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 xiejian of the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2010. On June 18, 2010, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp. a request for registrar verification in connection with the Disputed Domain Name. On June 22, 2010, Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 23, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. In response to a notification by the Center regarding the Registrar contact details, the Complainant filed an amended Complaint on June 23, 2010. The Center verified that the Complaint together with the amended 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 June 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 28, 2010. 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 provides business and financial management software for individuals, small businesses and accounting and tax professionals. The Complainant has been recognized by Fortune Magazine as the number one most admired Software Company in America and one of the 100 best companies to work for in 2006, 2007, 2008 and 2009.
One of the Complainant’s flagship products is its tax software marketed under the TURBOTAX trademark. The Complainant has been using its name, INTUIT, as a trademark since 1984 and the TURBOTAX trademark since before 1984 on its products and services. The Complainant owns various trademark registrations for the INTUIT trademark and TURBOTAX trademark around the world, two of which are:
Jurisdiction Trademark Trademark No. Registration date
United States INTUIT 1821148 February 15, 1994
United States TURBOTAX 1369883 November 12, 1985
The Complainant owns and operates websites under various domain names incorporating the INTUIT and TURBOTAX trademarks including and .
The Disputed Domain Name was registered on March 27, 2010, many years after the trademark registrations for the INTUIT and TURBOTAX trademarks. The Panel visited the website resolved from the Disputed Domain Name and it appears to be a holding website containing links to other websites offering financial and tax products and services that appear to emanate from third parties. These links are referred to as “sponsored listings” on the website. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
(1) The Disputed Domain Name is confusingly similar to the Complainant’s INTUIT and TURBOTAX trademarks. The Disputed Domain Name simply combined the INTUIT and TURBOTAX trademarks in their entirety.
(2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has no legitimate relationship to the Complainant giving rise to any license, permission or authorization for registration or use of the Disputed Domain Name. The Respondent name is Xiejian and is not commonly known by the names “Intuit”, “Turbotax” or “Turbotax-Intuit”.
(3) The Respondent registered and is using the Disputed Domain Name in bad faith. The Respondent’s activities fall into paragraph 4(b)(iv) of the Policy. The Respondent’s only plausible reason to register and use the Disputed Domain Name is to take unfair advantage of the recognition associated with the INTUIT and TURBOTAX trademarks by diverting consumers to the Respondent’s website for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of proceeding
The registration agreement is in Chinese. Therefore, the default language of the proceeding should be Chinese. Nevertheless, having regard to fairness to the parties and procedural cost-efficiency and expedition, the Panel hereby determines under paragraph 11(a) of the Policy that English shall be the language of the proceeding. In coming to this decision, the Panel has taken into account the following:
(1) The Complainant has requested that English be the language of the proceeding;
(2) The Respondent’s website under the Disputed Domain Name is exclusively in fluent English and no Chinese is used at the website. This demonstrates that the Respondent is fully capable of using English as a means of communication and that the Respondent would not be prejudiced by an English-language proceeding;
(3) The Complaint is submitted in English. It would be time-consuming and cost-intensive to require the Complainant to provide a Chinese translation of the Complaint;
(4) The Respondent did not contest the language of the proceeding; and
(5) Under the circumstances, the Panel finds it does not serve any useful purpose or benefit to follow the default language of the registration agreement. 6.2. Discussion
Paragraph 4(a) of the Policy outlines the following matters which this Panel must determine to dispose of the proceeding:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has trademark rights in view of the trademark registrations for TURBOTAX and INTUIT. The Disputed Domain Name incorporates the entirety of the Complainant’s trademarks TURBOTAX and INTUIT. The only difference between the Disputed Domain Name and the Complainant’s trademark is the hyphen character between “turbotax” and “intuit” which serves no purpose other than to separate the words “turbotax” and “intuit” so that they may be recognized as such.
A domain name incorporating a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes may be regarded as confusingly similar to the trademark. This principle has been upheld by many panels over the years (e.g., Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing,WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai,WIPO Case No. D2010-0144).
The Panel is of the view the principle is also applicable in situations where the domain name incorporates two trademarks of the Complainant in their entirety. The panel in Vibram S.p.A. v. Peng Zhen,WIPO Case No. D2010-0952 held that the domain name was confusingly similar to the trademarks VIBRAM and FIVEFINGERS. The facts of the present case fall readily within the reasoning of that case. The absence of any generic word in the Disputed Domain Name and the presence of the hyphen to separate the words “turbotax” and “intuit” make the Disputed Domain Name even more likely to be confusingly similar to the Complainant’s trademarks TURBOTAX and INTUIT.
Therefore, the first limb of paragraph 4(a) is satisfied. B. Rights or Legitimate Interests
A complainant is only required to show a prima facie case that a respondent does not have rights or legitimate interests in a disputed domain name to shift the burden of proof to the respondent. The Complainant is the owner of the TURBOTAX and INTUIT trademarks and has confirmed that it did not grant the Respondent any rights to register or use the Disputed Domain Name. The Respondent is also not commonly known by the Disputed Domain Name. The word “turbotax” appears to be coined and is not an ordinary dictionary word.
The circumstances suggest that the Respondent is well aware of the Complainant’s trademarks and must have more likely than not consciously and deliberately adopted them in the Disputed Domain Name. The Panel concludes that a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name is made out. In the absence of a Response, there is no cogent evidence provided to rebut the prima facie finding.
Therefore, the second limb of paragraph 4(a) is established. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides an example of bad faith registration and use of a domain name:
“by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The reference to “sponsored listings” on the Respondent’s website can only indicate that the Respondent is receiving sponsorship on the basis of the links the Respondent provides on the website. Regardless of whether the sponsorship is financial in nature, such sponsorship must have been intended to generate commercial benefit or gain. The deliberate adoption of trademarks, one of which is a which are coined word, in the Disputed Domain Name would certainly attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of products on the website. It is pertinent that such strong allegations of the Complainant did not elicit any Response from the Respondent, which can only lead to an adverse inference that the Respondent has no cogent alternative explanation.
It is the Panel’s view that the circumstances of the present case fall within the scope of paragraph 4(b)(iv) of the Policy and the Panel holds that the third limb of paragraph 4(a) is also established. 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 Disputed Domain Name be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: August 11, 2010
Full & Egal Universal Law Academy