Complainant is Intuit Inc. of Mountain View, California, United States of America (“United States” or “US”), represented by Fenwick & West, LLP, United States.
Respondent is P, Savvy Investments, LLC Privacy ID# 1130202 of Cheyenne, Wyoming, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Sea Wasp, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2018. On September 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 28, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 4, 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
Complainant provides financial management solution services for individuals and businesses. Complainant offers services via financial, business and tax management software products and online services including under the mark TURBOTAX, an online tax software. Complainant owns valid and subsisting registrations for the TURBOTAX mark since at least October 1984, including U.S. Registration Number 1,369,883 (registered on November 12, 1985) and U.S. Registration Number 2,512,370 (registered on November 27, 2001) (collectively, the “TURBOTAX marks”). Complainant owns over 5,000 domain names that incorporate the TURBOTAX mark, including , which was registered on June 13, 1995.
The disputed domain name was registered on December 2, 2005, and, at the time of the Complaint’s filing, resolved to a website that contains pay-per-click hyperlinks to services providing income tax returns, pay tax products and other financial services that compete with Complainant’s tax preparation and tax filing products and services. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is virtually identical to the TURBOTAX mark in which Complainant has rights. Complainant further asserts that the disputed domain name is confusingly similar and an obvious misspelling of “TURBOTAX” by adding a “Y” instead of a “T” to create “YURBOTAX,” in addition to the generic Top-Level Domain (“gTLD”) extension “.com”. As such, Complainant asserts that Respondent is engaged in “typosquatting.” Complainant asserts that this type of typosquatting, deliberately introducing a slight deviation such as misspelling into well-known marks, is done for commercial gain by drawing Internet traffic seeking Complainant’s TURBOTAX websites to Respondent’s website, through typographical error by the Internet user.
Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent has no legitimate relationship such as a license, permission, or authorization for registration or use of the disputed domain name or the TURBOTAX mark. Complainant contends that Respondent does not own applications or registrations for the marks TURBOTAX or YURBOTAX. Complainant further asserts that the disputed domain name resolves to a website that, without authorization, prominently displays the TURBOTAX mark while providing links to products and services that are in direct Competition with Complainant’s products and services. Complainant asserts that this use of the disputed domain name does not constitute a bona fide offering of goods and services, or a legitimate noncommercial use or fair use. Complainant contends that Respondent’s only plausible reason to register the disputed domain name is to take unfair advantage of the recognition of the TURBOTAX mark, where Respondent presumably benefits from the confusion through pay-per-click fees.
Complainant further asserts that Respondent’s registration and use of the disputed domain name is in bad faith, intended for commercial gain for Respondent or for Complainant’s competitors. Complainant further asserts the misspelling of Complainant’s mark evidences bad faith. Further, Complainant asserts the disputed domain name features advertisements for third party websites that provide goods and services in competition with Complainant. Complainant contends the disputed domain name is taking unfair advantage of the recognition associated with the TURBOTAX mark by diverting consumers looking for Complainant, to Complainant’s competitors. Complainant also asserts that Respondent has registered the disputed domain name for the purpose of renting or selling the disputed domain name to Complainant or to Complainant’s competitors, which is further evidence of bad faith.
Accordingly, Complainant has requested that the disputed domain name be transferred. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the TURBOTAX mark, which has been registered in the United States and elsewhere internationally since 1984, well before Respondent registered the disputed domain name. With Complainant’s rights in the TURBOTAX mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc./Joseph Gross,WIPO Case No. D2010-0842.
Here, the disputed domain name is confusingly similar to Complainant’s TURBOTAX mark, because it consists of a common and obvious misspelling of the trademark TURBOTAX at the second level. The only difference between the Respondent’s domain name and the Complainant’s trademark is the misspelling of “TURBO” by replacing the “T” with the letter “Y” which is adjacent on a standard “QWERTY” keyboard. See WIPO Overview 3.0, section 1.9; see also Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775 (finding the domain name confusingly similar to the trademark WACHOVIA and the domain name ).
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the TURBOTAX mark and in showing that the disputed domain name is confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the Policy.
In this case, it is evident that Respondent was, and is aware of Complainant and the TURBOTAX mark and does not have any rights or legitimate interests in the disputed domain name. Complainant has established with sufficient evidence supporting their prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent’s disputed domain name resolves to a website located at “online” and bearing the text “Turbo Tax website” in an effort to appear as a legitimate website associated with Complainant. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial use or fair use. See Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel,WIPO Case No. D2013-0585; Philip Morris USA v. Prophet Partners Inc.,WIPO Case No. D2007-1614 (stating when a respondent chooses a domain name to capitalize on a complainant’s famous trademark, it cannot be considered a bona fide offering of goods and services). Rather, the evidence demonstrates that Respondent has used the disputed domain name to divert Internet users to a third-party website, where Respondent presumably benefits by receiving pay-per-click fees. See Richemont International SA v. Turvill Consultants,WIPO Case No. D2014-0862 (finding pay-per-click advertisement websites and advertised links to products of a complainant’s competitor not to be a bona fide or legitimate use).
Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name and Complainant has meet its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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 website or other online 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 Panel finds that Complainant provided ample evidence to show the trademark TURBOTAX is
well-known in the United States, where Respondent is located. Use and registration of the TURBOTAX mark established in the record long predates the registration of the disputed domain name by Respondent. Therefore, Respondent was likely well-aware of the TURBOTAX trademark when it registered the disputed domain name, and knew or should have known that the use of the trademark in the disputed domain name was identical or confusingly similar to the Complainant’s mark. See WIPO Overview 3.0, Section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods/Privacy Gods Limited,WIPO Case No. D2016-1973.
Respondent’s “typosquatting” and its use of the disputed domain name in connection with a website containing advertisements to a third party website offering services competitive with those of Complainant and to earn pay-per-click fees, demonstrates Respondent’s registration and use of the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy. See e.g., Molmed S.p.A. v. Prof. Asif Ahmed,WIPO Case No. D2001-0177 (finding that by redirecting Internet users looking for the website of Complainant, Respondent’s attempt to attract users for commercial gain, while creating a likelihood of confusion with Complainant’s trademark, is an indicia of bad faith).
Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith and Complainant succeeds under paragraph 4(b) 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 Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: October 26, 2018
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