TaxHawk, Inc. v. ICS Inc
Claim Number: FA1504001614647
Complainant is TaxHawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exspress1040.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and, to the best of knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (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 16, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <exspress1040.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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@exspress1040.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 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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.
A. Complainant
Complainant uses the EXPRESS1040 mark in connection with its offerings of software featuring tax preparation products and services. Complainant has registered the EXPRESS1040 mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,805,695, Registered June 22, 2010), which establishes its rights in the mark. Respondent’s <exspress1040.com> domain name is confusingly similar to the EXPRESS1040 mark as it incorporates the mark entirely and merely adds an “s” between “ex”-- and --“press1040”, and includes the generic top-level domain (“gTLD”) “.com.” Such use evidences “typosquatting” behavior by Respondent.
Respondent has no rights or legitimate interests in respect of the <exspress1040.com> domain name. Respondent is not commonly known by the <exspress1040.com> domain name, and Complainant has given no license or authorization to Respondent to use the EXPRESS1040 mark. Further, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the disputed domain name. Rather, the <exspress1040.com> domain’s resolving page displays generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives 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). Next, 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 <exspress1040.com> domain’s resolving page, evidencing bad faith under Policy ¶ 4(b)(iv). Finally, Respondent’s typosquatting behavior is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, TaxHawk, Inc., uses the EXPRESS1040 mark in connection with its offerings of software featuring tax preparation products and services. Complainant has registered the EXPRESS1040 mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,805,695, Registered June 22, 2010), which establishes its rights in the mark.
Respondent, ICS Inc, registered the <exspress1040.com> domain name on May 7, 2012. Respondent’s <exspress1040.com> domain name resolves to a page displaying generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from such links. Respondent has engaged in typosquatting. Respondent has demonstrated a pattern of bad faith registrations.
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 has rights in the EXPRESS1040 mark under Policy ¶ 4(a)(i) through registration with the USPTO. 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.”).
Respondent’s <exspress1040.com> domain name is confusingly similar to the EXPRESS1040 mark under Policy ¶ 4(a)(i) as it incorporates the mark entirely and merely adds an “s” between “ex”-- and --“press1040”, and includes the generic top-level domain (“gTLD”) “.com.” See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); 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.”); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that “the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark.”).
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).
Respondent has no rights or legitimate interests in respect of the <exspress1040.com> domain name. Respondent is not commonly known by the <exspress1040.com> domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the EXPRESS1040 mark. The WHOIS information lists ICS Inc as registrant of the domain name. 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).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the disputed domain name. Rather, the <exspress1040.com> domain name resolves to a page displaying generic links to third-party websites, some of which directly compete with Complainant’s business. Such links include: “EXPRESS1040”, “Filing Income Tax Returns”, and “1040 Tax Return”. Respondent presumably receives pay-per-click fees from such links. Therefore, Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use through its <exspress1040.com> domain name 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).”).
Respondent has demonstrated a pattern of bad faith registrations under Policy ¶ 4(b)(ii). Respondent has had prior adverse UDRP decisions transferring the disputed domain names. See NSK LTD. v. ICS INC., FA 1607160 (Nat. Arb. Forum Mar. 28, 2015) (finding “that the <nskbearing.com> domain name be TRANSFERRED from Respondent to Complainant.”); see also Chegg Inc. v. ICS Inc, FA 1605987 (Nat. Arb. Forum April 3, 2015) (finding “that the <cehgg.com> and <chuegg.com> domain names be TRANSFERRED from Respondent to Complainant.”); see also National Geographic Society v. ICS Inc, FA 1598195 (Nat. Arb. Forum Feb. 9, 2015) (finding that “the <natgeokids.org> domain name be TRANSFERRED from Respondent to Complainant.”). Therefore, Respondent has exhibited a pattern of bad faith domain name registrations. See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).
Next, Respondent has engaged in disruption of 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). 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)).
Further, Respondent has attracted Internet users for commercial gain. Respondent benefits from confusion associated with the source, sponsorship, affiliation, or endorsement of the third-party links included on the <exspress1040.com> domain’s resolving page, evidencing bad faith 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).”).
Finally, Respondent’s typosquatting behavior is evidence of 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 having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exspress1040.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 10, 2015
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