The Complainant is Intuit Inc. of Mountain View, California, United States of America (“United States”) (“Complainant”), represented by Fenwick & West, LLP, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States (“Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2018. On November 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 December 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 26, 2018.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 28, 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 has provided financial management services to more than 46 million businesses and consumers over the course of 35 years. Its 9,000 employees worldwide provide primarily online services for the calculation and filing of taxes under the registered trademark and service mark TURBOTAX. Complainant has spent extensively on advertising on various media, including television and social media, including on events such as the Super Bowl and social media sites such as Facebook, YouTube, Instagram, and LinkedIn. Complaint, Annexes D and E.
Complainant has several trademark registrations with the United States Patent and Trademark Office, which registrations date back to as early as November 12, 1985. Complaint, Annex F. Complainant has also registered its TURBOTAX mark in jurisdictions around the world. Complaint, Annex G.
Respondent registered the disputed domain name on January 19, 2012. The disputed domain name redirects to third-party web sites. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to its famous TURBOTAX mark, that Respondent has no legitimate relationship to Complainant giving rise to any license permission or authorization for the use of its trademark, and that Respondent has engaged in “typosquatting” by registering a slight variation of a trademark as a domain name which has been put to illegitimate use. Complainant contends that Respondent is using the domain name to misdirect Internet users looking to take advantage of Complainant’s services to be redirected to other sites which generate revenue to Respondent, including introducing malware into the computers of users seeking to utilize Complainant’s services. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall 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 directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.” A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s TURBOTAX trademark with the sole exception of the letter “o” (replaced with the letter “r”) and the generic Top-Level Domain “.com”. The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Complainant has alleged that Respondent has been using the disputed domain name to misdirect users seeking to utilize Complainant’s online services to third party web sites and for such acts Respondent received compensation, and that such misdirection frequently involves the insertion of malware into users’ computers. Respondent failed to deny any of this. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith. 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.
M. Scott Donahey
Sole Panelist
Date: January 5, 2019
Full & Egal Universal Law Academy