Complainant is Intuit Inc., United States of America (“United States”), represented by Fenwick & West, LLP, United States.
Respondent is Registration Private, Domains by Proxy, LLC / Domain Manager, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2020, 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 June 15, 2020 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 June 19, 2020. 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 June 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 14, 2020. The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on July 28, 2020. 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 solutions to consumers to help them manage their personal and business finances. Complainant provides financial management software and online solutions. Complainant has over 9,000 employees worldwide, 20 locations in nine countries, revenue of USD 6.8 billion and serves approximately 50 million individual and business customers with financial, business and tax management software products and online services including under its TURBOTAX trademark. Complainant’s TURBOTAX tax software and online solutions enables individuals and small business owners to prepare and file their personal income taxes and small business taxes. Complainant and its predecessors in interest have used the TURBOTAX mark in connection with tax software since at least as early as October 1984. Complainant’s TURBOTAX goods and services have been widely promoted, including during the Super Bowl games in the years 2014 to 2020. The Super Bowl game broadcasts draw average audiences that exceed 100 million viewers each year. Complainant uses its TURBOTAX mark on social media, including Facebook, Twitter, YouTube and Instagram and has established a very strong consumer following on those sites. Complainant is the owner of numerous trademark registrations worldwide for the mark TURBOTAX and marks including TURBOTAX, including but not limited to the following: United States Registration No. 1369883 registered November 12, 1985; Complainant owns over 5,000 domain names, including, but not limited to the following, that include or comprise the TURBOTAX mark: The disputed domain name was created on April 12, 2002. 5. Parties’ Contentions A. Complainant Complainant contends that the domain name is confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules instructs the Panel to 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”. A. Identical or Confusingly Similar Complainant has demonstrated that it has rights in the trademark TURBOTAX in connection with financial management software and related goods and services. The disputed domain name incorporates Complainants’ mark in its entirety, except for the omission of the letter “b” in the mark. This omission does not avoid confusing similarity. Indeed, the misspelling appears to be an instance of “typosquatting” by which Respondent misleads Internet users looking for Complainant by luring them to its website for Respondent’s commercial gain. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests Complainant contends that Respondent is not affiliated with or connected to Complainants in any way. At no time has Complainant licensed or otherwise endorsed, sponsored or authorized Respondent to use any of Complainant’s TURBOTAX marks or to register the disputed domain name. The record is devoid of any facts that establish any rights or legitimate interests of Respondent in the disputed domain name. There is no evidence that Respondent has been commonly known by the disputed domain name or that it has any rights that might predate Complainant’s adoption and use of the TURBOTAX mark. Complainant’s first use of the TURBOTAX mark, through its predecessors in interest, dates back to as early as 1985, over three decades ago and well before the registration of the disputed domain name. Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name. Respondent is using the disputed domain name to profit from Complainant’s intended Internet traffic through a monetization scheme. Respondent appears to be selling the Internet traffic diverted to the disputed domain name to an advertising platform that resells Internet traffic to buyers through an anonymous auction or bidding process. In this case, the disputed domain name redirects visitors to Complainant’s TURBOTAX site and, through the advertising platform, Respondent is collecting referral fees from Complainant. However, Complainant has no control over the advertising platform such that Respondent may decide to withdraw from any advertising platform or arrangement and redirect to another site, including to those of Complainant’s competitors. Respondent’s use of a confusingly similar domain name to profit from Complainant’s intended Internet traffic through a monetization scheme is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name. The record indicates that Respondent has registered and used the disputed domain name to take unfair advantage of the recognition associated with Complainant’s TURBOTAX mark by selling Internet traffic and collecting referral fees. The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In view of the well-known status of Complainant’s TURBOTAX mark, it strains credulity to believe that Respondent did not know of Complainant or its TURBOTAX mark when registering the disputed domain name. Indeed, the record indicates that Respondent was aware of Complainant’s mark and is engaged in “typosquatting”. This practice redirects Internet users who misspell Complainant’s mark to Respondent’s website for Respondent’s commercial gain. Such use constitutes bad faith registration and use of a domain name pursuant to Policy, paragraph 4(b)(iv). In addition, Respondent is using the disputed domain name to attract Complainant’s customers and make a profit from every Internet user it redirects. Respondent is using the disputed domain name that is confusingly similar to Complainant’s mark in order to cause confusion for Respondent’s own commercial gain. Respondent has registered and is using the disputed domain name in bad faith, to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. The disputed domain name was created in 2002, several years after Complainant had first used its TURBOTAX trademark and acquired a United States trademark registration (No. 1369883, registered November 12, 1985). The ownership of the disputed domain name appears to have transferred several times during the intervening period before ultimately becoming owned by Respondent. Whether Respondent registered the disputed domain name on April 12, 2002, or acquired it later does not affect the assessment of Respondent’s bad faith, given the registration of the TURBOTAX trademark since 1985, and the apparent typosquatting nature of the disputed domain name. Accordingly, the Panel finds that Respondent has registered and used 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 Lynda J. Zadra-Symes
United States Registration No. 2512370 registered November 27, 2001;
United States Registration No. 2597246 registered July 23, 2002;
United States Registration No. 4181861 registered July 31, 2012.
Sole Panelist
Date: August 11, 2020
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