HRB Innovations, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2001001880758
Complainant is HRB Innovations, Inc. ("Complainant"), represented by Timothy J. Feathers of Stinson Leonard Street, United States of America. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hrbbock.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2020; the Forum received payment on January 28, 2020.
On January 28, 2020, GoDaddy.com, LLC confirmed by email to the Forum that the <hrbbock.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@hrbbock.com. Also on January 30, 2020, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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, together with predecessors in interest and affiliate companies under common ownership and control, has provided tax preparation services since 1955 and is among the largest such providers in the world. Complainant provides its services through approximately 11,000 retail offices, via custom software, and online. Complainant and its predecessors in interest have used the H&R BLOCK mark in connection with these services since at least as early as 1956, and since 1996 have owned and used the domain name <hrblock.com>. Complainant owns various U.S. trademark registrations for H&R BLOCK and related marks.
Respondent registered the disputed domain name <hrbbock.com> via a privacy registration service in November 2019. The disputed domain name initially redirected users to a website that attempted to download malicious software. After Complainant reported this, the domain name was then configured to redirect to Complainant's own site. Complainant asserts that this redirection enables Respondent to receive unearned referral commissions through Complainant's own affiliate program. Complainant states that it has not licensed or otherwise authorized Respondent to use its marks or any similar name, and that Respondent is not commonly known by the domain name.
Complainant contends on the above grounds that the disputed domain name <hrbbock.com> is confusingly similar to its H&R BLOCK mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <hrbbock.com> incorporates Complainant's registered H&R BLOCK trademark, omitting the ampersand symbol and the space, substituting a letter "B" for the letter "L," and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., HRB Innovations, Inc. v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, D2016-0342 (WIPO Apr. 6, 2016) (finding <hrbloxk.com> confusingly similar to H&R BLOCK). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates a typographical variation of Complainant's registered mark without authorization, and it has been used for the sole apparent purposes of hosting malware and redirecting users to Complainant's website via unauthorized affiliate links. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Transamerica Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1861549 (Forum Oct. 9, 2019) (malware); Telemundo Network Group LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1840240 (Forum May 24, 2019) (malware); Lockheed Martin Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1837567 (Forum May 1, 2019) (malware); Staples, Inc. & Staples the Office Superstores, LLC v. FCS Holdings Corp / Carolina Rodrigues, FA 1428752 (Forum Apr. 4, 2012) (affiliate links).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name represents an instance of typosquatting on Complainant's well-known mark, obviously intended to attract Internet users seeking Complainant. Respondent used a privacy registration service to register the domain name, and has used the domain name to distribute malware and to exploit Complainant's affiliate referral program, both for apparent or presumed commercial gain. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Transamerica Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1861549 (Forum Oct. 9, 2019) (malware); Telemundo Network Group LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, supra (malware); Lockheed Martin Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, supra (malware); Staples, Inc. & Staples the Office Superstores, LLC v. FCS Holdings Corp / Carolina Rodrigues, supra (affiliate links). And Respondent has a history of such conduct and of adverse determinations under the Policy. See, e.g., Morgan Stanley v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1861329 (Forum Oct. 3, 2019) (referring to Respondent's pattern of bad faith registrations); Telemundo Network Group LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, supra (same); Transamerica Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (same). The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hrbbock.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 28, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page