HRB Innovations, Inc. v. Domain Holdings / Domain Admin / Ben
Claim Number: FA2305002043831
Complainant is HRB Innovations, Inc. ("Complainant"), represented by Timothy J. Feathers of Stinson LLP, Missouri, USA. Respondent is Domain Holdings, New Zealand / Domain Admin, Bahamas / Ben, Germany ("Respondents").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hrbloc.com> (Respondent Domain Holdings) and <hrblok.com> (Respondent Domain Admin), registered with Internet Domain Service BS Corp, and <handrblok.com> (Respondent Ben), registered with Dynadot 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 E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on May 9, 2023; Forum received payment on May 9, 2023.
On May 10, 2023, Internet Domain Service BS Corp confirmed by email to Forum that the <hrbloc.com> and <hrblok.com> domain names are registered with Internet Domain Service BS Corp; and that Respondents Domain Holdings and Domain Admin, respectively, are the current registrants of the names, are bound by the Internet Domain Service BS Corp registration agreement, and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). A corresponding verification message was received from Dynadot, Inc on the same date in relation to the <handrblok.com> domain name and Respondent Ben.
On May 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2023 by which Respondents could file a Response to the Complaint, via email to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts, and to postmaster@hrbloc.com, postmaster@hrblok.com, postmaster@handrblok.com. Also on May 11, 2023, the Written Notice of the Complaint, notifying Respondents of the email addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts.
Having received no response from Respondents, Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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[s]" 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, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person or entity operating under multiple aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions sets forth factors that are normally considered when a complainant is filed against multiple respondents:
[P]anels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.11 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.
Complainant notes inter alia that the three disputed domain names all incorporate Complainant's H&R BLOCK trademark, with similar misspellings of "block"; that <hrbloc.com> and <hrblok.com> were registered with the same registrar on the same date; and that <hrblok.com> and <handrblok.com> are hosted on the same IP address.
The Panel also notes similarities in the manner in which the domain names are being used; the fact that all three domain names are registered in the names of privacy registration services, with apparently incomplete underlying registration data; and the fact that none of the Respondents have come forward to dispute the allegation that they are one entity acting under multiple aliases, nor to object to the inclusion of all of the domain names in this proceeding. Under the circumstances, the Panel considers it appropriate to treat the disputed domain names as being under the common control of a single person or entity (hereinafter "Respondent"). See, e.g., Henry RAC Holding Corp., dba Henry Repeating Arms Co. v. Gerry Easton / Lucas Harper / aretesteroids / Guide Mail / Matt Rodney / RESTRO ENGOH / CEO / Bryan Maddison / Russell Phillips, FA 2023493 (Forum Jan. 16, 2023) (treating domain names as being under common control in similar circumstances); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Tobias Gottlieb / Anna Veronica / Obeirg Melikssa / Client Care / Web Commerce Communications Ltd., FA 1983230 (Forum Mar. 8, 2022) (same).
A. Complainant
Complainant, together with predecessors in interest and affiliate companies under common ownership and control, has provided tax preparation services since 1955 and is among the largest such providers in the world. Complainant provides its services through approximately 9,000 retail offices, via custom software, and online. Complainant and its predecessors in interest have used the H&R BLOCK mark in connection with these services since at least as early as 1956, and since 1996 have owned and used the domain name <hrblock.com>. Complainant owns various U.S. trademark registrations for H&R BLOCK and related marks and also claims common law rights. Complainant asserts that its H&R BLOCK mark has become famous as a result of longstanding widespread use.
The disputed domain names <hrbloc.com> and <hrblok.com> were registered in June 2005, and the disputed domain name <handrblok.com> was registered in June 2013. The domain names are registered in the names of privacy registration services on behalf of Respondent. The domain names are being used to display pay-per-click links (mostly to tax preparation services), to redirect to Complainant's website through a series of link farms, or to host a website that reports a virus in order to fraudulently collect personal information. Complainant states that Respondent is not commonly known by the domain names and is not licensed or authorized to use Complainant's marks.
Complainant contends on the above grounds that each of the disputed domain names <hrbloc.com>, <hrblok.com>, and <handrblok.com> is confusingly similar to its H&R BLOCK mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are 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."
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names <hrbloc.com>, <hrblok.com>, and <handrblok.com> corresponds to Complainant's registered H&R BLOCK mark, with the space omitted, the ampersand omitted or converted to the word "and," the word "block" misspelled as "bloc" or "blok"; and the ".com" top-level domain appended. These alterations do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., HRB Innovations, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1880758 (Forum Feb. 28, 2020) (finding <hrbbock.com> confusingly similar to H&R BLOCK); HRB Innovations, Inc. v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, D2016-0342 (WIPO Apr. 6, 2016) (finding <hrbloxk.com> confusingly similar to H&R BLOCK); HRB Royalty, Inc. v. Phayze Inc., D2003-1043 (WIPO Mar. 16, 2004) (finding <hrbloc.com> and <hrblok.com> confusingly similar to H & R BLOCK AND DESIGN). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names correspond to Complainant's registered mark without authorization. They are being used to display pay-per-click links, redirect users through link farms, or collect personal information under false pretenses. Such activities do not give rise to rights or legitimate interests under the Policy. See, e.g., HRB Innovations, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, supra (finding lack of rights or interests in similar circumstances); HRB Innovations, Inc. v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used privacy registration services and what the Panel infers to be incomplete and possibly fictitious underlying registration data to register three domain names corresponding to misspellings of Complainant's well-known mark, in clear instances of typosquatting; and is using the domain names to display pay-per-click links, redirect users through link farms, or collect personal information under false pretenses. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., HRB Innovations, Inc. v. Domain Administrator / Fundacion Privacy Services Ltd., FA 1880762 (Forum Mar. 6, 2020) (finding bad faith registration and use in similar circumstances); HRB Innovations, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, supra (same); HRB Innovations, Inc. v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hrbloc.com>, <hrblok.com>, and <handrblok.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 5, 2023
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