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 Domain Admin, Domain Investments, SA of Tegucigalpa, Honduras. 2. The Domain Name and Registrar
The disputed domain name is registered with BoteroS S.A. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2018. On February 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2018, 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 the Complainant on February 27, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 1, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2018.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 11, 2018. 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 business of the Complainant, which has been established for 34 years, is the provision of financial management solutions to people and businesses. The Complainant employs 8,300 people and has annual sales of USD 5.2 billion. The Complainant’s “Turbotax” software enables people to prepare and file their personal and business income taxes.
The Complainant holds some 61 trademarks in the United States and other countries comprising or incorporating the word TURBOTAX, of which the following are representative for the purposes of the present proceeding:
TURBOTAX, United States Patent and Trademark Office (USPTO), principal register, registered November 12, 1985, registration number 1369883, class 9;
TURBOTAX, European Union Trademark, Office for Harmonization in the Internal Market, registered January 29, 2009, registration number 6630404, classes 9, 35, 36, 42;
TURBOTAX and design, Mexican Industrial Property Institute, registered November 3, 2014, registration number 1491830, class 9.
The Complainant is the registrant of the domain name and over 5,000 domain names including , , , and .
No background information is known about the Respondent except that it uses the name Domain Admin, Domain Investments, SA as registrant of the disputed domain name and provides Honduras contact details. The disputed domain name was first registered on June 3, 2001 and recently has resolved to a page displaying among other things the names “TurboTax” and “Intuit”. 5. Parties’ Contentions A. Complainant
The Complainant contends that it has rights in a number of trademarks comprising or containing TURBOTAX. Documentation has been produced in the form of copies of registration documents in respect of several trademarks including those listed in section 4 above.
The Complainant says its trademark is widely known and advertised, including advertisements shown during the 2014-2017 Super Bowl games. The Complainant has many followers on Facebook, YouTube, Instagram and LinkedIn.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, being a misspelling of the trademark by omission of the letter “r”. This constitutes “typosquatting” with intent to divert traffic, intended for the Complainant, to the Respondent.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has not authorised it to use the Complainant’s trademark or to register or use of the disputed domain name. The Respondent is not commonly known as TURBOTAX or “tubotax” or mentioned as such in the registration details of the disputed domain name. The use of the disputed domain name is indirectly for the sale of advertising referrals, including links to the Complainant’s website, over which the Complainant has no control and which could alternatively show links to the Complainant’s competitors. This use does not constitute a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the disputed domain name.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith in the terms of paragraph 4(b)(iv) of the Policy. The Respondent has engaged in “typosquatting”, in which the Complainant’s trademark has been misspelt in the disputed domain name in order to cause confusion leading to commercial benefit for the Respondent, constituting use in bad faith.
The Complainant also contends that the Respondent’s activities arguably fall within the terms of paragraph 4(b)(i) of the Policy. Internet traffic received at the disputed domain name may be available to the Complainant, or to its competitors, for purchase. The Complainant argues that this amounts to registration of the disputed domain name primarily for the purpose of renting it to the Complainant or its competitors.
The Complainant has cited a number of previous decisions under the Policy that it considers to support its position.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. B. Identical or Confusingly Similar
The Complainant’s trademark is TURBOTAX and the disputed domain name is . The determination of confusing similarity requires an objective comparison of the disputed domain name, of which the generic Top-Level Domain (gTLD), e.g., “.com”, may be disregarded, with the Complainant’s trademark. The Panel finds the disputed domain name to be a predictable typographical misspelling of the Complainant’s trademark by the omission of the letter “r”, and on an objective comparison, to be confusingly similar to the Complainant’s trademark. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, has no relationship with the Complainant, and has not been authorised to use the Complainant's trademark.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 replied to the Complaint and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. There is no evidence that any use of the disputed domain name, being confusingly similar to the Complainant’s trademark, is for a bona fide offering of goods or services, or that the Respondent or its business has been commonly known by the disputed domain name, or that its use is noncommercial or fair. Accordingly the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
Screen captures of the website to which the disputed domain name has resolved, viewed through the screenshot history section of the website “/”, show the disputed domain name to have resolved to a website that on multiple dates between November 27, 2006 and April 11, 2017, has made reference to or provided links to the Complainant or its competitors. The most recent from this source captured on April 11, 2017, mentioned the Complainant and displayed prominent screen buttons in the nature of links, marked “Start for Free”. The capture made on April 2, 2015 presented a purported comparison between the Complainant and a major named competitor of the Complainant. The capture made on June 3, 2007, had a number of links related to tax, credit and finance, including a link to the Complainant. A screen captured independently on April 11, 2018 showed a page mainly in German headed (translated) “Popular Categories” with 60 links to various categories of goods and services, such as “Auto”, “Lifestyle”, “Entertainment” and (translated) “Finance”. The page had a further link to (translated) “More Links”, beneath which was the word “Accounting”.
Having regard to all the evidence, it may reasonably be inferred that the disputed domain name has been used for a website intended to generate pay-per-click revenue in which at least a part of the advertising revenue should accrue to the Respondent. Whilst the provision of pay-per-click links on a website may be entirely legitimate, either as an adjunct or as a stand-alone business, it cannot be legitimate if another’s trademark, or a variant spelling that may be confused with that trademark, is the mode of attraction of Internet users. On the evidence, and on the balance of probabilities, the Panel finds in the terms of paragraph 4(b)(iv) of the Policy that in this case the disputed domain name, being a misspelling of the Complainant’s trademark, has been used in bad faith with intent to attract Internet users for the Respondent’s commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Panel further finds on the evidence and on the balance of probabilities that the disputed domain name was registered or acquired by the Respondent for the bad faith purpose for which it has been used.
Accordingly the Panel finds the disputed domain name to have been registered and used by the Respondent in bad faith under paragraph 4(a)(iii) of the Policy.
The Panel does not find it necessary to explore the Complainant’s additional argument to the effect that the Respondent, by making some of the Internet traffic it has received available for purchase by the Complainant or the Complainant’s competitors, has in effect registered the disputed domain name primarily for the purpose of renting it to the Complainant or its competitors within the contemplation of paragraph 4(b)(i) of the Policy. 7. Decision
For 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.
Dr. Clive N.A. Trotman
Sole Panelist
Date: April 20, 2018
Full & Egal Universal Law Academy