Anastasia M. Poulopoulos v. Mary Phelan / Appeal My Taxes
Claim Number: FA1805001786277
Complainant is Anastasia M. Poulopoulos (“Complainant”), represented by Anastasia M. Poulopoulos, Illinois, USA. Respondent is Mary Phelan / Appeal My Taxes (“Respondent”), Illinois., USA
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <appealmytaxes.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 L. Kreider as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2018; the Forum received payment on May 11, 2018.
On May 14, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <appealmytaxes.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 May 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2018 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@appealmytaxes.com. Also, on May 22, 2018, 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 June 11, 2018.
On June 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complaint recites that both the Complainant and the Respondent are real estate attorneys operating businesses in Illinois that assist their respective customers in appealing property tax assessments.
The Complainant acknowledges in her Complaint that the Respondent registered the Disputed Domain Name (“DDN”) <appealmytaxes.com> on May 12, 2008, and that the Complainant thereafter registered its own domain, “appealmytaxes.biz”, on June 18, 2008. On June 23, 2008, the Complainant filed an application to register the trademark WWW.APPEALMYTAXES.BIZ OUR ONLY BIZNESS IS LOWERING YOUR REAL ESTATE TAXES with the United States Patent and Trademark Office (“USPTO”). The Complaint does not allege that Complainant acquired any colorable common law trademark rights prior to the grant of registration of its trademark by the USPTO on March 9, 2010.
The Complainant alleges that the DDN remained dormant and was not used by the Respondent until 2018. The Complainant alleges that confusion has resulted among tax appeal clients and real estate agent referral sources as a result of the Respondent’s using the DDN for the first time in 2018 in connection with a website offering similar tax reduction services as the Complainant’s business provides to the same target market.
The Complainant avers that the Respondent has no right or legitimate interests in the DDN “… because the Respondent knew or should have known that there is and has been a legitimate, direct competitor (the Complainant) who has a similar (trademarked) name that has been in continuous use for the last 10 years in the exact same business and industry”.
Finally, the Complainant alleges bad faith on the part of the Respondent in that: “The Respondent had to have knowingly chose (sic) this option (activating the dormant domain site) in order to piggyback on the success and reputation of the Complainant’s business and website domain name and divert business and relationships from agents and clients who are confused with the name and from clients who think they are using the Complainant’s website and service and getting a ‘discounted’ fee.” The Complainant asserts that Respondent’s action has damaged the Complainant’s reputation, image and brand, resulting in a loss of goodwill built up over the past 10 years.
B. Respondent
The Respondent argues that its <appealmytaxes.com> domain name is not identical or confusingly similar to the Complainant’s trademark because: “The ‘.biz’ distinction was important enough for the Complainant to include in the trademark registration, and accordingly, the names are not the same”. The Respondent explains:
“The registered word mark is long, extensive and strongly emphasizes that the ‘BIZ’ element of the name is integral to the word mark and the incorrect spelling of ‘bizness’ is the most unique aspect of the word mark.”
The Response further alleges:
“The AppealMyTaxes.com site does not resemble the website appealmytaxes.biz in any manner…. The colors, names and functionality are inherently different and not likely to confuse.”
The Respondent submits with its Response a screenshot of the Complainant’s website, which features a photograph of the Complainant, Anastasia M. Poulopoulos, identifying the Complainant as a property tax lawyer, beneath the mark -- “AppealMyTaxes.Biz Our Only Business Is Lowering Your Real Estate Taxes TM”.
The Respondent alleges that she rightfully uses the domain which she registered in good faith to support her business, and that “Complainant cannot claim the entire Illinois real estate market as ‘her market’.”
The Respondent alleges that she attempted as early as 2008 to develop an online appeal platform that would facilitate the registration of taxpayers to appeal their property taxes, but that “the technology required to facilitate the process was in its infancy and not viable to reasonably employ until recently.” The Respondent submits as evidence of her early attempts to develop and launch such a platform an email chain dated in January 2009, between herself and the platform developer whom she had commissioned at that time. The Respondent acknowledges that the application she ultimately launched on the DDN <appealmytaxes.com> in 2018 facilitates online property tax appeals for residential property owners in Cook County, Illinois.
Rebutting the Complainant’s allegation that the Respondent registered the DDN “primarily for the purpose of disrupting the business of a competitor”, i.e., the Complainant, the Respondent avers:
“Registration by Respondent primarily for the purpose of disrupting the business [of the Complainant] is impossible as the Respondent registered the [DDN] prior to registrations by the Complainant.” (Emphasis in original).
The Respondent requests a finding of Reverse Domain Name Hijacking by the Complainant, asserting relevantly, “Complainant should have known it would fail since the Respondent registered the domain prior to any registration by the Complainant.”
The Respondent characterizes the Complainant’s course of action from the outset in these words (repeated here verbatim):
“Complainant brought this case to harass the Respondent into giving her the [DDN] appealmytaxes.com. Complainant hired one of the most expensive law firms in the City of Chicago (Holland & Knight) to draft a letter threatening a legal trademark battle which would cost tens if not hundreds of thousands of dollars in legal fees alone [to defend].
Respondent offered to remove AppealMyTaxes from all logos and marketing in an attempt to avoid any alleged confusion and to settle the matter without litigation. However, Complainant rejected the offer, and instead has moved forward with this cause of action and is apparently unwilling to negotiate until this cause of action has been resolved in her favor.
Respondent believes Complainant intended to enter into a legal battle with Respondent at the time Complainant registered appealmytaxes.biz. Respondent contends that the Complainant, Ms. Poulopoulos, knew of Ms. Phelan's pre-existing registration of appealmytaxes.com in 2008, knew of Ms. Phelan and her profession as a property tax attorney, and in an act of bad faith, registered the ".biz" domain and subsequent trademarks in an effort to hold hostage Ms. Phelan's obvious intent of effectively using the rightly registered domain for property tax services. All the while, never providing notice to Ms. Phelan of the existence of appealmytaxes.biz. until 2018.”
The Respondent registered the DDN <appealmytaxes.com> on May 12, 2008, prior to the Complainant’s registration of its “appealmytaxes.biz” domain name and prior to the Complainant’s filing of an application with the USPTO on June 23, 2008 to register the trademark WWW.APPEALMYTAXES.BIZ OUR ONLY BIZNESS IS LOWERING YOUR REAL ESTATE TAXES, which was subsequently registered on March 9, 2010.
Under the circumstances, the Complainant should have known from the outset that it could not possibly succeed in establishing that the Respondent had registered the DDN in bad faith, since the Respondent was first in time to register. The Complainant went ahead nonetheless to bring these administrative proceedings.
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.
Where a dominant feature of a complainant’s trademark is recognizable in the Disputed Domain Name the domain name will normally be considered confusingly similar to that mark for purposes of satisfying Policy Paragraph 4(a)(1), the UDRP standing requirement. See, WIPO Jurisprudential Overview 3.0 at par. 1.7.
Here, however, the Panel notes that throughout the Complaint, the Complainant reflects her trademark as “AppealMyTaxes.BIZ”, with “BIZ” set out in upper case letters in each and every instance.
The Panel finds weight in the Respondent’s assertion that the use of “.biz”, along with the word “business” misspelled to read “bizness”, are the distinctive elements of the Complainant’s registered WWW.APPEALMYTAXES.BIZ OUR ONLY BIZNESS IS LOWERING YOUR REAL ESTATE TAXES trademark. The Respondent asserts that the DDN is neither identical, nor confusingly similar, to the Complainant’s trademarks APPEALMYTAXES.BIZ. or WWW.APPEALMYTAXES.BIZ OUR ONLY BIZNESS IS LOWERING YOUR REAL ESTATE TAXES.
The Panel considers that, like the terms “RENT”, “A”, and “CAR”, the generic, common dictionary words “APPEAL”, “MY” and “TAXES” appearing in both the Complainant’s trademark and the Disputed Domain Name <appealmytaxes.com>, are merely descriptors of the services provided by both the Complainant’s and the Respondent’s on-line businesses, i.e., the facilitation of appeals of property tax assessments. Their presence within each does not render the DDN confusingly similar to the mark.
The present case must be distinguished from those where a disputed domain name is identical or confusingly similar to a complainant’s mark because it merely replaces the “.com” gTLD with the “.biz” gTLD. Here, “.biz” is not merely the gTLD used in the Complainant’s domain name. Rather, “.biz” is the essential differentiating element of the Complainant’s registered mark, which the Complainant uses in every instance where the mark appears to distinguish and differentiate the mark.
The Complainant’s own usage of “AppealYourTaxes.BIZ” throughout the Complaint, with “BIZ” written entirely in upper case letters, highlights that it is also the Complainant’s subjective understanding and belief that the inclusion of the element “.BIZ” distinguishes and differentiates her mark from the DDN <appealmytaxes.com>. Indeed, the Panel considers that the Complainant must have intended to differentiate her domain name in this way when the Complainant registered her “appealmytaxes.biz” domain and applied to the USPTO for her trademark, just weeks after the Respondent had registered the DDN <appealmytaxes.com>.
The Panel notes that the Complainant’s allegations of actual confusion on the part of Internet users between Complainant’s business and that operated by the Respondent are wholly unsubstantiated and are mere naked allegations bereft of proof. In any event, “actual confusion”, even if proven by a complainant, is not the relevant test under the Policy. Rather, panels will typically conduct a “side-by-side” comparison to consider whether such a comparison supports a finding of confusing similarity. Here, a comparison does not support a finding of confusing similarity.
The Panel concludes that the Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark.
The Respondent avers in her Response that it is “impossible” that the Complainant could be found to have a superior right or interest, or that the Respondent could be found to have registered the DDN in bad faith, where, as here, the Respondent registered the DDN before the Complainant acquired rights in its trademark. This Panel agrees.
It is a well-established in the jurisprudence of the UDRP, with very few exceptions, none of which apply here, that a complainant can have no actionable claim against a respondent if the complainant’s mark postdates the registration of the DDN. FIBO Consulting, LTD v. MohammadReza FakhrMoghaddam, FA1708001744548 (Forum September 15, 2017) (FIBO and <fibogroup.org>); Shesafe Pty Ltd v. DomainMarket.com, D2017-1330 (WIPO August 22, 2017) (SHESAFE and <shesafe.com>).
The Complainant could not have acquired a superior right or interest in the term APPEALMYTAXES, which consists of the generic, common dictionary words “APPEAL”, “MY” and “TAXES”, particularly in circumstances where the Respondent was first to register.
The Panel finds that the Complainant has not satisfied the second element, Policy Paragraph 4(a)(ii).
Even if the Complainant were able to satisfy Policy ¶ 4(a)(i) and ¶ 4(a)(ii), the Complainant could not prevail in these administrative proceedings. The Complainant would be unable, in any event, to show that the Respondent, who registered the DDN before the Complainant had acquired any trademarks right, acted in bad faith in registering the DDN.
The Respondent registered the DDN prior in time to the Complainant acquiring rights in and to her trademark, thereby precluding a finding of bad faith registration and use.
The Panel finds that the Complainant has not satisfied the third element, Policy Paragraph 4(a)(iii).
It appears to the Panel that the Complainant became aware of the Respondent’s registration on May 12, 2008 of the DDN <appealmytaxes.com>, and within weeks, acted to register her own “appealmytaxes.biz” domain name and file an application with the USPTO on June 23, 2008 to register the trademark WWW.APPEALMYTAXES.BIZ OUR ONLY BIZNESS IS LOWERING YOUR REAL ESTATE TAXES, with the intention of competing in the same professional services business as the Respondent had launched, or at that time, appeared to be preparing to launch.
The Panel concludes that the Complainant instituted these UDRP proceedings knowing that the Respondent was prior in time in registering the DDN and that the Complainant could not possibly establish the element of bad faith registration by the Respondent, which is required under the Policy Paragraph 4(a)(iii).
The Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel further finds that Complainant engaged in reverse domain name hijacking.
Accordingly, it is Ordered that the <appealmytaxes.com> domain name REMAIN WITH Respondent.
David L. Kreider, Panelist
Dated: 18 June 2018
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