WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intuit Inc. v. E-Z-P INC, Martin Ellenbogen Case No. D2008-1317 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 E-Z-P INC, Martin Ellenbogen, of Monsey, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2008. On August 29, 2008, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On the same date, R 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 September 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 25, 2008.
The Center appointed William R. Towns, W. Scott Blackmer and Dennis A. Foster as panelists in this matter on October 14, 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. 4. Factual Background
The Complainant is a leading provider of consumer and business financial software and related supplies, including QuickBooks accounting software and related products and services. The Complainant owns a number of United States trademark registrations for the mark QUICKBOOKS, the earliest of which was issued by the United States Patent and Trademark Office (“USPTO”) on September 22, 1992. The Complainant also holds more than 400 domain names incorporating its QUICKBOOKS mark, and operates a website at “” providing information about QUICKBOOKS branded products and services, including QUICKBOOKS checks, deposit slips and other related forms for use with the Complainant's QuickBooks financial software.
The Respondent operates an online business at “” (hereinafter “Respondent's website” or “”). On this website the Respondent offers for sale computer checks and related forms such as deposit slips for use with a number of financial software programs, including the Complainant's QUICKBOOKS financial software. Thus, the Respondent competes directly with the Complainant for the sale of checks and related forms for use with the Complainant's QuickBooks financial software.
The Respondent registered the disputed domain name on March 7, 2000. The Complainant discovered in August 2001 that the Respondent was using the disputed domain name to redirect Internet visitors to the Respondent's website, where the Respondent, without the Complainant's knowledge or consent, was using QUICKBOOKS and images of QuickBooks product packaging to promote the sale of directly competing computer checks and other forms. On August 1, 2001, the Complainant through its legal counsel sent a demand letter to the Respondent, requesting that the Respondent cease all use of the disputed domain name, discontinue the infringing use of the Complainant's QUICKBOOKS marks on the Respondent's website, and transfer the disputed domain name to the Complainant.
The Respondent replied on August 8, 2001, advising that the disputed domain name had been pointed away from its website, and representing that the Respondent would no longer offer its directly competing products as “QuickBooks products”, but would instead describe them as “compatible” with QuickBooks software. The Respondent did not directly acknowledge the Complainant's request for the transfer of the domain name, and the Complainant's counsel sent a follow up demand for the transfer of the domain name on August 17, 2001, to which no reply was received.
In November 2007, the Complainant learned that the Respondent once again had begun using the disputed domain name to redirect Internet traffic to the Respondent's website, and had resumed the practice of referring to its products as “QuickBooks products” as opposed to representing only that such products were compatible with QuickBooks software. The Complainant's counsel on February 7, 2008 renewed the Complainant's demands to the Respondent to cease all use of the disputed domain name and all infringing uses of the Complainant's QUICKBOOKS mark, and to transfer the disputed domain name to the Complainant.
The Complainant sent a follow up demand letter to the Respondent on February 19, 2008, after receiving no reply to its letter of February 7, 2008. The Respondent eventually replied on February 26, 2008, expressing surprise that the disputed domain name was again pointing to the Respondent's website and advising that the situation had been corrected. The Respondent further indicated that the requested changes regarding the use of the Complainant's QUICKBOOKS marks would be made. Again, however, the Respondent ignored the Complainant's transfer request. After a third letter sent by the Complainant's counsel on March 25, 2008, specifically demanding the transfer of the disputed domain name did not elicit any response, the Complainant initiated these proceedings.
The disputed domain name does not currently resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its QUICKBOOKS mark, in which the Complainant asserts long-standing rights from registration and use dating back to 1992. The Complainant alleges that the Respondent, which competes directly with the Complainant in the sale of checks and related forms for use with QuickBooks financial software, was not authorized to appropriate the Complainant's QUICKBOOKS mark for use as a domain name or otherwise to use the QUICKBOOKS mark or images of the QuickBooks product packaging on its website. According to the Complainant, the Respondent is not commonly known by the domain name, and the Complainant maintains that the Respondent intentionally registered the disputed domain name to take unfair advantage of and profit from the good will associated with the Complainant's mark. For all of the foregoing reasons, the Complainant concludes that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant further contends in light of the foregoing circumstances that the Respondent registered and is using the disputed domain name in bad faith in an intentional attempt to attract Internet traffic to its website for commercial gain, by creating a likelihood of confusion with the Complainant's QUICKBOOKS mark as to the source, sponsorship, affiliation or endorsement of the directly competing computer checks and related forms advertised and sold on the Respondent's website. In addition, the Complainant alleges that the Respondent purposefully registered the disputed domain name to disrupt the Complainant's business, and would infer bad faith from the Respondent's passive holding of the disputed domain name.1 B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's QUICKBOOKS mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr.,WIPO Case No. D2000-1525. In this case the disputed domain name is confusingly similar because it incorporates the Complainant's mark in its entirety. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra. The Respondent's addition of the descriptive word “checks” does not serve to dispel the confusing similarity, given the Respondent's use of the disputed domain name in connection with the sale of computer checks and related forms competing directly with the same products sold by the Complainant under its QUICKBOOKS mark. See, e.g., Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant's mark or to appropriate the mark for use with domain names. The disputed domain name has been used by the Respondent to divert Internet users to a website offering products that compete directly with those of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept as true all reasonable inferences and allegations included in the Complaint. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.2 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy.
The Respondent competes directly with the Complainant in the sale of checks and related forms for use with the Complainant's QUICKBOOKS financial software. The Complainant uses its QUICKBOOKS mark in connection with its own checks and related forms. The Respondent has used the disputed domain name, which incorporates the Complainant's mark in its entirety, to drive Internet traffic to the “” website, where checks and related forms competing directly with those of the Complainant are offered for sale. The record reflects instances in which the Respondent's competing products have been promoted and advertised as “Quickbooks™ checks”, “Quickbooks™ printable deposit slips”, and Quickbook™ forms”.3 The Respondent's website contained no disclaimer regarding any affiliation with the Complainant.
The Respondent's registration and use of a domain name that is confusingly similar to the Complainant's mark to sell directly competing products does not constitute use of the domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946. See also Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd. WIPO Case No. D2004-0088. There is no evidence that the Respondent has ever been commonly known by the disputed domain name, and the Respondent plainly cannot assert in the circumstances of this case that a noncommercial use of the domain name is being made under paragraph 4(c)(iii).
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
In this case, the totality of circumstances demonstrates the Respondent's bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy. The circumstances in this case decisively indicate that the Respondent was well aware of the Complainant and intentionally appropriated the Complainant's QUICKBOOKS mark as a domain name. Having acquired a domain name incorporating the Complainant's mark, the Respondent then used it to divert Internet users seeking information about the Complainant and its products to the Respondent's website, where directly competing products were sold, without any disclaimer, and under misleading headings likely to cause confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the products advertised on the Respondent's website. With respect to the disputed domain name itself, no possible claim of fair use can be asserted under the circumstances of this case. To the contrary, the conclusion is unavoidable that the Respondent registered the disputed domain name with the bad faith intent to profit from and exploit the Complainant's mark. See, e.g., Microsoft Corporation v. Momm Amed la,WIPO Case No. D2001-1454; National Association for Stock Car Auto Racing, Inc. v. Steven R. Schaklette,WIPO Case No. D2001-1350.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 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 name be transferred to the Complainant.
William R. Towns
Presiding Panelist
W. Scott Blackmer
Panelist
Dennis A. Foster
Panelist
Date: October 28, 2008
1 The Complaint also anticipated the possible assertion of a laches defense, which did not materialize as the Respondent has failed to appear. Although laches has typically not been applied in UDRP Proceedings, the record as a whole strongly militates against a conclusion that the Complaint condoned or approved the Respondent's registration and use of the disputed domain name. See Tom Cruise v. Network Operations Center/Alberta Hot Rods,WIPO Case No. D2006-0560.
2 Some panels have held that a respondent's lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent's failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403.
3 This usage is evidenced in screenshots of the “” website captured on November 29, 2007.
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