WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intuit Inc. v. Digi Real Estate Foundation
Case No. D2007-0681
1. The Parties
The Complainant is Intuit Inc. of Mountain View, California, United States of America, represented by Fenwick & West, LLP, United States of America.
The Respondent is Digi Real Estate Foundation of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2007. On May 10, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 11, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2007.
The Center appointed Mr. J. Christopher Thomas, QC, Mr. Mark Partridge and Mr. Marino Porzio as panelists in this matter on July 16, 2007. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted.
4. Factual Background
The Complainant is a provider of business and financial management software for small businesses, accounting and tax professionals, and consumers. It has used its INTUIT trademark in connection with personal and small business finance software products and related services since 1984, and has used its QUICKBOOKS trademark in relation to accounting and computer software and related services since 1992.
The Complainant owns nineteen (19) trade or services marks for INTUIT and four (4) trade or service marks for QUICKBOOKS. Copies of the registration certificates for these United States registrations were attached as Annex D to the Complaint.
In addition, the Complainant owns a large number of domain names that incorporate the INTUIT or QUICKBOOKS marks. Copies of the domain names listed in the Complaint were attached as Annex F to the Complaint. For the purposes of its Complaint, these domain names were referred to collectively as the “INTUIT and QUICKBOOKS Domain Names.”
The disputed domain name resolves to a webpage with links to companies that offer competitive financial and accounting software for consumers, businesses, and professionals. Based on the web servers provided on the Whois record, the Respondent is using a pay-per-click service from Marchex, Inc., whereby it receives revenues based on the number of clicks on the links provided on the site.
Annexed to the Complaint were copies of the “www.” site and corresponding links on the site as well as copies of the Marchex, Inc. site describing its pay-per-click services employed by the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant contended that the disputed domain name is confusingly similar to its INTUIT and QUICKBOOKS marks and domain names because: (1) the Respondent has simply combined the Complainant’s INTUIT and QUICKBOOKS marks in the domain name; (2) consumers associate those marks with the Complainant; and (3) the addition of a top-level domain does not alleviate confusion.
More particularly, with respect to the first argument, the combination of the two marks in the disputed domain name was said to be confusingly similar to the Complainant’s marks. Referring to various cases where a company’s entire trademark has been combined with a non-distinctive and descriptive matter such as gTLDs, and the resulting name has been found to be confusingly similar, the Complaint contended that the full incorporation of its two marks makes the resulting domain name confusingly similar to its “family” of mark and domain names.
In addition, the Complainant asserted that consumers associate the two marks that have been combined in the disputed domain name mainly with the Complainant. It referred to Google searches for QuickBooks, Intuit and various combinations of the two marks and showed that the majority of references were to the Complainant and its products and services. By contrast, searches for “Digi Real Estate Foundation” and QuickBooks or Intuit did not result in any relevant hits indicating that Digi Real Estate Foundation is known for any of those marks for products and services.
Finally, the addition of the ‘.com’ top-level domain does not alleviate any confusion between the disputed domain name and the Complainant’s INTUIT and QUICKBOOKS marks and domain names. On well-established authority, the addition of the does not affect an otherwise confusingly similar domain name.
With respect to the second element of the Complaint, the Complainant asserted that: (1) the Respondent had no rights or legitimate interest in the disputed domain name because it had no legitimate relationship to the Complainant which would allow it to use the Complainant’s marks; (2) the Respondent was not commonly known by the names “Intuitquickbooks” or “I,” ‘Intuit,” or “Quickbooks”; (3) the Respondent owns no trademark applications or registrations for the domain name; (4) the Respondent is not using the domain name in connection with a bona fide offering of goods or services or in connection with demonstrable preparations to offer such goods or services; and (6) the Respondent is not making a legitimate non-commercial or fair use of the domain name.
In support of this argument, the main contention was that the Respondent’s only plausible reason for registering and using the disputed domain name is to take unfair advantage of the recognition associated with the Complainant’s INTUIT and QUICKBOOKS marks. Relying on the fact that the well-known marks are used in connection with financial and accounting software, the Respondent’s only purpose in registering and using the disputed domain name is to divert consumers and potential consumers away from the Complainant’s website to its own website. The domain name misdirects visitors to a website containing links to companies that offer products and services which compete with those provided by the Complainant. This is not a legitimate non-commercial use. The Respondent provides no commentary or comparative analysis regarding the Complainant’s products and services in relation to those provided by other companies and is not otherwise using the mark in any manner that would be considered a fair use under applicable trademark laws. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name because its registration and use is not a legitimate non-commercial one.
With respect to the third element, the Complainant contended that the Respondent has registered and is using the domain name in bad faith because: (1) it registered the disputed domain name despite its actual or constructive notice of the Complainant’s rights to the marks; (2) the domain name fully incorporates the Complainant’s marks without authorization; (3) the Respondent’s registration of the domain name prevents the Complainant from registering the same domain name in order to properly forward users to the Complainant’s actual website; (4) the Respondent uses the domain name solely for the purpose of disrupting the Complainant’s business; (5) the Respondent uses the Complainant’s marks to divert visitors to its website for commercial gain; and (6) the Respondent has engaged in a pattern of registering domain names that are confusingly similar to other parties’ marks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested domain names, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the present case, the Panel is of the view that the record contains conclusive evidence of each of the three requisite elements.
A. Identical or Confusingly Similar
The domain name is confusingly similar to the Complainant’s trademarks. The domain name is simply a combination of the Complainant’s marks and is therefore plainly confusingly similar to those marks. Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no legitimate interest in any domain name, trademark or trade name incorporating or confusingly similar to the INTUIT and QUICKBOOK trademarks. It further asserts that the Respondent has not used the domain name in connection with a bona fide offering of goods or services, owns no trademark registrations for the domain name or any portion thereof, and has not been commonly known by the domain name or any portion thereof. On the evidence, there is no question whatsoever that the Complainant has satisfied Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel also has no difficulty concluding that the domain name has been registered and is being used in bad faith. A review of the evidence filed in respect to the operation of the Respondent’s website reveals that the Respondent has no legitimate right or business interest in any INTUIT or QUICKBOOK-related domain name. The Respondent’s only conceivable business purposes in registering the domain name was to profit from the diversion of Internet users to a website unrelated to Intuit. The Panel further agrees with the Complainant that the Respondent’s website is intended to deceive innocent users and lead them to sponsored links featuring services by companies that have no affiliation with Intuit and in fact are its direct competitors. In the Panel’s view, the Respondent is employing the site in bad faith to lure Internet users and divert them to other commercial sites for its own commercial gain by use of a domain name that is similar to the Complainant’s marks. Policy, paragraph 4(a)(iii) is satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Presiding Panelist
Mark Partridge
Panelist
Marino Porzio
Panelist
Dated: July 30, 2007
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