HRB Innovations, Inc. v. lin yanxiao / linyanxiao
Claim Number: FA1506001624038
Complainant is HRB Innovations, Inc. (“Complainant”), represented by Timothy J. Feathers of Stinson Leonard Street LLP, Missouri, USA. Respondent is lin yanxiao / linyanxiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hrblockbank.com>, registered with Hangzhou AiMing Network Co., LTD.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2015; the Forum received payment on June 15, 2015. The Complaint was received in both Chinese and English.
On June 11, 2015, Hangzhou AiMing Network Co., LTD confirmed by e-mail to the Forum that the <hrblockbank.com> domain name is registered with Hangzhou AiMing Network Co., LTD and that Respondent is the current registrant of the name. Hangzhou AiMing Network Co., LTD has verified that Respondent is bound by the Hangzhou AiMing Network Co., LTD 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 June 18, 2015, the Forum served the Chiinese language Complaint and all Annexes, including a Chiinese language Written Notice of the Complaint, setting a deadline of July 8, 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@hrblockbank.com. Also on June 18, 2015, the Chinese 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions.
1. Complainant owns the H&R BLOCK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,533,014, registered Jan. 22, 2002). Complainant uses the H&R BLOCK mark in connection with its banking services.
2. The <hrblockbank.com> domain name is confusingly similar to the H&R BLOCK mark. The domain name incorporates Complainant’s mark, adds the word “bank” and removes the “&” symbol, and inserts the generic top-level domain (“gTLD”) “.com” to the domain name.
3. Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence in the record that suggests Respondent is commonly known by the disputed domain name. Further, Complainant has never authorized Respondent to use the H&R BLOCK trademark. Respondent’s lack of rights or legitimate interests in the <hrblockbank.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
4. Respondent uses the <hrblockbank.com> domain name to feature competing hyperlinks, which divert customers to other websites that are not associated with Complainant. See Compl., at Attached Ex. 7. Additionally, Complainant is the original owner of the disputed domain name, and Respondent opportunistically registered the domain name when Complainant inadvertently allowed its registration to expire.
5. Respondent has engaged in bad faith registration and use of the <hrblockbank.com> domain name. Respondent has engaged in a pattern of bad faith registration. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers from Complainant to competitive firms. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Respondent opportunistically registered the domain name when Complainant inadvertently allowed its registration to expire. Finally, Respondent knew or should have known of Complainant and its rights in the H&R BLOCK mark at the time it registered the disputed domain name, which is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Complainant is a United States company engaged in the business of tax preparation and related banking services.
2. Complainant is an affiliate of a number of companies that are under common ownership and control and collectively referred to herein as "The H&R Block Enterprise." Complainant is the intellectual property rights holder of the H&R Block Enterprise, and its affiliates in the enterprise use the intellectual property, including the trademarks, under license with Complainant.
3. Complainant owns the H&R BLOCK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,533,014, registered Jan. 22, 2002).
4. The <hrblockbank.com> domain name was registered on June 6, 2002 and remained in the ownership of an affiliate of Complainant until its registration inadvertently lapsed and Respondent registered it on or about July 20, 2014.
5. The disputed domain name is used to provide links to competitors of Complainant in various fields.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it owns the H&R BLOCK mark through its registration with the USPTO (e.g., Reg. No. 2,533,014, registered Jan. 22, 2002). Complainant contends that it uses the H&R BLOCK mark in connection with its services including banking services. Prior panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Although Respondent reportedly resides in China, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s H&R BLOCK mark. Complainant argues that the <hrblockbank.com> domain name is confusingly similar to the H&R BLOCK mark. The domain name incorporates Complainant’s mark, adds the word “bank” and removes the “&” symbol, and inserts the gTLD “.com” to the domain name. Past panels have found that the addition of a generic word such as “bank” is insufficient to create distinctiveness in a disputed domain name. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark). Prior panels have also found that the removal of a symbol, such as the ampersand, does little to eliminate confusing similarity since they are impermissible in domain names. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL). Finally, the addition of a gTLD does not serve to distinguish the disputed domain name from the registered mark. See OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). As such, the Panel finds that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s H&R BLOCK mark and to
add the word “bank”, raising the inference that it is a domain name relating to the banking activities of Complainant;
(b) Respondent registered the disputed domain name on or about July 20, 2014
after its prior registration inadvertently lapsed;
(c) Respondent uses the <hrblockbank.com> domain name to feature competing hyperlinks, which divert customers to other websites that are not associated with Complainant.
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that it has found no evidence which would suggest that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name refers to “lin yanxiao / linyanxiao” as the registrant of record. Further, Complainant claims that it has never authorized Respondent to use the H&R BLOCK trademark. Lacking any evidence from Respondent proving otherwise, the Panel finds Complainant’s contentions sufficient to establish that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question);
(f) Complainant alleges that Respondent’s lack of rights or legitimate interests in the <hrblockbank.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. According to Complainant, Respondent uses the <hrblockbank.com> domain name to feature competing hyperlinks, which divert customers to other websites that are not associated with Complainant. See Compl., at Attached Ex. 7. The Panel notes that some of the hyperlinks reached through Respondent’s resolving website include “No Fee 0 Balance Transfer,” “Online Checking Account,” and “10 Best Credit Cards 2015.” Past panels have found that the use of hyperlinks to redirect Internet users to a complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), respectively. See D Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent has failed to establish 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);
(g)Complainant asserts that it was the original owner of the disputed domain name, and Complainant inadvertently allowed its registration of the domain name to expire. Complainant claims that Respondent opportunistically registered the disputed domain name as soon as it became available. Prior panels have found that opportunistic registration of a domain name after a complainant inadvertently allows the domain name to lapse is evidence that the respondent lacks rights or legitimate interests. See Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent has engaged in a pattern of bad faith registration. Complainant provides evidence that Lin Yanxiao of China has engaged in a pattern of conduct nearly identical to Respondent’s conduct in the instant case. See Lenovo (Beijing) Limited Corporation China v. Lin yanxiao / yanxiao lin, FA 1589992, (Nat. Arb. Forum Dec. 21, 2014); Enterprise Holdings, Inc. v.linyanxiao / lin yanxiao, FA 1585788 (Nat. Arb. Forum Dec. 15, 2014); Webster Financial Corporation and Webster Bank, National Association v. Lin yanxiao / yanxiao lin, FA 1575278 (Nat. Arb. Forum Sept. 16, 2014). Prior panels have agreed that having multiple prior UDRP decisions that result in findings of bad faith or transfer indicate a respondent’s bad faith registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Accordingly, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant alleges that Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers from Complainant to competing firms. Complainant demonstrates that Respondent’s featured links resolve to websites that compete with Complainant, such as <bmoharris.com/checking> and <commercebank.com/checking>. See Compl., at Attached Ex. 7. These links divert potential customers away from Complainant to third-party websites, which is disruptive to Complainant’s business. Past panels have found such disruption as evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). As a result, the Panel finds that Respondent’s disruptive behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Thirdly, Complainant submits that Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant insists that Respondent is improperly redirecting prospective customers through “related links” and “sponsored listings.” See Compl., at Attached Ex. 7. Past panels have agreed that using a disputed domain name to feature competing hyperlinks on the resolving website demonstrates bad faith registration and use. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Thus, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b) (iv).
Fourthly, Complainant argues that Respondent sought and obtained registration of the disputed domain name almost immediately upon the inadvertent lapse in Complainant’s prior registration. Past panels have found bad faith under Policy ¶ 4(a)(iii) where a respondent opportunistically registers a complainant’s lapsed domain name. See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (holding that the complainant’s prior registration and use of the disputed domain name and the respondent’s registration of the domain name immediately after the complainant failed to timely renew its registration “gives rise to an inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii)”). Thus, the Panel finds Respondent’s bad faith registration under Policy ¶ 4(a)(iii).
Fifthly, Complainant asserts that Respondent knew or should have known of Complainant and its rights in the H&R BLOCK mark at the time it registered the disputed domain name, which is evidence of bad faith under Policy ¶ 4(a)(iii). Complainant claims that at the time of registration, it had made extensive commercial use of the mark for years, and had obtained numerous federal registrations for the mark, and the mark had become very famous. Prior UDRP panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <hrblockbank.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <hrblockbank.com> domain name using the H&R BLOCK mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hrblockbank.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 17, 2015
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