TaxHawk, Inc. v. ORM LTD
Claim Number: FA1504001614637
Complainant is TaxHawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ORM LTD (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freestaxusa.com>, registered with Tucows, Inc..
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 A. Einhorn appointed 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, Tucows, Inc. confirmed by e-mail to the Forum that the <freestaxusa.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 April 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@freestaxusa.com. Also on April 29, 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 David A. Einhorn 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:
1. Policy ¶ 4(a)(i)
a. Complainant has rights in the FREETAXUSA mark through extensive use and registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,805,696, registered June 22, 2010).
b. Respondent’s disputed <freestaxusa.com> domain name is confusingly similar to Complainant’s FREETAXUSA mark. Respondent’s disputed domain name is identical to Complainant’s mark, but for the addition of the letter “s” after “free.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <freestaxusa.com> domain name as evidenced by the available WHOIS information. Respondent is neither licensed nor authorized to use Complainant’s mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed Doman name to resolve to a website that hosts a directory of pay-per-click advertisements.
3. Policy ¶ 4(a)(iii)
a. Respondent has offered the disputed domain name for sale.
b. Respondent’s behavior has become part of a pattern of bad faith registration of domain names.
c. Resolving to a website offering advertisements of Complainant’s competitors constitutes disruption under ¶ 4(b)(iii).
d. Respondent uses the disputed <freestaxusa.com> domain name, and its confusing similarity to Complainant’s FREETAXUSA mark, to lure unsuspecting users into clicking advertisements for the purpose of Respondent’s commercial gain.
e. Respondent’s typosquatting behavior is further evidence of bad faith.
B. Respondent:
The Panel notes that the disputed domain name was registered on February 5, 2013.
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 uses the FREETAXUSA mark in connection with a tax preparation website owned by Complainant. Complainant argues that it has established rights in the FREETAXUSA mark through registration with the USPTO (Reg. No. 3,805,696, registered June 22, 2010). Prior panels have routinely held that registration with the USPTO is sufficient to establish rights in a given mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel therefore concludes that Complainant has rights in the FREETAXUSA mark pursuant to Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s disputed <freestaxusa.com> domain name is confusingly similar to Complainant’s FREETAXUSA mark. The Panel notes that Respondent’s disputed domain name is identical to Complainant’s mark but for the addition of the letter “s” after the word “free.” See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s FREETAXUSA mark under Policy ¶ 4(a)(i).
Complainant urges that Respondent is not commonly known by the <freestaxusa.com> domain name. The Panel notes that the available WHOIS information indicates that Respondent’s disputed domain name was registered by a “ORM LTD.” There is no other information to suggest that Respondent is or has ever been known as <freestaxusa.com>. Prior panels have held that a respondent is not commonly known by a disputed domain where the WHOIS information as well as other information in the record gives no indication that the respondent is commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. As evidence of this claim, Complainant shows a copy of the <freestaxusa.com> domain name as resolved on March, 27, 2015. The Panel notes that this document appears to show a website that displays multiple advertisements for products and services in competition with Complainant. Previous panels have held that using a disputed domain name to resolve to a website displaying advertisements for competing products and services does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). The Panel therefore finds that Respondent’s use of the disputed <freestaxusa.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant has thus also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s behavior and registration of the disputed domain name has been part of a pattern of bad faith under Policy ¶ 4(b)(ii). The Panel notes that Complainant has provided prior adverse decisions against Respondent. Previous panels have found that evidence of past decisions against a respondent provides a strong indication of a pattern of bad faith under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of some domain names under Policy ¶ 4(b)(ii).”). Consequently, this constitutes some evidence of bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent’s use of pay-per-click advertisements that link to Complainant’s competitors constitutes disruption under ¶ 4(b)(iii). Respondent appears to be using the disputed domain name to host advertisements for products and services that compete with Complainant’s business. Previous panels have held that using a domain name that is confusingly similar to a complainant’s mark to host advertisements of a complainant’s competitors can constitute disruption. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel finds that Respondent’s use of the disputed domain name to host competitors advertisements disrupted Complainant’s business under Policy ¶ 4(b)(iii).
Complainant further claims that Respondent uses the confusing similarity between Complainant’s mark and the disputed domain name to attract internet users for the purpose of Respondent’s commercial gain. As previously indicated, Respondent is using the disputed domain name to host advertisements for products and services that compete with the products and services that Complainant offers. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent uses a disputed domain name that is confusingly similar to a complainant’s mark to host advertisements. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). The Panel therefore also finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant notes that Respondent’s disputed domain name is a mere misspelling of Complainants FREETAXUSA mark. As noted previously, Respondent has simply added the letter “s” after the word “free” in the mark. Such action indicates typosquatting by Respondent, as Internet users could accidentally misspell Complainant’s mark and be redirected to Respondent’s website. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Thus, Complainant has also 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 <freestaxusa.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 8, 2015
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