Complainant is Intuit Inc. of California, United States of America, represented by Fenwick & West, LLP, United States of America.
Respondent is Moniker Privacy Services, Registrant [2828726] of United States of America/ Charlie Kalopungi of Seychelles. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2010. On July 16, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On July 16, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on July 22, 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 Respondent of the Complaint, and the proceedings commenced on July 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 13, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on August 24, 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
Complainant is a leading provider of business and financial management software for individuals, small businesses, and accounting and tax professionals. Its products and services are widely used by people to manage their personal and small business finances. Complainant has been recognized by Fortune Magazine as the number one most admired software company in America for the years 2006, 2007, 2008, and 2009. Fortune Magazine has also recognized Complainant as one of the 100 best companies to work for in 2006, 2007, 2008, and 2009. Complainant has used its INTUIT trademark in connection with its products and services since 1984, and has expended significant resources in developing public recognition and goodwill in its INTUIT and INTUIT-branded products and services.
Complainant is the owner of over 40 trademark registrations and applications in the United States of America for the trademark INTUIT or INTUIT in combination or design format. Complainant’s earliest United States (U.S.) trademark registration for INTUIT is Registration No. 1,821,148 registered February 15, 1994 on the Principal Register in relation to: “Computer software for use in the field of personal and business finance and accounting and user manuals for use therewith all sold as a unit.” The trademark has a first use claim date of January 27, 1984 and a first use in commerce claim date of February 17, 1984.
Complainant is also the registered owner of over forty domain name registrations for or including “intuit”. The domain name was created in February 1994.
The disputed domain name was created on June 21, 2010. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant states that as found in section 4 above it is the owner of many trademark registrations in the United States for or including the trademark INTUIT registered in relation to computer software for use in the field of personal and business finance and accounting and related financial software. Complainant further states that the trademark INTUIT has been widely used in the United States of America commencing in 1984 and referred to in publications and online and is well-known in relation to the goods and services for which it is registered and used.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s registered trademarks for or including INTUIT as the disputed domain name includes the whole of Complainant’s trademark INTUIT. See, e.g, PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (a domain name is "nearly identical or confusingly similar" to a complainant's mark when it "fully incorporate[s] said mark"; holding , , and other domains confusingly similar to complainant's PEPSI mark).
Complainant further submits that Respondent may not avoid likely confusion by simply adding a descriptive or generic term, such as "websites," to Complainant's mark as it is well established that the addition of a descriptive or generic term to a mark does nothing to change an otherwise identical or confusingly similar domain name. See, e.g., Educational Testing Service v. ESL Pro Systems, Ltd., WIPO Case No. D2006-0245 ( , , and held confusingly similar to complainant's TOEFL and TOEIC marks because generic words do not avoid confusing similarity); PRL USA Holdings, Inc. v. Unasi Management Inc.,WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks).
Complainant further states that Respondent's use of Complainant's INTUIT trademark and the descriptive or generic term "websites" may mislead Internet users into believing that the disputed domain name would resolve to a website that provides Complainant's INTUIT products. Visitors to Respondent's website are, however, presented with advertisements to third party websites that offer competitive products and services. As such, the disputed domain name is confusingly similar to Complainant's INTUIT trademark. A.2. No Rights or Legitimate Interests in respect of the Domain Name
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name as it has no legitimate relationship to Complainant giving rise to any license, permission, or authorization for registration or use of the disputed domain name.
Complainant submits that Respondent is an individual by the name of Charlie Kalopungi, who is not commonly known by the “Intuit” or “websitesintuit” names and who owns no relevant trademark applications or registrations for them. See The Braun Corporation v. Wayne Loney, NAF Claim No. 699652 (concluding that the respondent had no rights or legitimate interests in the disputed domain names because it was not commonly known by the disputed domain names and the complainant had not authorized the respondent to register a domain name containing its registered mark). See also Tercent Inc. v. Lee Yi, NAF Claim No. 139720 (finding that the WhoIs information and its failure to imply that respondent is commonly known by the disputed domain name is a factor in determining whether respondent has any rights or legitimate interests in the dispute domain name); Gallup Inc. v. Amish Country Store, NAF Claim No. 96209 (finding that the respondent has no rights in a domain name when it is not known by the mark).
Complainant further submits that Respondent is simply resolving the disputed domain name to a website that provides linked advertisements to third party websites that offer financial products and services competitive to Complainant's INTUIT-branded products and services. Respondent's use of a confusingly similar domain name to divert traffic to its website for this purpose is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name. See, e.g., American Century Proprietary Holdings, Inc. v. Travis Martin, NAF Claim No. 1262486 (holding no rights or legitimate interests where a domain name resolves to a parked website and respondent presumably generates click-through fees from such use); Genzyme Corporation v. Keyword Marketing, Inc., NAF Claim No. 1007979 (holding no rights or legitimate interests where domain name resolves to a pay-per-click website featuring sponsored links to various commercial websites). Respondent's only plausible reason to register and use the disputed domain name is to take unfair advantage of the recognition associated with Complainant's INTUIT trademark by diverting consumers from Complainant's website to its website, where Respondent presumably benefits from the confusion and diversion by receiving pay-per-click commissions. A.3. Registration in Bad Faith
Complainant states that as found in section 4 above it is the owner of many trademark registrations in the United States for or including the trademark INTUIT registered in relation to computer software for use in the field of personal and business finance and accounting and related financial software. Complainant further states that the trademark INTUIT has been widely used in the United States of America commencing in 1984 and referred to in publications and online and is well-known in relation to the goods and services for which it is registered and used. Complainant submits that the disputed domain name consists of Complainant’s well known trademark INTUIT, registered more than 20 years prior to registration of the disputed domain name, combined with the descriptive term “websites”. The combination of Complainant’s well known trademark INTUIT combined with a descriptive term “websites” in the disputed domain name clearly suggests that the disputed domain name was registered with prior knowledge of Complainant’s trademark rights in the trademark INTUIT. The fact that the disputed domain name is used in association with products and services identical or similar to the products and services associated with Complainant’s registrations supports the conclusion that the disputed domain name was registered in bad faith. A.4. Use in Bad Faith
Complainant submits that Respondent's activities fall squarely into paragraph 4(b)(iv) of the Policy as Respondent has set up the disputed domain name to resolve to a website featuring linked advertisements to third party websites that offer products and services competitive to Complainant's INTUIT-branded products and services. See, e.g., Google Inc. v. Forum LLC, NAF Claim No. 1053323 (finding bad faith registration and use where resolves to a commercial search engine website generating click-through advertising fees); REO Speedwagon, Inc. v. Domain Administrator, NAF Claim No. 910799 (bad faith use and registration found where the domain name was used to attract Internet users to generate per click revenue); National Association of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387 (panel found bad faith use because of respondent's use of click-through advertising on the website at the disputed domain name.).
Complainant submits that Respondent's only plausible reason to register and use the disputed domain name is to take unfair advantage of the recognition associated with Complainant's INTUIT mark by diverting consumers looking for Complainant's INTUIT branded products and services from Complainant's website to Respondent's website, where it presumably benefits from the confusion and diversion by receiving pay-per-click commissions. Complainant submits that there is no question that Respondent has registered and is using the disputed domain name in bad faith, to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's INTUIT trademark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of numerous registered trademarks for and including INTUIT registered on the Principal Register in the United States in relation to the goods and services described in section 4 above. Complainant’s registered trademarks were in use and registered many years prior to the date of registration of the disputed domain name on June 21, 2010.
The disputed domain name incorporates the entirety of Complainant’s trademark INTUIT. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (a domain name is "nearly identical or confusingly similar" to a complainant's mark when it "fully incorporate[s] said mark"; holding , , and other domains confusingly similar to complainant's PEPSI mark).
The disputed domain name adds the descriptive term “websites” to Complainant’s trademark INTUIT. Respondent may not avoid likely confusion by simply adding a descriptive or generic term, such as "websites" to Complainant's trademark. Many UDRP decisions have held that the addition of a descriptive or generic term to a trademark does nothing to change an otherwise identical or confusingly similar domain name. See, e.g., Educational Testing Service v. ESL Pro Systems, Ltd., WIPO Case No. D2006-0245 (, , and held confusingly similar to complainant's TOEFL and TOEIC marks because generic words do not avoid confusing similarity).
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademark INTUIT. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark or any variation confusingly similar thereto.
The disputed domain name as of July 9, 2010 directed users to a website that offers links to Complainant’s computer software financial products as well as software products of Complainant’s competitors. Respondent's use of a confusingly similar domain name to divert traffic to its website is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name. See, e.g., American Century Proprietary Holdings, Inc. v. Travis Martin, NAF Claim No. 1262486 (holding no rights or legitimate interests where a domain name resolves to a parked website and respondent presumably generates click-through fees from such use).
On the basis of the record before the Panel in these proceedings, the content of the webpages associated with the disputed domain name, the WhoIs search results for the disputed domain name and a review of, inter alia, the data base maintained in United States Patent and Trademarks Office (USPTO) for the word “intuit”, the Panel finds that Respondent is not commonly known by the “Intuit” or “websitesintuit” names, and owns no relevant trademark applications or registrations for them. See, The Braun Corporation v. Wayne Loney, NAF Claim No. 699652 (concluding that the respondent had no rights or legitimate interests in the disputed domain names because it was not commonly known by the disputed domain names and the complainant had not authorized the respondent to register a domain name containing its registered mark). See also, Tercent Inc. v. Lee Yi, NAF Claim No. 139720 (finding that the WhoIs information and its failure to imply that respondent is commonly known by the disputed domain name is a factor in determining whether respondent has any rights or legitimate interests in the dispute domain name).
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the responsibility of proving such rights shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on the basis of all the evidence in the present record and a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith. C.1. Registered in Bad Faith
Complainant has established that it is the owner of numerous registered trademarks for and including INTUIT registered on the Principal Register in the United States in relation to the goods and services described in section 4 above. INTUIT has been continuously used as a trademark in connection with business and financial management software for individuals, small businesses and accounting and tax professionals in the United States since 1984. Complainant is annually ranked as one of the top business and financial software vendors in the United States.
The disputed domain name incorporates the entirety of Complainant’s INTUIT trademark as its distinctive element in combination with the descriptive word “websites”. Complainant has established as a result of extensive use of its trademarks in association with the wares and services with which they have been used since 1984, that its trademark INTUIT was well-known prior to the registration of the disputed domain name in 2010. The website associated with the disputed domain name among many other links includes links to Complainant’s websites as well as links to the accounting software of Complainant’s competitors.
It is difficult to conceive how Respondent could have created the disputed domain name including the name and trademark INTUIT in conjunction with the term “websites” without prior knowledge of Complainant’s registered trademarks for and including INTUIT and the business and financial management software Complainant advertised and offered to the public in association with its trademarks since 1984.
Respondent was invited to file a Response. Respondent’s failure to explain any reason for choosing the disputed domain name strengthens the Panel’s inference that Respondent registered the disputed domain name with knowledge of Complainant’s trademark, goods and services which were well-known at the date of the registration of the disputed domain name on June 21, 2010.
The Panel finds that Respondent registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to a respondent’s website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
Respondent’s webpage associated with the disputed domain name includes links to entities providing products and services related to the kind of products and services offered by Complainant without any information relating to Respondent, its purpose, business, or proposed business, if any. Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s registered and well-known trademarks for or including INTUIT as the distinctive element enables Respondent to draw Internet users to the website for profit by misleading Internet users associating the disputed domain name with Complainant. The Panel infers that Respondent is receiving click-through profits as the pages associated with the disputed domain name make no reference to Respondent, its purpose, business or proposed business. Linking to websites of competitors that are active in the same field as Complainant may be evidence of bad faith use. See, e.g, Google Inc. v. Forum LLC, NAF Claim No. 1053323 (finding bad faith registration and use where resolves to a commercial search engine website generating click-through advertising fees); Brink’s Network, Inc. v. Jenny Ho, ,WIPO Case No. D2009-0530 (“[w]here, as here, the disputed domain name is used to link, inter alia, to websites of the [c]omplainant’s competitors, a holding of bad faith use will typically follow”).
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under 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.
Ross Carson
Sole Panelist
Dated: September 7, 2010
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