The Complainant is Intuit, Inc. of Mountain View, California, United States of America (“United States”), represented by Fenwick & West, LLP, United States.
The Respondent is P of Nobby Beach, Queensland, Australia, and Niveditha.G of Bangalore, Karnataka, India. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Trunkoz Technologies Pvt Ltd. d/b/a OwnR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2011. On October 10, 2011, the Center transmitted by email to Trunkoz Technologies Pvt Ltd. d/b/a OwnR a request for registrar verification in connection with the disputed domain name. On October 14, 2011, Trunkoz Technologies Pvt Ltd. d/b/a OwnR transmitted by email to the Center its verification response. On October 17, 2011, the Center transmitted by email to Trunkoz Technologies Pvt Ltd. d/b/a OwnR a request for clarification regarding its reply to the request for registrar verification. On October 19, 2011, Trunkoz Technologies Pvt Ltd. d/b/a OwnR 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 the Complainant on October 21, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Also on October 21, 2011 the Center transmitted by email to the Parties notification of an administrative deficiency with the Complaint regarding the Complainant’s election of a three-member Administrative Panel. The Complainant filed an amended Complaint on October 25, 2011.
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 October 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2011. Email communications from the Respondent were received by the Center on October 19 and October 26, 2011. The Response was filed with the Center November 17, 2011.
The Center appointed Alistair Payne, David H. Bernstein and Harini Narayanswamy as panelists in this matter on January 3, 2012. 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.
A Supplemental Filing was submitted by the Complainant by email on November 19, 2011. A Supplemental Filing was submitted by the Respondent by email on November 21, 2011. 4. Factual Background
The Complainant is a provider of business and financial management software for individuals, small businesses, and accounting and tax professionals and is a Delaware corporation located in Mountain View, California, United States. Founded in 1983, it had annual revenue of USD 3.9 billion in its fiscal year 2011, with major offices in the United States, Canada, the United Kingdom of Great Britain and Northern Ireland, and India. One of the Complainant’s flagship products and services is its QuickBooks accounting software and related services. It owns numerous trademark registrations worldwide for the QUICKBOOKS trademark, including registration 765,508 in India since 1997 and registrations 603,749 and 603,750 in Australia dating from 1996. The Complainant owns more than 400 domain names including the QUICKBOOKS mark and in particular the domain name which it has operated as its official website.
The Respondent registered the Disputed Domain Name on August 6, 2008. The Respondent is associated with an Indian corporation, Cosmic IT Services Pvt. Ltd, which provides IT and IT-enabled services in the areas of finance, United States accounts, and United States tax, including training in the Complainant’s QuickBooks product, which latter service it has provided for the last 10 years. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has expended very significant resources in advertising and promoting its QuickBooks product to the extent that the QuickBooks line of business accounting software and services is the leading product in the retail sales channel for its category and since its introduction in 1992 has become one of the most widely recognised and used software products in the world. It says that as of March 2008 its QuickBooks product achieved a 94.2 percent market share of retail units in the business accounting category.
The Complainant submits that the Disputed Domain Name is confusingly similar to its registered QUICKBOOKS trademark, as the inclusion of the geographical term “India” does not distinguish the Disputed Domain Name and potentially misleads Internet users into believing that the Disputed Domain Name is a domain name belonging to the Complainant or otherwise associated with the Complainant.
It further says that the Respondent has no rights or legitimate interests in the Disputed Domain Name as its use of the QUICKBOOKS mark has not been authorized by the Complainant and that the Respondent is not commonly known by the Disputed Domain Name or by the QUICKBOOKS mark and is not an authorized dealer or trainer of the Complainant’s product. The Complainant goes on to say that the Respondent points the Disputed Domain Name to its company website which prominently displays the title “Cosmic QuickBooks Training” at the top of every page. It says that the services offered under this title compete directly with the Complainant’s official QuickBooks training services and therefore cannot be a bona fide offering of services. The Complainant maintains that the only plausible reason to register and use the Disputed Domain Name has been to take unfair advantage of the recognition associated with the Complainant’s QUICKBOOKS mark by diverting Internet users from the Complainant’s official website to its website. The Complainant further submits that an Internet user’s impression that the website at the Disputed Domain Name is somehow approved by or associated with the Complainant is only reinforced by the Respondent’s prominent display on every page of a picture of Intuit’s QuickBooks product packaging, the use on every page of Intuit’s distinctive QuickBooks green, light blue, and white trade dress, the use of the QuickBooks Certification tab and of the QuickBooks Courses tab, and the display of the Certified QuickBooks Users Certificate of Completion.
As far as bad faith is concerned, the Complainant says that the Respondent’s use of the Disputed Domain Name without authorisation to resolve to a website that offers services that compete with those offered by the Complainant constitutes both use and registration in bad faith under the Policy. The Complainant further submits that this inference of bad faith is only reinforced by the Respondent’s failure to respond to the numerous cease and desist letters sent to the Respondent by the Complainant. B. Respondent
The Respondent disclaims any association with the Complainant through a disclaimer on each page of its website that states: “Quickbooksindia is not affiliated to intuit Inc.”; a hyperlink on the words “intuit Inc.” resolves to the “” website. The Respondent further states that it is recognized by people in India as pioneers in providing training in the Complainant’s QuickBooks software and that it handles books of accounts for around 4,000 small and medium size enterprises and conducts training sessions once per month. The Respondent says that its partner company in the United States is a leader in QuickBooks training in that jurisdiction and that it has shared teacher services with its associated Indian entity and that the Complainant’s Indian vice president and other senior executives of the Complainant have visited Cosmic’s offices in India to discuss its QuickBooks training services and to obtain feedback on experience of the product in India.
The Respondent says that it has not sought to associate itself with the Complainant in any way on its website at the Disputed Domain Name and on its home page has included the disclaimer that “Quickbooksindia is not affiliated to intuit Inc” with a link to the Complainant’s website. The Respondent says that this demonstrates its good faith in running its training business. The Respondent also maintains that there is no similarity between the services/products as marketed by the Complainant and those of “Quickbooks India”. The Respondent says that its affiliated company is just offering training services and is not selling any of the Complainant’s other products or services. As a consequence the Respondent says that it is not taking unfair advantage of the Complainant’s QUICKBOOKS mark but is rather facilitating the use of the Complainant’s product which does not amount to registration or use of the Disputed Domain Name in bad faith as suggested by the Complainant.
The Respondent submits that it merely registered the Disputed Domain Name to facilitate its monthly offering of training services and questions why the Complainant has only decided to challenge its use of the Disputed Domain Name sometime after its first use. According to the Respondent, the main motivation of the Complainant is to take advantage of the traffic generated and high search engine ranking that the Respondent has achieved so that the Complainant’s recently launched Indian version of the QuickBooks product will sell successfully without the Complainant needing to expend additional monies on advertising. 6. Discussion and Findings
Within its discretion under the Rules the Panel notes that it has declined to accept the Supplemental filings made by either party on the basis that the matters addressed therein could have been addressed in original submissions, or, in the alternative, relate to matters that are not relevant to the key matters that are determinative of this decision. A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated that it owns registered trademark rights as noted above in its QUICKBOOKS trademark. The Disputed Domain Name only differs from the Complainant’s trademark by the inclusion of the geographical term “India” which the Panel finds does not distinguish the Disputed Domain Name from the Complainant’s mark, and in any event, the Disputed Domain Name contains in its entirety the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2. As a result the Panel finds that the Disputed Domain name is confusingly similar to the Complainant’s QUICKBOOKS trademark. B. Rights or Legitimate Interests
In support of making a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, the Complainant submits that it has not authorized the Respondent’s use of the QUICKBOOKS trademark in the Disputed Domain Name and that the Respondent is not generally known by the mark. It further says that the Respondent’s training services compete with its own training services and that the Respondent is effectively using the Complainant’s mark in the Disputed Domain Name to attract website traffic to its own website to drive its own business.
By way of rebuttal the Respondent says that it clearly trades as Cosmic IT Services Pvt. Ltd and is not seeking to associate itself in any way with the Complainant other than to promote the training services that it bona fide offers to customers in respect of the Complainant’s QuickBooks product. It says that it has included an appropriate disclaimer on its website to this effect and in any event that it is not offering competing services to those offered by the Complainant. It further says that the Complainant has been well aware of its activities as its senior representatives visited the Respondent’s offices in India on several occasions and as late as 2009 to look at what the Respondent was doing and to obtain product user feedback. The Respondent further says that as early as 2003 it invited independent certified QuickBooks trainers to India to train its staff and subsequently made arrangements through those United States-based trainers for its customers to take the official QuickBooks tests and become QuickBooks certified by Intuit’s United States-based appointed administering agency.
Previous panels have found that a reseller or distributor can make a bona fide offering of goods and services and thus have a legitimate interest in a disputed domain name which includes a complainant’s trademark if its use meets certain requirements as set out in Oki Data Americas, Inc. v ASD, Inc.,WIPO Case No. D2001-0903. These requirements are that: (1) a respondent must actually be offering the goods or services at issue; (2) a respondent must use the website to sell only the trademarked goods, otherwise, it could be using the trademark to bait Internet users and then switch them to other goods; (3) the website must accurately disclose the registrant’s relationship with the trademark owner; and (4) a respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case the Respondent is clearly providing training concerning the Complainant’s QuickBooks product in conformance with the first factor and there is no evidence before the Panel to suggest that the Respondent has registered any other domain name incorporating the QUICKBOOKS mark under the fourth factor. However the Panel has had much more difficulty with the analysis of each of the second and third factors in the circumstances of this case, as set out below.
The second Oki Data requirement is that a respondent is not using its website at a domain name to sell competing goods or services under another trademark. The rationale behind this requirement is that otherwise the respondent could be using the domain name to bait and switch Internet users, which would not be a bona fide or legitimate activity. It appears both from the Respondent’s submissions and from the Panel’s review of the Respondent’s website that the Respondent offers a wide range of financial, IT, and multimedia services as well as several bespoke products. While these strictly speaking, on a product line, do not appear to compete with the Complainant’s QuickBooks product, the Respondent is separately offering bookkeeping or accounting services, in particular to United States-based customers who might, at least in theory, undertake such services themselves using the Complainant’s QuickBooks product.
The Panel accepts that it is clear from the website that it is the Respondent under its own name which is offering these services, but it is not at all obvious as to whether the provision of these services might, even indirectly, compete with the Complainant’s QuickBooks product offering so as to raise the possibility that the Respondent is using the Disputed Domain Name to attract Internet users to its own service offering, as much as to training services for the Complainant’s QuickBooks product. As the Panel understands it, the QuickBooks product is targeted at small and medium size businesses to enable them to undertake their own bookkeeping function and at least in the United States market is highly successful and is used by a large majority of the relevant market. Although the Panel does not understand the likely cost differential between undertaking these tasks oneself using the QuickBooks product and engaging the Respondent to undertake bookkeeping services on an “overnight” basis, as set out in the description of its service offering, it assumes that the Respondent’s bespoke service offering is more expensive and that many small businesses would therefore find it preferable to use the QuickBooks product to undertake this task themselves and as a result the respective products are not interchangeable. Further, in circumstances that that there is no evidence that the Complainant offers an equivalent bespoke service and, significantly, that the Respondent is not offering any other bookkeeping product aimed at the same market segment from its website at the Disputed Domain Name, then on balance, and it is a close call indeed, the Panel finds that the Respondent is not offering competing services for the purposes of this element of the Oki Data requirements and is therefore not using the Disputed Domain Name for the illegitimate purpose of bait and switch selling.
The Panel notes in considering the third Oki Data factor (whether the website accurately discloses the Respondent’s relationship with the Complainant) that, in spite of the prominent use of representations of the Complainant’s QuickBooks product and logo on the Respondent’s web page and the display of a “QuickBooks Certification” tab and of copies of Certified QuickBooks Users Certificate of Completion, the Respondent has attempted to identify and distinguish itself from the Complainant by the use of its own name often shortened to “Cosmic”, by including a disclaimer at the foot of its home page to the effect that “Quickbooksindia is not affiliated to intuit Inc”, and by including on the FAQ page of the Respondent’s website the statement that the Complainant is the supplier of the QuickBooks product.
The Respondent’s very prominent and repeated use of a representation of the Complainant’s QuickBooks product featuring the QUICKBOOKS logo mark has, in particular, given the Panel considerable pause for thought. The question is whether, in spite of this use, the Respondent has adequately differentiated itself from the Complainant so that Internet users would not be confused into thinking that there was some association between the parties. The Panel notes that, although the Respondent has included a disclaimer in appropriate terms, it is not in a particularly large or obvious font. However, there is no suggestion on the website that the Respondent is authorized by or affiliated with the Complainant and, on considering the combined effect of the website text, the references to the Respondent as “Cosmic”, the disclaimer itself, and the express acknowledgement of the Complainant’s status as supplier of the QuickBooks product on the FAQ page, the Panel is prepared to give the Respondent the benefit of the doubt by finding that, on balance, the Respondent’s website does accurately disclose the Complainant’s and the Respondent’s relationship and that the relevant Internet audience would not be necessarily inappropriately confused or misled as a result.
Overall the Panel finds that the Respondent has developed a legitimate business over a period of years in training services for the Complainant’s QuickBooks product. For the reasons set out above the Panel finds that the Oki Data requirements are just fulfilled in this case and that the Respondent is making a bona fide offering of goods and services and therefore has a legitimate interest in the Disputed Domain Name.
As a result the Complainant has not made out the case required of it under the second element of the Policy, namely that the Respondent has “no” rights or legitimate interests in the Disputed Domain Name and the Complaint fails under this element of the Policy.
Because of the Panel’s conclusion with respect to the second factor under the Policy, the Panel need not address whether the Complainant has established that the Respondent registered and uses the Dispute Domain Name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Presiding Panelist
David H. Bernstein
Panelist
Harini Narayanswamy
Panelist
Dated: January 17, 2012
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