HRB Innovations, Inc. v. Milen Radumilo
Claim Number: FA2208002009026
Complainant is HRB Innovations, Inc. (“Complainant”), represented by Timothy J. Feathers of Stinson LLP, Missouri, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hrblock.pro>, registered with Dynadot, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2022; the Forum received payment on August 18, 2022.
On August 19, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <hrblock.pro> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2022 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@hrblock.pro. Also on August 22, 2022, 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 September 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the H&R BLOCK service mark established by its ownership of the United States service mark registrations described below, and at common law by extensive use of the mark since at least 1956, explaining that it is the intellectual property rights holder of a number of affiliated companies that are under common ownership and control, that use the H&R BLOCK service mark providing tax preparation software and tax preparation services at approximately 9,200 retail offices in the United States and online on its website at <www.hrblock.com>; and asks this Panel to note that the disputed domain name <hrblock.com> has been owned by Complainant and its predecessors in interest since at least as early as 1996.
Complainant contends that the disputed domain name <hrblock.pro> is confusingly similar to Complainant’s H&R BLOCK mark as it consists entirely of the H&R BLOCK designation with the ampersand ("&" ) deleted, together with the generic Top Level Domain (“gTLD”) extension <pro>.
Complainant argues that the deletion of the ampersand does not negate a likelihood of confusion in this instance because an ampersand may not be used in a domain name.
Complainant adds that the addition of the gTLD extension <.pro> is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See The Weather Underground, Inc. v. Navigation Catalyst Sys., Inc., FA 21002 (Forum October 12, 2008) (finding the addition of a single letter and the top-level domain .com does not sufficiently distinguish a domain name from a mark).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name <hrblock.pro>, arguing that Respondent has never been known by the disputed domain name or any name corresponding to the disputed domain name. But to the contrary, Respondent has attempted to hide its true identity by registering the disputed domain name using a privacy protection service.
Complainant asserts that it could not find any evidence that Respondent began using the disputed domain name <hrblock.pro>, the H&R BLOCK mark or any similar domain name or trademark, at any time prior to the registration of the disputed domain name.
Complainant asserts that it has not licensed or otherwise authorized Respondent to use it’s H&R BLOCK mark or any names confusingly similar thereto.
Complainant further contends that Complainant’s rights in the confusingly similar H&R BLOCK service mark long predate the registration of the disputed domain name and argues that Respondent has never used the disputed domain name <hrblock.pro> in connection with a bona fide offering of goods or services.
Complainant contends that Respondent registered the disputed domain name in order to trade off of the considerable good will that Complainant has generated in its H&R BLOCK mark, and refers to screen captures of the web location to which the disputed domain name has resolved, exhibited in an annex to the Complaint, which shows that Respondent does not use the disputed domain name to sell any of Respondent’s own products, but instead resolves to a link-farm linking to the websites of number of Complainant’s competitors.
Screen captures exhibited and annexed to the Complaint show that Respondent's current website contains links that redirect to a number of subdomains, which are classic pay-per-click sites displaying links which divert visitors on to other websites which are not associated with Complainant.
Complainant argues that Respondent presumably generates revenue from diverted traffic, which is probably composed of Complainant’s own customers.
Complainant submits that such use of a domain name containing another’s trademark to operate a website that generates click-through revenue is not a bona fide offering of goods or service, nor a noncommercial fair use of the domain. See Cabela’s, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 301918 (Forum February 24, 2010) (holding that respondent’s use of domain names that featured generic links to third-party web sites was neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant adds that Respondent’s use of the disputed domain name is not a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Marvell Int’l Ltd. v. Zhichao, FA2007001902809 (Forum August 4, 2020) ( “Under Policy ¶¶ 4(c)(i) and (iii), using a domain name to host hyperlinks and advertisements is not considered a bona fide offering of goods or services, nor can it be a legitimate noncommercial or fair use if the domain holder is profiting off of pay-per-click revenue.”)(internal citation omitted).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that “[r]egistration of a domain name that is confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).” See Hugh Jackman v. Peter Sun, FA 248716 (Forum May 10, 2004).
Complainant adds that its rights in the confusingly similar mark predate the registration of the disputed domain name. See Slep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys Inc., FA 93636 (Forum Mar. 13, 2000) (“The domain name ‘sound- choice.com’ should be considered as having been registered and being used in bad faith because Respondent failed to discharge its responsibility to select, register and use a domain name that does not infringe the rights of a third party, namely Slep-Tone.”).
Here, Respondent undoubtedly was aware of Complainant and its marks as the disputed domain name prominently features Complainant’s H&R BLOCK mark.
Complainant adds that Respondent’s use of the disputed domain name which comprised of another’s mark for the purpose of providing links to third party commercial websites also constitutes bad faith. See Intel Corporation v. M. Macare a/k/a M. Macar, FA 660685 (April 26, 2006) (“[T]he Panel infers that Respondent receives click- through fees for each consumer it diverts to these other websites[,] finds that Respondent is taking advantage of the confusing similarity between the domain names and Complainant’s marks in order to profit from the goodwill associated with the marks, and holds that Respondent’s registration and diversionary use of the disputed domain names constitutes bad faith ...”).
The screen captures of the web page to which the disputed domain name resolves and pages to which it links, show that Respondent is providing links to services that compete with Complainant’s business assisting customers to file taxes,” “IRS debt relief,” and “financial advisories.” Complainant submits that the use of these phrases to name links on Respondent’s website clearly causes confusion and is likely to disrupt Complainant’s business by offering users links to businesses that are likely in competition with, and not affiliated with, Complainant.
Complainant argues that the combination of Respondent’s lack of legitimate interest in the disputed domain name, Respondent’s obvious knowledge of Complainant’s prior trademark rights, and the use of the disputed domain name to misdirect users to a website with revenue-generating links to Complainant’s competitors constitutes registration and use in bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the intellectual property holder for a group of associated companies and is the registered owner of the following registered trademarks:
· United States registered service mark H&R BLOCK, registration number 3,338.962, registered on the Principal Register on November 20, 2007 for services in international classes 35, 36 and 41;
· United States registered service mark, H&R BLOCK and block design, registration number 3, 213, 068, registered on the Principal Register on February 27, 2007 for services in international class 35.
Complainant has an established Internet presence and owns the domain name <hrblock.com>, which has been used by Complainant and its affiliates as the address of a website offering the services of its affiliated corporations, long before the date of registration of the disputed domain name.
The disputed domain name <hrblock.pro> was registered on January 23, 2022, and resolves to a web page with links leading on to third party websites, some of which are those of competitors of Complainant. A practice known as a “link-farm”.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the details of the registration of the disputed domain name in the course of this proceeding.
The Registrar has provided the name of Respondent as the registrant of the disputed domain name which has been concealed on the published WhoIs by a privacy service.
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided uncontested evidence to prove on the balance of probabilities that it has rights in the H&R BLOCK mark, established by its ownership of its service mark registrations described above, and extensive use of the mark by its corporate group business providing tax software as well as tax preparation services under the H&R BLOCK mark at approximately 9,200 retail offices in the United States.
The disputed domain name <hrblock.pro> consists of Complainant’s mark in its entirety, except for the omission of the ampersand together with the gTLD extension <.pro>.
Complainant’s H&R BLOCK mark is clearly recognizable in the disputed domain name and is in fact the dominant, and only distinctive element. The absence of the conjunctive element “&” does not negate its similarity. In fact, the ampersand is not an available character in a domain name and Internet users would not expect to find it.
The gTLD extension <.pro> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark.
This Panel finds therefore that the disputed domain name <hrblock.pro> is confusingly similar to the H&R BLOCK mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
The Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent has never been known by the disputed domain name <hrblock.pro> or any name corresponding to the disputed domain name pursuant to the Policy ¶ 4(c)(ii);
· to the contrary, Respondent has attempted to hide its true identity by registering through a privacy protection service;
· Complainant asserts that it could not find any evidence that Respondent began using the H&R BLOCK mark or any similar domain or trademark, at any time prior to the registration of the disputed domain name;
· Complainant has not licensed or otherwise authorized Respondent to use Complainant's H&R BLOCK mark or any names confusingly similar thereto;
· Complainant’s rights in the confusingly similar H&R BLOCK, service mark long predates the registration of the disputed domain name;
· Respondent has never used the disputed domain name <hrblock.pro> in connection with a bona fide offering of goods or services pursuant to the Policy ¶ 4(c)(i);
· Respondent registered the disputed domain name in order to trade off of the considerable good will that Complainant has generated in its H&R BLOCK marks;
· the screen captures of the web locations to which the disputed domain name has resolved, which are exhibited in an annex to the Complaint, show that Respondent does not use the disputed domain name to sell any of Respondent’s own products, but instead the disputed domain name resolves to a link-farm with pay-per-click links to a number of competitors of Complainant;
· Respondent's current website redirects to a number of subdomains, which are classic pay-per-click sites displaying links which divert visitors – likely Complainant's customers and potential customers – to other websites which are not associated with Complainant and from which Respondent presumably generates revenue;
· such use of the domain name containing Complainant’s service mark to operate a website that generates click-through revenue is not a bona fide offering of goods or service, nor a noncommercial fair use of the disputed domain name;
· Respondent’s use of the disputed domain name is not a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced uncontested evidence that it’s H&R BLOCK mark has been used by its affiliated corporations for many years and has thereby established a substantial reputation and goodwill.
The H&R BLOCK mark is distinctive, and has no obvious meaning other than as being Complainant’s service mark without the ampersand. Given the extent of Complainant’s prior rights and reputation, it is implausible that the registrant chose and registered the almost identical disputed domain name without knowledge of Complainant, its rights, and its mark.
Complainant’s prior rights in the H&R BLOCK mark, the similarity of the disputed domain name and the mark, the extent of Complainant’s rights and the improbability that the disputed domain name, which has no obvious meaning other than as a reference to Complainant’s mark prove on the balance of probabilities that the disputed domain name was chosen and registered to target and take predatory advantage of Complainant’s mark and goodwill in the H&R BLOCK mark.
This Panel finds therefore the disputed domain name was registered in bad faith.
In an annex to the Complaint, Complainant has adduced in evidence screen captures of the website to which the disputed domain name resolves, which show that Respondent is using the disputed domain name as a website address to attract and confuse Internet users and divert Internet traffic to Respondent’s website with its link-farm.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the links thereon, constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in 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 <hrblock.pro> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 21, 2022
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