Complainant is Intuit Inc. of Mountain View, California, United States of America (“United States”) represented by Fenwick & West, LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / JC Ramitra of Fort Lauderdale, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, 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 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 September 10, 2018 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 September 11, 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 Respondent of the Complaint, and the proceedings commenced on September 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 4, 2018.
The Center appointed John C. McElwaine as the sole panelist in this matter on October 18, 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 is a financial software company. One of its products, TURBOTAX, is a tax software and online solution that enables individuals and small business owners to prepare and file their taxes. Complainant owns trademark registrations for the mark TURBOTAX and other TURBOTAX-formative trademarks in the United States, Canada, the European Union, and other countries throughout the world, including for example the United States trademark TURBOTAX, with registration number 1369883, registered on November 12, 1985.
The Domain Name was registered on April 12, 2002. The Domain Name is registered with the Registrar. The Domain Name resolves to a website with pay-per-click links related to Complainant’s products and/or area of business. 5. Parties’ Contentions A. Complainant
Complainant contends that it has provided financial management solutions to consumers for more than 34 years. Complainant asserts that it is a leading provider of business and financial management software and online solutions with revenues of USD 6.0 billion earned from more than 46 million individual and business customers.
Complainant alleges that it has used the TURBOTAX mark in connection with tax software since as early as October 1984, and has expended significant resources in developing public recognition and goodwill in its TURBOTAX mark. Specifically, Complainant contends that it has widely promoted its TURBOTAX goods and services, including in advertisements displaying its TURBOTAX mark that aired during the 2014, 2015, 2016, 2017 and 2018 Super Bowl games. In addition, Complainant alleges that it has:
- 713,216 followers of the TURBOTAX Facebook site with 740,190 “likes”.
- Over 35,900 followers of the TURBOTAX Twitter profile.
- 32,119 subscribers of the TURBOTAX YouTube channel.
- 11,900 followers of the TURBOTAX Instagram site.
- 1,356 followers of the TURBOTAX LinkedIn site.
In this proceeding, Complainant asserts registered trademark rights in the TURBOTAX trademark and TURBOTAX-formative trademarks (collectively, the “TURBOTAX Mark”) by virtue of registrations throughout the world. Included in the list of registrations provided by Complainant is a United States trademark registration for the mark TURBOTAX registered November 12, 1985 for computer programs and a United States trademark registration for the mark TURBOTAX registered November 27, 2001 for providing tax information, calculation, preparation and filing services.
Complainant further asserts that the Domain Name is confusingly similar to Complainant’s TURBOTAX Mark because Respondent’s Domain Name is an obvious misspelling of Complainant’s TURBOTAX Mark. The only difference being the missing letter “u” in the word, TURBO.
With respect to the second element of the Policy, Complainant contends that Respondent does not have any rights or legitimate interests in the Domain Name because it has no legitimate relationship to Complainant giving rise to any license, permission, or authorization for registration or use of the Domain Name. Moreover, Complainant asserts that Respondent is not commonly known by the TURBOTAX or TRBOTAX name, and owns no trademark applications or registrations for TURBOTAX or TRBOTAX. On the other hand, Complainant asserts that Respondent is using the Domain Name to resolve to a website that without Complainant’s authorization displays Complainant’s TURBOTAX Mark several times in the headings, including use of “TurboTax Software”, “TurboTax Premier”, “TurboTax Online”, “TurboTax Deluxe”, and “TurboTax Review”. In addition, it is alleged that Respondent’s webpage provides links, including to tax calculators, filing income tax, tax refund estimator, tax preparation software, business tax software and online tax return products and services, that compete with Complainant’s tax preparation and tax filing products and services. Complainant asserts that such 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 Domain Name.
Lastly, as it pertains to the third element of the Policy, Complainant contends that Respondent has set up the Domain Name to resolve to a website featuring linked advertisements to third party websites that offer financial and tax preparation software and services competitive to Complainant. This is alleged to violate paragraph 4(b)(iv) because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s TURBOTAX Mark being used as to source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website. Complainant also asserts that Respondent’s activities may fall into paragraph 4(b)(i) because, by selling the Internet traffic that hits the Domain Name for a set period of time, Respondent has registered the domain name primarily for the purpose of renting the Domain Name to Complainant or, if Complainant cannot or does not purchase the traffic, to Complainant’s competitors. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainants must still prove their assertions with evidence demonstrating:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and are being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainants show that the Domain Names are identical or confusingly similar to a trademark or service mark in which the respective Complainant has rights. 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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Here, Complainant has provided evidence of ownership of registrations for the mark TURBOTAX in the United States, Canada, the European Union, and multiple other countries around the world. Furthermore, Complainant has put forward evidence establishing substantial use of the TURBOTAX Mark in commerce. The Panel finds that Complainant owns valid trademark rights in the TURBOTAX Mark which predate the registration of the Domain Name.
While the Domain Name is not identical to the TURBOTAX Mark, the Domain Name is virtually identical but for the missing letter “u” in the term “turbo”. It is well established, and the Panel agrees, that the transposition of letters in a mark is a common typographical variant and such common typographical variants typically give rise to a finding of confusing similarity. See e.g. Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556 (transposition of the letters “l” and “o” in the domain name ).
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s TURBOTAX Mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant needs only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(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.”
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as “JC Ramitra” and the Panel therefore finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049 (“the Panel notes that the Respondent’s name is “Bestinfo” and that it can therefore not be “commonly known by the Domain Name.”) The Panel would further take notice of the fact that “trbotax” is not a word and is almost certainly an intentional misspelling of the TURBOTAX Mark.
The Panel finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c), as the Domain Name links to what appears to be a “parked” page. This Panel agrees with the viewpoint that to register domain names and park them to earn rental revenue by allowing a third party to use the domain name is not by itself to be considered a bona fide use of the domain name in connection with the offering of goods or services by the registrant of that domain name. Trade Me Limited v. Vertical Axis Inc.,WIPO Case No. D2009-0093. However, the Panel recognizes that parking webpages may be permissible in some circumstances, as discussed in paragraph 2.9 of WIPO Overview 3.0. None of those factors are present here. There is no evidence that the Domain Name consists of dictionary or common words or phrases that support the pay-per-click links genuinely related to the generic meaning of the domain name at issue. Instead, the Domain Name appears to have been registered with the intent that confused Internet users searching for Complainant will be directed to Respondent’s parked webpage for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy. See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita,WIPO Case No. D2014-1726.
Lastly, Respondent’s use of the Domain Name is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that Respondent purports to offer information and insurance quotes for competitors of Complainant. Such activity does not amount to a fan site, criticism, or other activity that may be considered noncommercial or fair. See, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainants, it can be a further inference in appropriate circumstances that respondents have no rights nor legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known of Complainant’s TURBOTAX Mark when Respondent registered the Domain Name because, as detailed above, the Domain Name consist of a common typographical error of TURBOTAX. Furthermore, and as also detailed above, Respondent is not commonly known by the Domain Name and does not have any rights or legitimate interests in the Domain Name. Accordingly, on the record there is no explanation or legitimate interests to justify Respondent’s choice to register the Domain Name. With no response from Respondent, this claim is undisputed and the Panel can infer bad faith.
Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.” As discussed herein, Respondent registered the Domain Name, which is confusingly similar to Complainant’s TURBOTAX Mark and developed a webpage displaying Complainant’s TURBOTAX Mark and providing links to competing services. See Identigene, Inc. v. Genetest Labs.,WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathF, LLC v. Weiguang Huang,WIPO Case No. D2000-0743 (August 17, 2000) (finding bad faith under Paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark.) 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 Domain Name, , be transferred to Complainant.
John C McElwaine
Sole Panelist
Date: November 1, 2018
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