WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intuit Inc. v. Pioneer Enterprises Ltd. Case No. D2009-1439 1. The Parties
The Complainant is Intuit Inc. of California, United States of America, represented by Fenwick & West, LLP of United States of America (“US”).
The Respondent is Pioneer Enterprises Ltd of Antigua and Barbuda. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2009. On October 26, 2009, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On October 27, 2009, F 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” or “UDRP”), 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 October 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2009.
The Center appointed Stefan Abel as the sole panelist in this matter on November 23, 2009. The Panel finds that it was properly constituted. 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 US company providing business and financial management software for individuals as well as for small businesses and accounting and tax professionals. One of Complainant's major products is a tax software called “Turbotax” that allows individuals and small business owners to prepare and file income taxes and small business taxes. The Complainant promotes its services and products on a large number of web sites at different domain names which contain the element “intuit” or “turbotax” in combination with different top level domains and/or other elements.
The Complainant is the registered owner of numerous US trademarks consisting of the word “INTUIT” as well as of US-trademarks consisting of the word “TURBOTAX”. Complainant uses those trademarks to designate its products and services since 1984. Further, Complainant has registered trademarks using the terms “intuit” or “turbotax” in combination with other elements. Further, “Iintuit” is Complainant's company name.
The Respondent's website at the disputed domain name contains a large number of links, in particular links to websites in English language offering or promoting tax preparation software and financial services. 5. Parties' Contentions A. Complainant
In summary, the Complainant's contentions are as follows:
The disputed domain name is confusingly similar to the Complainant's INTUIT and TURBOTAX marks as Respondent combined the entirety of those marks together in the disputed domain name. The top level domain added to this combination does not affect the similarity as it is nondistinctive.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no rights or legitimate relationship to Complainant giving rise to any license, permission or authorization for use of the domain name and the Respondent is not commonly known by the Intuit, Turbotax or Turbotaxintuit names. As the Respondent uses the disputed domain name for a parking website offering links to third party websites that offer competing products and services (tax preparation software) the Respondent does not provide a bona fide offering of services nor is this considered to be a legitimate non-commercial or fair use.
The Complainant argues that the disputed domain name was initially registered by an entity called “Bridge Port Enterprises Ltd”, and that the Complainant sent a warning letter to Bridge Port Enterprises on September 29, 2009. Later, on October 16, 2009, the Complainant has become aware of the fact that the Respondent is the registered owner of the disputed domain name (as indicated by a WhoIs record). Therefore, the Respondent must have acquired the disputed domain name between September 29, 2009 and October 16, 2009.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The domain name resolves to a parking web site with links to third party websites offering products and services competing with the Complainant. The Respondent has registered and is using the disputed domain name to take unfair advantage of the recognition associated with the Complainant and its marks by diverting consumers looking for the Complainant's products and services. Therefore the Respondent has registered and is using the domain in bad faith, to attract, for commercial gain, internet users by creating a likelihood of confusion with the Complainant's INTUIT and TURBOTAX marks. As Respondent had already registered other domain names that were confusingly similar to other parties' marks, Respondent acts in a pattern of registering domain names confusingly similar to trademarks to which Respondent has no legitimate right and therefore acts in bad faith. In addition, the Complainant assumes that the former owner of the domain name at issue, Bride Port Enterprises, is the “alter ego” of the Respondent. As this Bridge Port Enterprises also has a history of registering confusingly similar domains, the Complainant finds that this is evidence for a bad faith registration and use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy provides for transfer of the domain name if the Complainant establishes each of the following elements set out in paragraph 4 (a) (i) to (iii) of the Policy.
- The Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out these circumstances which, in particular but without limitation, shall be evidence of registration and use of the domain name in bad faith. A. Identical or Confusingly Similar
The contested domain name contains a combination of the registered trademark TURBOTAX, owned by the Complainant, and of the Complainant's trademark and corporate name INTUIT. Although the combination of the two signs “turbotaxintuit” is not registered or used as a trademark, this Panel finds that the disputed domain name must be considered confusingly similar both to the trademark TURBOTAX and to the trademark and corporate name INTUIT.
As a rule, when assessing the similarity of a domain name to a trademark, the overall impression of the domain name has to be considered. However, when composed by two trademarks and/or a trademark and a corporate name, it is not excluded that these elements may have a distinctive character within the domain name. Correspondingly, confusing similarity to distinctive elements of the trademarks may suffice.
The Panel finds that this applies also in the present case. The disputed domain name combines Complainant's trademark and corporate name (INTUIT) with another element (TURBOTAX) - which is also one of Complainant's registered trademarks without any further element that would prohibit Internet users to perceive these marks of the Complainant in the domain name. Internet users will recognize the company name (INTUIT) which is used identically in the domain name. This leads Internet users to the conclusion that there is a commercial link between the registered owner of the domain name and the Complainant. This perception is enforced as the second element (TURBOTAX) is identical with the Complainant's other trademarks that designate Complainant's most important products.
This finding is consistent with previous panel decisions which have found that the combination of two trademarks in a domain name can, under certain circumstances (see A. P. Møller v. Web Society,WIPO Case No. D2000-0135; Audi AG v. Hans Wolf, WIPO Case No. D2001-0148; Saab Automobile AB et al. v. Joakim Nordberg, WIPO Case No. D2000-1761), cause a likelihood of confusion, as both elements of such domain name, and their combination, can be understood as a reference to a complainant indicating the source and origin of the products and services at issue (see also Société des Produits Nestle SA v. Stuart Cook, WIPO Case-No. D2002-0118). B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its trademarks or to register the disputed domain name.
The disputed domain name does not have any apparent generic or descriptive meaning in English (which is the language of the website presently offering links to third parties' products and services).
The term “turbotaxintuit” is not used as a designation for a person, company, services or products on the website of the disputed domain name.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The burden of submitting evidence therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in that domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent's default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy. It is often an impossible task for a complainant to prove a negative that is primarily within the knowledge of a respondent such as lack of rights or legitimate interests in domain name. Producing evidence that the respondent prima facie has no rights or legitimate interests in the domain name must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) of the Policy if the respondent fails to rebut such prima facie case. This finding is consistent with the consensus in previous WIPO UDRP decisions (see e.g. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; AXA S.A. v. P.A. van der Wees, WIPO Case No. D2009-0206). C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
The Panel finds that, by using the disputed domain name for a set of pay-per-click links to commercial websites for the promotion of services related to tax preparation and financial services of third parties, directly competing with the Complainant, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's INTUIT company name and trademarks as well as to Complainant's TURBOTAX trademark, as to source, sponsorship and affiliation of the website (paragraph 4(b)(iv) of the Policy).
The disputed domain name combines the Complainant's two trademarks. In addition to that, the Respondent's website provides links to tax preparation and related services and information. Internet users are therefore likely to get the idea that the Respondent's site at the disputed domain name is an official site of the Complainant, sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion will attract more customers to the site at the disputed domain name which will most likely result in commercial gain as the Respondent's site provides links to numerous commercial websites.
When assessing whether the Respondent has registered the domain name in bad faith, it has to be taken into account that the domain name has been registered initially by a third party and that Respondent has acquired the domain name between September 29, 2009 and October 16, 2009, only (as supported by the record). Paragraph 4(b)(i) UDR provides that acquiring a domain name in bad faith can also fulfil the requirement set out in paragraph 4(a)(iii) UDRP. Therefore, it has to be assessed whether the Respondent acquired the domain in bad faith. The Panel finds that this requirement is met as the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have acquired the disputed domain name without having the Complainant and its trademarks in mind. The Respondent's intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious considering that the domain name purely consists of two different trademarks owned by the Complainant and that no rights or legitimate interests in using the domain name are apparent. 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.
Stefan Abel
Sole Panelist
Dated: December 7, 2009
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