WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intuit Inc. v. Tomasz Luto and Tomasz Kraus
Case No. D2008-0421
1. The Parties
The Complainant is Intuit Inc. of United States of America, represented by Fenwick & West LLP, United States of America.
The Respondents are Tomasz Luto and Tomasz Kraus of Poland.
2. The Domain Names and Registrars
The disputed domain name, (the “First Domain Name”), is registered with GoD, Inc. (the “First Registrar”). The disputed domain name, (the “Second Domain Name) is registered with OnlineNic, Inc. d/b/a China-C (the “Second Registrar”). Together, the First and Second Domain Names are hereinafter referred to as the “Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2008. On March 19, 2008, the Center transmitted by email to the First and Second Registrars a request for registrar verification in connection with the Domain Names. On March 19, 2008, the First Registrar transmitted by email to the Center its verification response confirming that the Respondent, Tomasz Kraus, was listed as the registrant of the First Domain Name and providing the contact details. On March 20, 2008, the Second Registrar transmitted by email to the Center its verification response confirming that the Respondent, Tomasz Luto was listed as the registrant of the Second Domain Name and providing the contact details.
Subject to an outstanding issue as to the identity of the Respondents, which is dealt with below, 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 Respondents of the Complaint, and the proceedings commenced on March 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2008. Neither of the Respondents submitted a response. Accordingly, the Center notified the Respondents’ default on April 18, 2008.
The Center appointed Tony Willoughby, Michelle Brownlee and Marcin Krajewski as panelists in this matter on June 3, 2008. The Panel finds that it was properly constituted. 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 Complaint concerns two domain names. Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. However, the Domain Names are registered in different names. The First Domain Name is registered in the name of Tomasz Kraus and the Second Domain Name is registered in the name of Tomasz Luto. The Complainant contends that Tomasz Kraus and Tomasz Luto are either one and the same person or are so closely associated that for the purposes of this administrative proceeding they should be treated as one.
The Center concluded that the Complainant had made out a prima facie case on this point sufficient for the Center to allow the complaint through as a single complaint, but the Center drew to the Complainant’s attention that ultimately this is a matter for determination by the Panel. The Center also informed the Complainant that both Respondents would be notified of the Complaint.
In email correspondence, produced by the Complainant, between the Complainant and the Respondent, Tomasz Kraus, over various domain names (including the First Domain Name) Tomasz Kraus denies that the Second Domain Name has anything to do with him.
The Panel has reviewed the evidence put forward by the Complainant in support of its contention in this regard. It includes the following:
(a) both Respondents have Tomasz as a first name and are Polish.
(b) both the Domain Names feature the Complainant’s primary trade mark.
(c) the websites to which the Domain Names were connected were both hosted by the same web hosting company, ThePlanet of Houston, Texas, United States of America, and both offer tax support services, which are primarily US-orientated.
(d) when the Complainant wrote to ThePlanet to have the websites taken down, both of the Domain Names were re-directed to other sites, which, while ostensibly separately owned and operated, nonetheless featured embedded links linking the two sites.
The fact that both Respondents are Polish and share a first name is of itself of no significance. The fact that they are both in the same line of business, both operate websites targeting specifically the business area in which the Complainant operates and both use the same web hosting company in Houston, Texas is much more persuasive. The Complainant’s contention regarding the embedded links, linking the sites of the Respondents, if correct, would settle the issue.
The Complainant has exhibited print-ups of the webpages in question showing the links in question, each of which is represented by the word TurboTax.
The Panel has visited the sites in question and has been able to verify that not only do those links perform as the Complainant contends, but that in the course of redirecting from one site to the other, the Domain Names show in the browser for a split second.
The Complainant has demonstrated by a preponderance of the evidence that Tomasz Kraus and Tomasz Luto are either one and the same person or are so closely associated that for the purposes of this administrative proceeding they should be treated as one. The Panel holds that it is appropriate that this Complaint should be treated as a single complaint.
4. Factual Background
The Complainant is a provider of business and financial management software. One of its major products is a tax preparation software product branded TURBOTAX.
The Complainant is the registered proprietor of a large number of trade mark registrations of or including the name TURBOTAX, the earliest of which is US Registration No. 1,369,883 dated November 12, 1985 in class 9 for computer programs.
Similarly, the Complainant is the proprietor of a large number of domain name registrations of or including the name TURBOTAX, one of which is , which was registered on September 5, 2003.
The First Domain Name was registered on July 31, 2006 and the Second Domain Name was registered on March 1, 2007.
The Domain Names have been (and still are) connected to websites offering tax software and related products and services. The sites feature advertising links to other sites, some of which relate to the Complainant’s products and services and some of which relate to competitors’ products and services. Currently, the First Domain Name resolves to a site connected to the domain name, , registered to Respondent Tomasz Kraus and the Second Domain Name resolves to a site connected to the domain name, , registered to Respondent Tomasz Luto.
The websites connected to the Domain Name registered to Respondent Tomasz Luto feature a disclaimer reading “This site is not authorized, sponsored by, or affiliated with Intuit, Inc. TurboTax is registered trade mark of Intuit, Inc.”
In January and February this year, the Complainant entered into email correspondence with Respondent Tomasz Kraus, seeking his agreement to cease use of the Domain Names (amongst others). In the course of the correspondence Tomasz Kraus denied having anything to do with the Second Domain Name. The correspondence ended when Tomasz Kraus failed to respond to the Complainant’s emails.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to a trade mark or service mark in which it has rights.
The Complainant further contends that the Respondents have no rights or legitimate interests in respect of the Domain Names and points in support of this contention to the facts and matters set out in sections 3 and 4 above.
Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith within the meaning of paragraphs 4(b)(ii) and 4(b)(iv) of the Policy, pointing to an earlierWIPO Case No. D2006-1547 to demonstrate the existence of a pattern for paragraph 4(b)(ii) and pointing to the pay-per-click advertising links on the Respondents’ websites to establish the commercial gain necessary for paragraph 4(b)(iv).
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
For the reasons given in section 3 above, the Panel is satisfied that the Respondents are either one and the same individual or are two individuals so closely associated with one another that they ought properly to be treated as one for the purposes of this administrative proceeding.
B. Identical or Confusingly Similar
The most prominent element of each of the Domain Names is the Complainant’s registered trade mark, TURBOTAX. The remaining elements of the Domain Names are descriptive/generic and non-distinctive.
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The content of the Respondents’ websites makes it clear that the references therein to TURBOTAX are intended to be taken as references to the Complainant’s trade mark. Indeed, the websites of one of the Respondents include a disclaimer acknowledging that TURBOTAX is a trade mark of the Complainant.
The Complainant asserts (and the Panel accepts) that the Respondents’ usage of the Complainant’s trade mark is unauthorized.
Paragraph 4(c) of the Policy sets out examples of what shall constitute rights and legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy. The examples are (i) where the respondent is using or preparing to use the domain name in issue for a bona fide offering of goods or services, (ii) where the Respondent is commonly known by the domain name in question and (iii) where the Respondent is making a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to mislead consumers or tarnish the complainant’s trade mark.
The Panel notes that the Respondents’ websites promote not only the Complainant’s products, but also the products of the Complainant’s competitors. In such circumstances, where the Respondents’ usage of the Complainant’s trade mark is unauthorized, the Respondents’ business offering cannot be said to be a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondents do not appear to have any interest in the Domain Names, other than as vehicles to attract Internet visitors to their commercial sites. The Respondents are not known by the Domain Names and, on the face of it, there does not appear to be anything legitimate or fair about making unauthorized use of a third party’s trade mark to attract Internet visitors to one’s sites in order to promote, inter alia, the goods and services of the trade mark owner’s competitors.
The Panel is satisfied that the Complainant has made out a strong prima facie case under this element of the Policy and therefore that the Respondents have a case to answer.
The Respondents have not responded. In those circumstances the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of what shall constitute bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy.
The Complainant contends that the examples set out in sub-paragraphs (ii) and (iv) are applicable. The relevant parts of paragraph 4(b) of the Policy read as follows:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
While a consequence of the Respondents having registered the Domain Names has been that the Complainant has been prevented from registering them, the Panel is not satisfied that the Respondents registered the Domain Names for that purpose. There is no need therefore for the Panel to assess whether the Respondents have been engaged in a pattern of such conduct.
The Panel is in no doubt that the Respondents registered the Domain Names for the purpose for which they have used them, namely to attract Internet users to the Respondents’ websites with a view to generating income from the goods and services promoted on those websites. The websites are clearly commercial sites through which the Respondents will be deriving a commercial benefit either directly from some of the goods and services promoted or, as the Complainant asserts, from referral or pay-per-click revenue derived from the advertising links.
The attractive force inherent in the Domain Names is the Complainant’s trade mark. In using the Complainant’s trade mark in this way, the Respondents are hoping and anticipating that they will attract to their sites Internet users looking for information on the Complainant’s goods and services. The Panel is satisfied that a significant proportion of those visitors will be expecting to visit a site of or authorized by the Complainant. That this was known to the Respondents to be a likely result is evident from the fact that certain of the Respondents’ websites have featured the following disclaimer:
“This site is not authorized, sponsored by, or affiliated with Intuit, Inc. TurboTax is registered trade mark of Intuit, Inc.”
The disclaimer is of no assistance to the Respondents. It was not featured on all the websites; it was not the first thing that a visitor to the relevant sites would see; more fundamentally, however, the diversion of the visitor will already have occurred as soon as the visitor elected to visit the website in question and the Respondents will have achieved the desired business opportunity, which might well involve the visitor being diverted to a product of one of the Complainant’s competitors. The fact that the visitor may subsequently appreciate that the site in question is not a site of the Complainant is of no consequence.
Thus, to use the wording of paragraph 4(b)(iv) of the Policy, by adopting and using the Domain Names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their web sites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of their websites or of a product or service on their websites.
The Panel finds that the Domain names were registered and are being used in bad faith within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
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 Names, and , be transferred to the Complainant.
Tony Willoughby
Presiding Panelist
Michelle Brownlee
Panelist
Marcin Krajewski
Panelist
Dated: June 17, 2008
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