TaxHawk, Inc. v. Dealwave
Claim Number: FA1504001614653
Complainant is TaxHawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Dealwave (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xpress1040.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2015; the Forum received payment on April 15, 2015.
On April 15, 2015, FABULOUS.COM PTY LTD. confirmed by e-mail to the Forum that the <xpress1040.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY 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 April 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@xpress1040.com. Also on April 22, 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 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that owns the trademark EXPRESS1040 and uses it to market services that provide temporary use of on-line non-downloadable software for tax calculation and tax return preparation and filing. Its web site is well-known and it is used by millions of US tax payers. Complainant’s mark was first used in commerce in 2002 and it was well known since then.
According to Complainant, the disputed domain name is confusingly similar, in the sense of the Policy, to its mark, because the name is identical to the mark except for omitting the letter “e” at the beginning. Complainant cites UDRP precedents to support its position.
Complainant states that Respondent has not been commonly known by the disputed domain name. Complainant has not licensed or otherwise authorized Complainant to use its mark, and Respondent is not affiliated with Complainant in any way.
Complainant alleges that Respondent is using the disputed domain name to redirect Internet users to a pay-per-click web site featuring links to third-party websites, some of which directly compete with Complainant. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
Complainant states that Respondent registered and is using the disputed domain name in bad faith because it is being used for the purposes of commercial gain by offering links to Complainant’s competitors. This constitutes bad faith registration and use under Policy 4(b)(iv). Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent is a recalcitrant, serial cybersquatter / typosquatters. Previous panels have found against Respondent, and have agreed that multiple prior UDRP decisions are sufficient evidence indicating a respondent’s bad faith registration and use. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established common law trademark rights for EXPRESS1040 dating back to 2002.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name was registered in August 2010.
The products and services offered by Complainant are widely used and well known.
Respondent is using the disputed domain names to resolve to web sites containing commercial links to products and services that compete with those of Complainant.
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.”).
It is clear that the disputed domain name, consisting of a misspelling of the Complainant’s trademark, is confusingly similar to the Complainant’s trademark. See for example Lenovo (Beijing) Limited Corporation China v. John Wang, FA 1586484 (Nat’l Arb. Forum Dec. 10, 2014); WordPress Foundation v. Domain Backorder Domain-Catch.com / Net Solutions Holding LLC, FA 1552560 (Nat’l Arb. Forum May 5 2014).
Respondent is using the disputed domain name to point to a website that offers services that compete with the Complainant’s products.
The Panel finds that Respondent is redirecting Internet users interested in the Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See for example Homer, TLD Inc. v. Kang, FA 573872 (Nat’l Arb. Forum, Nov. 22 2005); Nike, Inc. v. Dias, FA 135016 (Nat’l Arb. Forum, Jan. 7, 2002).
It is clear to the Panel that Respondent was aware of Complainant’s mark when it registered and started using the disputed domain name, because the disputed domain names is essentially identical to Complainant’s well-known mark.
Respondent (who did not reply to the Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, in the Panel’s view, Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fide, because Respondent uses the disputed domain names to resolve to a web site that offers services that compete with those of the Complainant. This indicates that Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under Policy ¶ 4(b)(iv). See for example V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat’l Arb. Forum Sept. 2, 2004); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat’l Arb. Forum Nov 21, 2002).
Further, Respondent has been a respondent in prior UDRP cases in which the panels ordered the transfer of the at-issue domain names to the respective complainants. See Novartis AG v. Dealwave, FA 1419767 (Nat. Arb. Forum Jan. 27, 2012); Meadowbrook LLC v. Dealwave, FA 1312200 (Nat. Arb. Forum Apr. 22, 2010); Allstate Ins. Co. v. Dealwave, FA 1375193 (Nat. Arb. Forum Apr. 14, 2011). The Respondent’s previous UDRP decisions are evidence that Respondent’s registration and use of the disputed domain name is a part of a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xpress1040.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 19, 2015
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