@taxhalk.com. Also on April 27, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant uses the TAXHAWK mark in connection with its offerings of online tax products and services. Complainant has registered the TAXHAWK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,728,199, Registered December 22, 2009), establishing its rights in the mark. Respondent’s <taxhalk.com> domain name is confusingly similar to the TAXHAWK mark as it merely replaces the “W” in the mark with an “L” and adds the generic top-level domain (“gTLD”) “.com.” Such use evidences “typosquatting” behavior by Respondent.
Respondent has no rights or legitimate interests in the <taxhalk.com> domain name. Respondent is not commonly known by the <taxhalk.com> domain name, and Complainant has given no license or authorization to Respondent to use any variation of the TAXHAWK mark in domain name registrations. Further, Respondent is making no bona fide offering of goods or services or any legitimate noncommercial or fair use through the disputed domain name. Rather, the <taxhalk.com> domain’s resolving page displays generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably gains pay-per-click fees from such links.
Respondent has used the disputed domain name in bad faith. Respondent has demonstrated a pattern of bad faith registrations under Policy ¶ 4(b)(ii). Respondent has attempted to disrupt Complainant’s business by including links on its resolving page which directly compete with Complainant’s business, demonstrating bad faith under Policy ¶ 4(b)(iii). Further, Respondent likely profits from the third-party links included on the <taxhalk.com> domain’s resolving page, evidencing bad faith under Policy ¶ 4(b)(iv). Respondent’s typosquatting behavior is itself evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the TAXHAWK mark in connection with its offerings of online tax products and services. Complainant purports to have registered the TAXHAWK mark with the USPTO (Reg. No. 3,728,199, Registered December 22, 2009), arguing that such a trademark registration evinces rights in the mark under Policy ¶ 4(a)(i). Panels have unanimously agreed a valid USPTO registration demonstrates a complainant’s rights pursuant to an analysis of Policy ¶ 4(a)(i), even where the complainant and respondent operate in different countries. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel agrees that Complainant’s registration with the USPTO is sufficient to establish its rights in the TAXHAWK mark.
Complainant argues that Respondent’s <taxhalk.com> domain name is confusingly similar to the TAXHAWK mark as it merely replaces the “W” in the mark with an “L” and adds the gTLD “.com.” Panels have agreed that such alterations to a mark fail to negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). The Panel agrees that Respondent’s <taxhalk.com> domain name is confusingly similar to Complainant’s TAXHAWK mark pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
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 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 argues that Respondent has no rights or legitimate interests in the <taxhalk.com> domain name. Complainant contends that Respondent is not commonly known by the <taxhalk.com> domain name, and that Complainant has given no license or authorization to Respondent to use any variation of the TAXHAWK mark in domain name registrations. In light of the available WHOIS information on record, and the lack of a response to indicate otherwise, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant contends that Respondent is making no bona fide offering of goods or services or any legitimate noncommercial or fair use through the disputed domain name. Complainant asserts that the <taxhalk.com> domain’s resolving page displays generic links to third-party websites, some of which directly compete with Complainant’s business. Such links include, “TAXHAWK.COM® (OFFICIAL)”, “100% FREE IRS TAX FILING”, and “FREE 2014 TAX FILING”. Respondent presumably gains pay-per-click fees from such links. Past panels have determined that inclusion of third-party links, some of which resolve to sites which may compete with a complainant’s business purposes, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use which would establish rights for a respondent under Policy ¶ 4(c)(i) and (iii). See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s use of the <taxhalk.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent has demonstrated a pattern of bad faith registrations under Policy ¶ 4(b)(ii). However, Respondent has not been shown to have involvement in prior adverse UDRP proceedings against it, and only one disputed domain name is involved in the current proceeding. As such, the Panel finds that Complainant’s Policy ¶ 4(b)(ii) argument is irrelevant.
Complainant claims that Respondent is attempting to disrupt Complainant’s business by including links on its resolving page which directly compete with Complainant’s business, demonstrating bad faith under Policy ¶ 4(b)(iii). Such links include “TAXHAWK.COM® (OFFICIAL)”, “100% FREE IRS TAX FILING”, and “FREE 2014 TAX FILING.” The Panel agrees that the use of third-party hyperlinks which purportedly resolve to competitors of Complainant is evidence of bad faith disruption under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Respondent likely profits from the third-party links included on the <taxhalk.com> domain’s resolving page, evidencing bad faith under Policy ¶ 4(b)(iv). The Panel finds Respondent has attracted, for commercial gain, Internet users by benefitting from confusion associated with the source, sponsorship, affiliation, or endorsement of the link by Complainant under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant also contends that Respondent has engaged in “typosquatting” behavior and that this is itself evidence of bad faith under Policy ¶ 4(a)(iii). The Panel agrees that the similarity of the <taxhalk.com> domain name to the TAXHAWK mark evinces typosquatting behavior, and that such behavior demonstrates bad faith under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <taxhalk.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink, Panelist
Dated: May 27, 2015
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