Taxhawk, Inc. v. Yorkshire Enterprises Limited
Claim Number: FA1202001431318
Complainant is Taxhawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Yorkshire Enterprises Limited (“Respondent”), Anitgua and Barbuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwexpress1040.com>, registered with Spot Domain LLC d/b/a Domainsite.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2012; the National Arbitration Forum received payment on February 24, 2012.
On February 24, 2012, Spot Domain LLC d/b/a Domainsite.com confirmed by e-mail to the National Arbitration Forum that the <wwwexpress1040.com> domain name is registered with Spot Domain LLC d/b/a Domainsite.com and that Respondent is the current registrant of the name. Spot Domain LLC d/b/a Domainsite.com has verified that Respondent is bound by the Spot Domain LLC d/b/a Domainsite.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 March 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2012 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@wwwexpress1040.com. Also on March 1, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 alleges:
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds a registered trademark for the EXPRESS1040 mark with the United States Patent and Trademark Office. Respondent did not submit a Response in this proceeding.
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.
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."
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 provides the Panel with a copy of its USPTO trademark registration certificate for its EXPRESS1040 mark (Reg. No. 3,805,695 filed May 27, 2009; registered June 22, 2010). The Panel finds this evidence sufficient to establish Complainant’s rights in the EXPRESS1040 mark under Policy ¶ 4(a)(i), dating back to May 27, 2009. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant claims it began operating in 2001 and began using the EXPRESS1040 mark on November 21, 2002. Complainant claims that its USPTO trademark registration lists November 21, 2002, as its first use date for the EXPRESS1040 mark. Complainant asserts that it uses its mark to offer tax preparation and related software to consumers. Complainant provides the Panel with copies of awards and listings for its EXPRESS1040 mark, dating back to 2002. Complainant asserts that it owns the <express1040.com> domain name. Based on the uncontradicted record, the Panel determines that Complainant sufficiently demonstrated that its EXPRESS1040 mark has acquired secondary meaning, and therefore the Panel holds that Complainant owns common law rights in the EXPRESS 1040 mark dating back to November 21, 2002 for the purposes of Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant contends that the <wwwexpress1040.com> domain name combines Complainant’s EXPRESS1040 mark with the “www” prefix without the period usually separating the prefix from the rest of the domain name and the generic top-level domain (“gTLD”) “.com.” Complainant argues that neither addition sufficiently distinguishes the disputed domain name from Complainant’s mark. The Panel agrees and holds that Respondent’s <wwwexpress1040.com> domain name is confusingly similar to Complainant’s EXPRESS1040 mark pursuant to Policy ¶ 4(a)(i). See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2, 2005) (“Respondent’s <www-amazon.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark, as the domain name merely adds the prefix “www-” to Complainant’s AMAZON.COM mark. Such changes are not enough to overcome the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that it never authorized Respondent to use Complainant’s EXPRESS1040 mark and that Respondent is not sponsored by or legitimately affiliated with Complainant. The Panel notes that the WHOIS information identifies the domain name registrant as “Yorkshire Enterprises Limited.” The Panel also notes that Respondent did not respond to this case and did not present any evidence of being commonly known by the <wwwexpress1040.com> domain name. Consequently, the Panel concludes that Respondent is not commonly known by the <wwwexpress1040.com> domain name under Policy ¶ 4(c)(ii). 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 of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant states that Respondent uses the <wwwexpress1040.com> domain name to host a website that contains third-party, commercial hyperlinks. Complainant alleges that some of these hyperlinks resolve to the websites of Complainant’s competitors. Complainant claims that Respondent commercially benefits from the hyperlinks by click-through fees. Based on this evidence, the Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <wwwexpress1040.com> domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Additionally, Complainant argues that Respondent is guilty of typosquatting. Complainant claims that Respondent is attempting to take advantage of Internet users’ typographical errors. In this case, the Panel notes that Respondent’s domain name simply omits the period separating the “www” from Complainant’s mark. Because the Panel determines that Respondent is guilty of typosquatting, the Panel concludes that Respondent lacks rights and legitimate interests in the <wwwexpress1040.com> domain name under Policy ¶ 4(a)(ii). See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because respondent's addition of the prefix "www-" to complainant's AMAZON.COM mark constitutes typosquatting.”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and uses the <wwwexpress1040.com> domain name for the purpose of creating a likelihood of confusion as to Complainant’s sponsorship, affiliation, or endorsement of the disputed domain name. Complainant claims that Respondent attempts to profit from this confusion by receiving click-through fees from the aforementioned competing hyperlinks. Based on these undisputed allegations, the Panel concludes that Respondent registered and uses the <wwwexpress1040.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also 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).”).
Because the Panel previously determined that Respondent is guilty of typosquatting, the Panel holds that Respondent registered and uses the <wwwexpress1040.com> domain name in bad faith under Policy ¶ 4(a)(iii) based on Respondent’s typosquatting behavior. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting . . . is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds Complainant has satisfied 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 <wwwexpress1040.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 9, 2012
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