DECISION

 

HRB Innovations, Inc. v. Labrekia Johnson

Claim Number: FA2312002074263

PARTIES

Complainant is HRB Innovations, Inc. ("Complainant"), represented by Timothy J. Feathers of Stinson LLP, Missouri, USA. Respondent is Labrekia Johnson ("Respondent"), Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <hrblock.cloud>, <hrblock.gives>, <hrblock.one>, <hrblock.work>, <hrblock.top>, <hrblock.website>, <hrblock.help> and <hrblock.host>, registered with Spaceship, Inc.

 

PANEL

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 7, 2023. Forum received payment on December 7, 2023.

 

On December 8, 2023, Spaceship, Inc. confirmed by e-mail to Forum that the <hrblock.cloud>, <hrblock.gives>, <hrblock.one>, <hrblock.work>, <hrblock.top>, <hrblock.website>, <hrblock.help> and <hrblock.host> domain names are registered with Spaceship, Inc. and that Respondent is the current registrant of the names. Spaceship, Inc. has verified that Respondent is bound by the Spaceship, 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 December 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2024 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.cloud, postmaster@hrblock.gives, postmaster@hrblock.one, postmaster@hrblock.work, postmaster@hrblock.top, postmaster@hrblock.website, postmaster@hrblock.help, postmaster@hrblock.host. Also on December 11, 2023, 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.

 

A timely Response was received and determined to be complete on January 8, 2024.

 

On January 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, HRB Innovations, Inc., is an affiliate of a number of companies that are under common ownership and control, collectively "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. The H&R Block Enterprise is one of the world's largest providers of tax preparation services and has prepared more than 935 million tax returns worldwide since 1955. The H&R Block Enterprise offers its tax preparation services and software on its website at "www.hrblock.com".

 

Complainant has rights in the H&R BLOCK mark through numerous trademark registrations, including with the United States Patent and Trademark Office ("USPTO"). Respondent's <hrblock.cloud>, <hrblock.gives>, <hrblock.one>, <hrblock.work>, <hrblock.top>, <hrblock.website>, <hrblock.help> and <hrblock.host> domain names are nearly identical and confusingly similar to Complainant's H&R BLOCK mark.

 

Respondent lacks rights or legitimate interests in the domain names since Respondent is not licensed or authorized to use Complainant's H&R BLOCK mark and there is no evidence that Respondent has in any way ever acquired or developed any rights or legitimate interests in the domain names by virtue of being known by the name "hrblock." To the contrary, Respondent has attempted to hide its true identity by registering through a privacy protection service. Complainant could not find any evidence that Respondent began using the domain names, the mark H&R BLOCK or any similar domain or trademark, at any time prior to the registration of the domain names. Respondent is not selling any of its own products or services through the use of the domain names. Respondent is not actively using the domain names. Inactive use of a domain name is not a bona fide offering of goods or services nor a legitimate non-commercial or fair use.

 

Respondent registered and uses the domain names in bad faith. Respondent undoubtedly was aware of Complainant and its marks as the domain names prominently feature Complainant's H&R BLOCK mark. As further evidence, Complaint registered its H&R BLOCK mark with the Trademark Clearinghouse and received notification when the Domain Names were registered. As part of the Trademark Clearinghouse process, Respondent was informed of Complainant's rights in the H&R BLOCK mark at the time of each registration. Moreover, Complainant has used the H&R BLOCK mark for over 67 years, and it has become a famous mark that Respondent unquestionably recognized. Given the strength of Complainant's marks, the actual knowledge of the marks by the Respondent, and the inactive use of the domain names, it is implausible that the registration was for a lawful use.

 

B. Respondent

Respondent is currently the sole proprietor of Brekey's Omni World, which is set to eventually become the incorporated company of Respondent's many small businesses which include Brekey Da Geek Technology, formed in 2006, which provided onsite and remote technology services and BDG Complete Solutions 2013, providing Small Business Startup Services such as services offered on <fivver.com>.

 

Due to the newly emerging technologies in cloud computing involving Big Data, Artificial Intelligence, Virtual Reality and As A Service Technologies, Respondent developed Hyper Robotics Block to assist entrepreneurs and businesses transition their business with technology as stated in the slogan and mission statement of BDG Complete Solutions.

 

In preparation for the launching of Hyper Robotics Block, Respondent secured the disputed domain names as they reference the many services the company provides.

 

Hyper Robotics Block primary service provides cloud and marketing automation services to small businesses and entrepreneurs by assisting with their transition to new technology trends such as Management, Security, and Disaster Services including and not limited to Web Services (Web Design, Web Repair and Web Hosting), Cloud Applications (Cloud Security, Cloud Computing, Development, Management and Automation, Big Data, Backup Services, IOT devices (Management and Security), and AI, VR, Chat GPT, Robotic automation services and does not offer consumer goods or services tax-related or otherwise.

 

The customer-facing brands of Hyper Robotics Block offer tools to empower businesses, sellers and individuals who have historically faced barriers to participation in the emerging online world.

 

The emergence of generic top level domain extensions by IANA began in 2012 to create a competitive market of online presence due to the near exhaustion of ".com" domain names, by allowing companies to register their business based on the services they provide. 

 

The  disputed domain names are the online identity and name intended to segment Hyper Robotics Block services by service type, which includes automation of cloud applications, extensions and services, technology repair and security of web sites, iot devices, mobile phones, web design repair, and hosting services, segment its structure for security of their client, consumer, affiliate, partnership, internal and external services, and segment its service types and service structures for marketing purposes including survive and security types.

 

Hyper Robotics Block will be included as part of Brekey's Omni Services which is much like "house of brands"—much like Procter & Gamble is a house of brands that includes independent, customer-facing brands such as Bounty, Crest, Dawn, Febreze, Gillette, and others.

H&R Block's complaint reveals the retaliatory struggles many independent sole proprietorship small startup businesses face during their initial phases of launching businesses without capital from major investors such as H&R Block, a public company having the following top ten investors as of January 8, 2024 per H & R Block Inc Shareholders - CNNMoney.com .

Respondent Labrekia Johnson is the sole proprietor owner of Hyper Robotic Block. The cloud and artificial intelligence online hosting brands of the startup corporation Brekeys Omni, Inc. offer cloud automation tools to empower businesses, sellers, and individuals who have historically faced barriers to participation in the online world. Hyper Robotic Block itself is not a customer-facing brand but is merely an online small business that offers services.

 

Before October 2023, Hyper Robotic Block was known as Breki Da Geek. In its early days, Hyper Robotic Block was a customer facing entity providing onsite technical support and remote services. Over time Respondent added additional services which included Business Startup Packages. Around 2013 Respondent began using BDG Complete Solutions for the purposes of assisting small business owners with startup business packages. By 2018, Respondent primarily focused on web and cloud services and rebranded itself to Brekey's Omni. Brekey's Omni would in turn be the mother company of any and all Respondent's small businesses companies which were structured to function as its own entity. Respondent purchased domain names for both Breki's Omni and BDG Complete Solutions in 2018 with expectation of building its online presence. In November 2021  Respondent purchased a webserver to provide web services to its business clients at reduced costs, application packs customized to their business which automated its processes, and

cyber security services. Respondent began the launch of Hyper Robotic Blocks, which provides emerging technology solutions to small businesses and entrepreneurs. Hyper Robotic Blocks primarily provides cloud hosting, artificial intelligence automation, and technology cybersecurity services for small businesses and entrepreneurs by assisting with their transition with emerging technologies.

 

Respondent acquired the disputed domain names on October 4, 2023, securing domain names related to the services Hyper Robotics Block provides. <hrblock.host>, <hrblock.cloud> and <hrblock.help> were designated to serve as the respective web hosting, cloud services, repair and consultation services provided by Respondent. <hrblock.top> and <hrblock.one> were to be used solely for marketing purpose to signify that Hyper Robotics Block is the best technology company in its field. The sole purpose of <hrblock.work> is to segment Hyper Robotics Block affiliates and partners from its main segment and were to be used as an intranet services for its employees. <hrblock.website> were to be used as a backup domain to be available in the event the site holding the main content were to go down, and <hrblock.gives> were to be used solely as it relates to community services provided at no cost.

As to whether the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights, all of Complainants' substantive counts require proof of a likelihood of consumer confusion. See USA Visionary Concepts, LLC v. MR Int'l, LLC, No. 4:09-CV-00874-DGK, 2009 WL 10672094, at *3 (W.D. Mo. Nov. 17, 2009) (citations omitted) (likelihood of confusion is a necessary element of federal and state law trademark infringement and unfair competition claims). Indeed, "The sine qua non of trademark infringement is consumer confusion." Jacobs v. Fareportal, Inc., No. 8:17-CV-362, 2018 WL 6113416, *3 (D. Neb. Nov. 21, 2018) (quoting Alzheimer's Disease & Related Disorders Ass'n, Inc. v. Alzheimer's Fou-nd. of Am., Inc., 307 F. Supp. 3d 260, 287 (S.D.N.Y. 2018)).

 

Because Plaintiffs' conclusory allegations that Defendant's names and/or images are likely to cause confusion about their source or affiliation are implausible on their face, or are contradicted by judicially noticeable facts, each of H&R counts fails.

Complainant failed to establish a claim as relates to acquiring the rights prior to Respondent's registration of the domain names. The word block as it relates to technology is as descriptive in nature as the following terminologies: data block, block chain, raid block, block size, block storage relate to descriptive terms whereas block is used as a noun or adjective describing other technologies. Pursuant to the Lanham Act a "mark" must be distinctive, arbitrary, or fanciful to merit protection: this means that it must not be generic or descriptive. The service mark HR Block is highly descriptive and therefore is not eligible for trademark protection under the Lanham Act.

Because Complainant does not allege that Respondent uses either the name "H&R Block" or the domain and distinctive "H&R" prefix, and omits the existence of, and peaceful coexistence with, other BLOCK-formative marks in the technical services industry, the strength of Complainant's marks does not favor a finding of confusion.

 

Complainant's usage of <hrblock.com> as a domain name is insufficient to claim as a common law trademark. Respondent did not select a domain name that infringes on the right of a third party as Complainant and its subsidiaries do not have exclusive rights to HR BLOCK as the term block is a descriptive term and cannot be a trademark.

 

Complainant argues that the disputed domain names are confusingly similar to the H&R BLOCK marks in which the Complainant has rights, and Complainant acquired rights prior to Respondent's registration of its domain names. While the disputed domain names contain "hrblock" in the top-level domain, they point to sites which represent the technical services Respondent provides. While Complainant has rights to the mark H & R BLOCK for tax preparation, Complainant's mark does not extend to the generic descriptive term "hr block", and Respondent provides technological services, not tax services.

As to legitimacy, Respondent invested time acquiring education and skills, finances by purchasing, and owned and ran other sole proprietor technology business as it relates to the domains in question dating back to 1996. Respondent invested its full financial budget purchasing tools as it relates to Hyper Robotics Block in 2021, 2022, and 2023 with an exhausting budget Respondent's budget could not cover the cost of a fully functional website design based on the business and customer needs does not lead to Respondent purchasing a domain and rendering it inactive.

 

Respondent did not park or point the disputed domain names to its purchased reseller web hosting server in an effort to protect its brand and prevent infringements from other companies with more sustainable budgets on its brand therefore the domain names render the output Complainants displayed in Annex __ purchased several business tools for

usage a reseller web hosting server from HostGator on or about November 26, 2021 for which Respondent would resell web hosting packages under the domain name <hrblock.host> aka <hyper RoboticsBlock.host> purchased on October 4, 2021.

 

Respondent purchased adobe creative packages on or about 2020 - 2023 for usage in hyperRoboticsBlock.website. Respondent purchased a membership with the known design website canva.com. Respondent created a business plan ten years ago as it relates to hyper Robotics Block automation services as the creation date of the business plan shows.

 

As to whether Respondent (as an individual, business, or other organization) has been commonly known by the domain name(s), even if Respondent has not acquired trademark or service mark rights, Respondent has requested quotes for website development services for a site.

As to whether Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, Respondent did not have knowledge that <HRblock.com> belonged to H&R Block.com.

 

As to whether the domain names have been registered and are being used in bad faith, Respondent's technology cloud, web hosting services is the sole reason Respondent registered the disputed domain names to secure the names prior to anyone purchasing the domains. Respondent provided evidence of usage of the domains prior to purchasing the domains and prior to the administrative procedures. The service mark "HRblock" is not a service mark exclusive to Complainant and does not infringe on its trademark.

Respondent has not listed the domain names for sale, does not have intention on s]align the domain names, and is not in a competitive market of Complainants tax business. The complaint in fact has been a customer of the complaints business and referred clients to the complaints business.

 

Respondent was completely unaware Complainant's domain name for H & R Block was <HRblock.com>. Respondent's services and Complainant's services do not necessarily attract the same customers as Respondent's services and targeted customers are entrepreneurs and business owners who normally have CPAs prepare their tax returns, not self-service sites such as H&R Block. Respondent's domain names reflect the services Respondent provides which negates tax services, although the domain name contains the same context Respondent would be more at risk to lose customers who if when in doubt did not fully read the tld thoroughly may automatically type in the ".com", leading Respondent's clients to the Complainant's website, increasing Complainant's website traffic.

 

In support of Respondent's fair usage of the domain names, Respondent supplied Annex 9 - 14 which highlights Respondents education, prior business names, and investments in the company prior to and after the disputed domains names were purchased.

 

As to Reverse Domain Name Hijacking (RDNH), Respondent states that Complainant failed to state other legal proceedings in its Complaint. Complainant intentionally harassed the complainant [scil. Respondent] on the due date of the Response by sending an email at 12:17P causing intentional emotional distress in an attempt to prevent Respondent from filing a Response.

 

Complainant has a history of claiming marks as part of its trademark which the client knowingly does not constitute H & R Blocks marks. See H&R Block vs Block Inc. Complainant has a history of obtaining domain names via administrative procedures to which the respondent does not respond and may not have responded due to intimidation implied by the client via responding.

FINDINGS

Complainant has established all the elements entitling it to relief.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Complainant has shown that it has rights in the H&R BLOCK mark through several registrations with the USPTO (e.g., Reg. No. 3,338,962, registered on November 20, 2007 for use in connection with the preparation of tax returns for others; financial planning services; and conducting classes and courses in preparation of tax returns).

 

As to whether the domain names are confusingly similar to Complainant's  mark, the Panel notes Respondent's contention that because Complainant does not allege that Respondent uses either the name "H&R Block" or the domain and distinctive "H&R" prefix, and omit[s] the existence of, and peaceful coexistence with, other BLOCK-formative marks in the technical services industry, the strength of Complainant's marks does not favor a finding of confusion.

 

However, unlike trademark infringement under the Lanham Act, on which Respondent relies, the standing (or threshold) test for confusing similarity under the Policy involves a relatively straightforward side-by-side comparison between the mark and the domain name: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7.

 

The Panel finds each of Respondent's <hrblock.cloud>, <hrblock.gives>, <hrblock.one>, <hrblock.work>, <hrblock.top>, <hrblock.website>, <hrblock.help> and <hrblock.host> domain names to be nearly identical and confusingly similar to Complainant's H&R BLOCK mark, only differing by the omission of the ampersand, which cannot be included in a domain name. The  generic top-level domains ("gTLDs") ".cloud", ".gives", ".one", "work", "top", "website", "help" and ".host" may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain names for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)         before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or

 

(ii)         Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)         Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <hrblock.cloud>, <hrblock.gives>, <hrblock.one>, <hrblock.work>, <hrblock.top>, <hrblock.website>, <hrblock.help> and <hrblock.host> domain names were all registered on October 4, 2023, many years after Complainant has shown that its H&R BLOCK mark had become famous. Contrary to Respondent' assertion that the disputed domain names point to sites which represent the technical services Respondent provides, Complainant has shown that none of the domain names resolve to an active website (Complaint annexes 14 – 21). 

 

These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <hrblock.cloud>, <hrblock.gives>, <hrblock.one>, <hrblock.work>, <hrblock.top>, <hrblock.website>, <hrblock.help> and <hrblock.host> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).

 

Respondent has provided no evidence of ownership or actual or intended use of the name Hyper Robotic Blocks, nor of any of the circumstances set out in Paragraph 4(c) of the Policy.

 

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.

 

(i)                      circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)        Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;

(iii)         Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)        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 mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.

As noted in the WIPO Jurisprudential Overview 3.0, Section 3.1, those circumstances are not exclusive and a complainant may demonstrate bad faith under paragraph 4(a)(iii) by showing that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant's trademark.

 

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant and its famous H&R BLOCK mark when Respondent registered the <hrblock.cloud>, <hrblock.gives>, <hrblock.one>, <hrblock.work>, <hrblock.top>, <hrblock.website>, <hrblock.help> and <hrblock.host> domain names and that Respondent did so in bad faith with intent to take unfair advantage of Complainant's mark by using them to create a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the websites which Respondent intends to establish.

 

Complainant has established this element. 

 

Other legal proceedings

UDRP Rule 5(c)(vi) requires a respondent to identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the Complaint.

 

Respondent stated:

 

"Annex 1 and Annex 2 supplied by Respondent highlights other legal proceedings as it relates to HRB Innovations, including with the most recent H&R Block Inc. v, Block, Inc disposed of 01/24/2023 in favor of Block Inc." 

 

None of those cases were in connection with or relating to any of the domain names that are the subject of this Complaint, except to the extent that they found Complainant to have rights in the trademark H&R BLOCK.

 

Reverse Domain Name Hijacking

Since Complainant has established all three elements, it follows that Complainant has not engaged in Reverse Domain Name Hijacking.

 

DECISION

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 <hrblock.cloud>, <hrblock.gives>, <hrblock.one>, <hrblock.work>, <hrblock.top>, <hrblock.website>, <hrblock.help> and <hrblock.host> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Alan L. Limbury, Panelist

Dated: January 12, 2024