The Complainant is Negotiation Technologies, LLC, United States of America, represented by Shutts & Bowen LLP, United States of America.
The Respondent is Matthew McDermott, South Jersey Tax Services, United States of America, self-represented.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2021. On July 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2021. The Response was filed with the Center on August 9, 2021.
The Center appointed David H. Bernstein as the sole panelist in this matter on September 16, 2021. 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.
Pursuant to Paragraph 12 of the Rules, on September 20, 2021, the Panel issued Procedural Order No. 1 in which the Panel granted the Complainant’s request for leave to file a supplemental submission so that the Complainant could reply to the following elements of the Respondent’s Response, which the Complainant could not have anticipated in its Complaint: (1) the Respondent’s assertion that it has used the PIT BULL TAX RELIEF brand since 2009, and (2) the fact that the Respondent filed a new service mark application with the United States Patent and Trademark Office (“USPTO”) for PIT BULL TAX RELIEF after the filing of the Complaint. The Panel also requested that the Complainant clarify the history of the Respondent’s license of the Complainant’s software. Pursuant to Paragraph 10(b) of the Rules, the Panel permitted the Respondent to file a supplemental submission so that it could address the same issues, in response to the Complainant’s supplemental submission. Pursuant to Paragraph 10(c) of the Rules, the Panel set the new expected date of decision to October 18, 2021. On October 5, 2021, in response to the Respondent’s request, the Panel granted a two-day extension for submission of the Respondent’s supplemental submission.
4. Factual BackgroundThe Complainant is a Florida based limited liability company that provides web-based software for tax resolution planning, tax preparation, and other services to tax professionals under the trademark PITBULLTAX. The Complainant applied to register the PITBULLTAX trademark with the USPTO in 2010; the USPTO issued the registration in 2011, and that registration is now incontestable.
The Respondent is a New Jersey based accounting firm that provides tax planning, tax preparation, and financial advisory services. The Respondent registered the disputed domain name,
The Complainant asserts that its mark, PITBULLTAX, has been in use since 2010 and that it was registered with the USPTO in 2011. The Complainant contends that the disputed domain name incorporates the Complainant’s PITBULLTAX trademark in its entirety, and that the addition of the word “relief” at the end of the disputed domain name does not negate, and in fact creates, a confusing similarity between the Complainant’s mark and the disputed domain name.
The Complainant contends that the Respondent has no legitimate rights or interests in the disputed domain name because the Respondent is not affiliated with the Complainant nor permitted to use the Complainant’s trademark. The Respondent is not commonly known by the name PITBULLTAX and he is not making a legitimate noncommercial or fair use of the disputed domain name. Additionally, the Complainant asserts, the Respondent registered the disputed domain on November 26, 2020, over nine years after the Complainant registered its mark and more than a decade after the Complainant first adopted its trademark. The Complainant contends that the Respondent had actual knowledge of the Complainant’s mark, because on November 19, 2020, prior to registration of the disputed domain name, the Respondent licensed the Complainant’s software, which bore the PITBULLTAX mark. Moreover, the Complainant sent a cease and desist letter to the Respondent on June 25, 2021 but received no reply from the Respondent.
The Complainant also contends that the Respondent registered and used the disputed domain name in bad faith because the Respondent expropriated the entirety of the Complainant’s mark in the disputed domain name, adding only the term “relief”, and used extremely similar logos and design on his website. The Complainant asserts that this creates confusion because the disputed domain name is used in the highly related goods and services of tax debt software and tax debt resolution services. The Complainant claims that these facts support a finding that the Respondent intended to mislead consumers into believing his website was officially connected to the Complainant’s mark and reputation.
B. RespondentThe Respondent claims that his services are completely distinct from the Complainant’s software product, that the parties’ respective offerings do not compete with each other, and that consumers therefore will not likely be confused. The Respondent asserts that the parties also service different customers – the Complainant is selling tax debt resolution software to tax professionals whereas the Respondent is selling tax debt and planning services to individuals.
The Respondent also asserts that the Complainant has failed to show that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and used the disputed domain name in bad faith. The Respondent claims that he has been using the PIT BULL TAX RELIEF mark since 2009, prior to the Complainant’s first adoption of the PITBULLTAX trademark. In support of that assertion, the Respondent submitted a copy of a flyer that the Respondent says he has been using since 2011, a copy of which is shown below.
C. Complainant’s Supplemental SubmissionThe Complainant disputes the Respondent’s claim that he has used the PIT BULL TAX RELIEF trademark as early as 2009. The Complainant pointed out that the flyer that the Respondent submitted has a reference to the disputed domain name on it, which proves that the flyer was not used in 2011 (since the disputed domain name was first registered in 2020).
The Complainant asserts that further proof of the Respondent’s bad faith is the fact that the filed a service mark application with the UPSTO on August 5, 2021, one day after this action commenced.
D. Respondent’s Supplemental SubmissionThe Respondent reasserts his claim that he has used the PIT BULL TAX RELIEF trademark since 2009 and claims to have filed a trademark application in 2009 that was subsequently abandoned. The Respondent did not provide any details on that alleged 2009 trademark application, nor did the Respondent reply to the Complainant’s comments on the inconsistencies on the alleged 2011 flyer.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has submitted evidence that it owns a federal registration for the mark PITBULLTAX. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes in section 1.2, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” The Panel also notes that the Respondent does not refute the fact that the Complainant owns valid trademark rights.
The Respondent argues that the disputed domain name is not confusingly similar to the PITBULLTAX mark because the parties’ products and services are different and do not compete. This argument at minimum reflects a misunderstanding of the “confusing similarity” element of the first factor. The test is not whether the disputed domain name and the trademark are likely to be confused in the marketplace (as would be measured in a trademark infringement case); rather, as the WIPO Overview 3.0 explains in section 1.7, the first element is primarily a standing test that involves only a reasoned comparison between the Complainant’s trademark and the disputed domain name:
“It is well accepted that the first element [of the Policy] functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. . . .
“[I]n cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
In light of these long-accepted principles, and, indeed, common sense, the fact that the disputed domain incorporates the Complainant’s mark in its entirety is enough to compel a finding that the disputed domain is confusingly similar to the Complainant’s trademark for purposes of the first element of the Policy. That is true even if other words, like “relief”, are added to the trademark to form the disputed domain name because “the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” WIPO Overview 3.0, section 1.8.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark under the first element of the policy.
B. Rights or Legitimate InterestsOnce a complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The respondent may establish such rights or legitimate interests by demonstrating any of the following:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent argues that it has rights and legitimate interests in the disputed domain name pursuant to paragraph 4(c)(i) of the Policy because, before any notice of the dispute, the Respondent had been using the disputed domain name in connection with a bona fide offering of services. In particular, the Respondent claims to have been using the PIT BULL TAX RELIEF trademark since 2009, and in support, the Respondent submits a copy of a flyer that includes the PIT BULL TAX RELIEF name that it claims to have been using since 2011. The Respondent also relies on his pending trademark application for PIT BULL TAX RELIEF (which was filed on August 5, 2021).
The Respondent’s assertions in this regard are not credible. As the Complainant quite properly noted, the flyer undermines, rather than supports, the Respondent’s assertion because the alleged 2011 flyer includes a reference to the disputed domain name, which was not registered until 2020. Tellingly, in his supplemental submission, the Respondent did not try to explain that misstatement, nor did the Respondent provide any other documentary evidence to substantiate his claim that he used the PIT BULL TAX RELIEF trademark prior to his registration of the disputed domain name. The Respondent’s silence in that regard spoke volumes.
Further undermining the Respondent’s credibility is the timing of the Respondent’s registration of the disputed domain name. The record shows, and the Respondent admits, that the Respondent not only knew about the Complainant’s trademark and website prior to his registration of the disputed domain name, but he was actually a licensee of the Complainant’s software prior to registering the disputed domain name. The Respondent states in his Response that he found the Complainant’s website while he was in the process of building his website. He admits that he registered as a licensee of the Complainant’s software for a period of roughly six months. The Respondent did not dispute the Complainant’s statement that the Respondent first signed up for a seven-day free trial on or about November 19, 2020, and then became a full subscriber to the Complainant’s software, beginning on or about November 23, 2020. Notwithstanding the Respondent’s actual knowledge of the Complainant, its website and its trademark, the Respondent registered the disputed domain name a few days later, on November 26, 2020. The suspicious timing of the disputed domain name registration undermines any claim that the Respondent had prior rights or legitimate interests in the PIT BULL TAX RELIEF name.
Also undermining the Respondent’s claims and the Respondent’s credibility is the Respondent’s citation in his Response to his trademark application for PIT BULL TAX RELIEF. In connection with his assertion of rights, the Respondent referenced that application in his Response, but he failed to note that the Respondent filed that application with the USPTO only after he received notice of the Complaint in this action. That application (which has not yet been examined by the USPTO) does nothing to establish any rights for the Respondent, as it is well settled that a pending application alone is entitled to no deference. WIPO Overview 3.0, section 1.1.4. Moreover, the timing of the application smacks of a bad faith attempt to gin up rights after the filing of the Complaint. Furthermore, the application itself contradicts the Respondent’s assertions because, in the application, the Respondent claimed that his first use and first use in commerce of the PIT BULL TAX RELIEF trademark for the listed services (“financial services, namely, debt resolution services in the nature of debt settlement and elimination”) was November 19, 2020 (not 2009 as the Respondent has subsequently claimed to this Panel). The Complainant expressly discussed this contradiction in its supplemental submission; in his sur-reply, the Respondent did nothing to explain the contradictory assertions that he made to the USPTO and to this Panel. The only thing the Respondent did say was that he had applied to register PIT BULL TAX RELIEF back in 2009 and subsequently abandoned that application, but the Respondent provided no evidence whatsoever to substantiate that assertion, and the Panel has not found any evidence of such an application through its own review of the USPTO database of trademarks. In any event, even if there was an abandoned application in 2009, an abandoned application would not be evidence of trademark rights.
To the extent the Respondent’s claims are read as an assertion that his use of the PIT BULL TAX RELIEF mark in late 2020 demonstrates his rights or legitimate interests because that use occurred prior to notice of this dispute, the Panel disagrees. That is because any such use would not have been bona fide. As noted above, the Respondent adopted the disputed domain name in 2020 with knowledge of the Complainant’s trademark rights. Further, given the close similarity between the marks and the disputed domain name, and between the parties’ goods and services, any such use would likely constitute trademark infringement. An infringing use is not a bona fide use. On AG, On Clouds GmbH v. Nguyen Luu, Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Vuong Hoang, AN NGUYEN, NEO CORP., and Ngoc Tam Nguyen, WIPO Case No. D2021-1714. Therefore, even if the Respondent did make some use of the PIT BULL TAX RELIEF name before commencement of this dispute, that is not a bona fide use that supports a finding of rights or legitimate interests.
In sum, these facts all support the findings that the Respondent did not make a bona fide use of the PIT BULL TAX RELIEF name prior to notice of this dispute, and that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has established the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The facts recounted above also support a finding that the Respondent registered and is using the disputed domain name in bad faith. At the time the Respondent registered the disputed domain name, he was well aware of the Complainant and its PITBULLTAX software; in fact, the Respondent was a registered licensee of the Complainant. Although the Respondent repeatedly stresses that his use of the disputed domain name is not infringing and not likely to cause confusion, the Panel disagrees: tax software and tax relief services are closely related, the disputed domain name is confusingly similar to the Complainant’s marks and the marks are nearly identical, and the Panel believes that confusion is not only likely but inevitable. As such, the Respondent’s registration and use of so similar a domain name for such similar services is the kind of paradigmatic bad faith referenced by Paragraph 4(b)(iv) of the Policy.
The Panel therefore concludes that the Respondent registered and used the disputed domain name in bad faith.
7. DecisionFor 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
David H. Bernstein
Sole Panelist
Date: October 15, 2021