WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Taxassist Direct Limited v. Hugh Murphy
Case No. DIE2008-0002
1. The Parties
The Complainant is Taxassist Direct Limited of Norwich, Norfolk, United Kingdom of Great Britain and Northern Ireland, represented by Brand Protect LLP, United Kingdom of Great Britain and Northern Ireland.
The Registrant is Hugh Murphy, of Cork, Ireland.
2. The Domain Name and Registrar
The disputed domain name <taxassist.ie> is registered with IE Domain Registry Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2008 and the hard copy Complaint was received at the Center on May 7, 2008.
On May 2, 2008, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue.
On May 7, 2008, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details.
The Complainant filed an amendment to the Complaint and the Center acknowledged receipt of the Amended Complaint on May 9, 2008. The hard copy was received on May 14, 2007.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .IE Domain Name Dispute Resolution Policy (the “IEDR Policy”), the Rules for .IE Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Registrant of the Complaint, and the proceedings commenced on May 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2008. The Response was filed with the Center on June 13, 2008.
The Center appointed James Bridgeman as the sole panelist in this matter on July 24, 2008. 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
The Complainant is a limited company registered in England and Wales. It was incorporated on November 14, 1995 and has since carried on business as a franchisor of accountancy outlets.
The Complainant is the registered owner of the following Community Trade Marks:
CTM figurative mark TAX ASSIST DIRECT THE ACCOUNTANCY AND TAX SERVICE FOR SMALL BUSINESSES and Device registration number 3007192 registered on August 26, 2004 in classes 9, 16 and 35;
CTM word mark TAX ASSIST ACCOUNTANTS registration number 5262803 registered on October 3, 2006 in classes 9, 16 and 35;
CTM figurative mark $ TAXASSIST ACCOUNTANTS THE ACCOUNTANCY AND TAX SERVICE FOR SMALL BUSINESS registration number 5277629 registered on March 6, 2008 in classes 9, 16 and 35;
CTM figurative mark £ TAXASSIST ACCOUNTANTS THE ACCOUNTANCY AND TAX SERVICE FOR SMALL BUSINESS registration number 5277579 registered on January 14, 2008 in classes 9, 16 and 35;
CTM € TAXASSIST ACCOUNTANTS THE ACCOUNTANCY AND TAX SERVICE FOR SMALL BUSINESS registration number 6728638 registered on March 3, 2008 in classes 9, 16 and 35.
The Complainant is the registered owner of the following United Kingdom registered trade marks:
UK registered trade mark £ TAD TAXASSIST DIRECT and Device, registration number 2052091 registered on October 11, 1996 in class 35;
UK registered trade mark £ TAXASSIST DIRECT THE ACCOUNTANCY AND TAX SERVICE FOR SMALL BUSINESS and Device registration number 2307153 registered on March 21, 2003 in class 35;
UK registered trade mark series of two TAXASSIST DIRECT registration number 2381000 registered on February 22, 2008 in class 35.
The Complainant is the owner of the following pending applications at the United Kingdom Intellectual Property Office:
UK trade mark application number 2481629 in respect of TAXASSIST ACCOUNTANTS filed on March 5, 2008 requesting registration in classes 9, 16 and 35;
UK trade mark application number 2481631 in respect of a series of two marks TAXASSIST filed on March 4, 2008 requesting registration in classes 9, 16 and 35;
UK trade mark application number 2481632 in respect of TAXASSIST filed on March 4, 2008 requesting registration in classes 9, 16 and 35;
UK trade mark application number 2481633 in respect of TAX ASSIST filed on March 4, 2008 requesting registration in classes 9, 16, and 35;
UK trade mark application number 2481634 in respect of a series of two marks TAX ASSIST ACCOUNTANTS filed on March 5, 2008 requesting registration in classes 9, 16 and 35;
UK trade mark application number 2481856 in respect of $ TAXASSIST ACCOUNTANTS THE ACCOUNTANCY AND TAX SERVICE FOR SMALL BUSINESS filed on March 6, 2008 requesting registration in classes 9, 16 and 35..
The Complainant is the owner of the following domain names: <taxassist.com>; <taxassist.co.uk>; <taxassist-accountants.co.uk>; <taxassist.co.uk>; <taxassist.com>; <taxassist.eu.com>; <taxassist>.net>; <taxassist.org>; <taxassist.org.uk>; <taxassistaccountants.com>; <taxassistaccountants.eu>; <taxassistaccountants.info>; <taxassistaccountants.net>; <taxassistaccountants.org>; <taxassistaccountants.org.uk>; <taxassistdirect.biz>; <taxassistdirect.info>; <taxassistdirect.org>; <taxassistforsmallbusiness.biz>; <taxassistforsmallbusiness.co.uk>; <taxassistforsmallbusiness.com>; <taxassistserver.co.uk>; <taxassist-accountants.ie>; <taxassistaccountants.ie> and has websites established at the <taxassist.com>; <taxassist.co.uk>; <taxassist-accountants.co.uk>.
The Registrant is a partner in a firm of accountants based in Cork providing taxation, accountancy and businesses consultancy services to customers. The provision of taxation assistance to customers is crucial to growing the taxation area of Registrant’s practice.
The Registrant registered the domain name at issue <taxassist.ie> on July 30, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant submits its CTM registrations and United Kingdom registered trade marks referred to above are valid as “Protected Identifiers” within the meaning of the IEDR Policy as they are trade marks protected on the “Island of Ireland”.
The trade marks that are the subject of the CTM registrations are protected in both jurisdictions in Ireland, and the UK registered trade marks are protected in Northern Ireland.
In addition to its rights in the cited registered trade marks the Complainant submits that it has common law rights capable of protection by the law of passing off in the goodwill that it has established by the use of the signs TAXASSIST, TAXASSIST ACCOUNTANT, TAXASSIST DIRECT LIMITED, TAXASSIST.COM (referred to as the “TAXASSIST signs”) in all parts of the United Kingdom that it is capable of enforcing using the tort of passing off. The Complainant further submits that it may have protectable rights in its goodwill in the Republic of Ireland.
In this regard the Complainant refers to the substantial business that it has established using said signs. In the financial year 2006, the Complainant’s business had a turnover of £13,310, 601. This turnover was achieved by its franchisees throughout the United Kingdom. This turnover was attributable, in full, to the goodwill owned by the Complainant. In the same financial year the Complainant earned franchise fees totalling £2,126,239.00 from its 156 franchisees throughout the United Kingdom for the use of its intellectual property, and in particular, the above referenced TAXASSIST signs. Those franchisees dealt with approximately 22,000 businesses across the United Kingdom.
In order to attract customers and enhance the reputation of its business and goodwill using said TAXASSIST signs, the Complainant spends approximately £286,748.00 on advertising annually in various media including advertising in Yellow Pages, the Complainant’s website established at the “www.taxassist.com” address, newspaper advertising, radios, posters, radio advertising, leaflets, shop fronts, vehicles and exhibitions..
Each year, according to the publishers of Yellow Pages, the advertisements that the Complainant places with that company are seen by nearly 20 million individuals in Britain. It advertises with that company on a national basis. The Complainant has submitted a spreadsheet of the Yellow Pages publications in which the Complainant places advertisements every year together with an example of such an advertisement as an annex to the Complaint.
The Complainant has also furnished evidence that it has received approximately 160,000 visitors to its two main websites that it has established for its franchisees and members of the public at “www.taxassist.co.uk” and “www.taxassistaccountants.co.uk”. The Complainant submits that the information has been independently verified by Google. The report states that there were 255,229 visits by 157, 999 absolute visitors to the <www.taxassist.co.uk> website in the period from April 16, 2007 to April 15, 2008 and 4,214 visits by 3,380 absolute unique visitors to the website established at “www.taxassistaccountants.info”.
The Complainant has furnished examples of newspaper articles and advertisements referring to the Complainant’s business carried on using the TAXASSIST marks including a copy of an article published in the Daily Express in November 2006 (circulation 774,665 per day in November 2006 – source Daily Mail Group Trust), an example of an advertisement placed in the publication Financial World, an article published in The Business in March 2008.
Each quarter each of the Complainant’s franchisees receives a publication called “Topical News” that advises the Complainant’s franchisees of news that would be of interest to recipients of their services. The Complainant helps its franchisee to keep abreast with developments in the areas of employment and human resources. The Complainant has published these and other titles such as “Shop Front News” for many years which have contributed to the Complainant’s goodwill and the goodwill owned by the Complainant in the TAXASSIST signs.
The Complainant’s franchisee’s offices have distinctive corporate livery and the Complainant convenes an annual conference held for its franchisees.
As a result of its substantial goodwill, the Complainant is recognized by professionals in the accountancy, banking and many other professions.
The Complainant submits that the domain name in dispute is identical to a number of its trade marks and is misleadingly similar to the remaining registrations.
In this regard the Complainant submits that this Panel should follow the test applied by Mr. Adam Taylor in Palmerston Limited, Hutchison 3G UK Limited, Hutchison 3G Ireland Limited and Hutchison Whampoa Limited v. Alan Mahon, WIPO Case No. DIE2005-0001 in which the learned panel decided that the words “misleadingly similar” as used in paragraph 1.1.1. of the IEDR Policy are to be given the same meaning as given to the words “confusingly similar” when used in Article 8 CTMR Community Regulation 40/94, Section 10 the Trade Marks Act 1994, section 14 the Trade Marks Act 1996 and the European Court of Justice in Sabel v Puma (C-No. 251/95 of November 11, 1997).
In that case, the European Court of Justice held that “in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison must be based on the impression given by the marks, bearing in mind in particular, their distinctive and dominant elements”.
The Complainant submits that in the United Kingdom, domain names may be registered as trade marks subject to the usual criteria of the Trade Marks Act. Elements of the domain name such as “.com” or “.co.uk” are considered to be totally non-distinctive, much in the same way as “Ltd” and “Plc”. The Complainant cites Chapter 3 of The Trade Marks Manual, published by the United Kingdom Intellectual Property Office (“UKIPO”) dealing with examination of UK trade mark applications in support of this assertion.
The Complainant submits that for the purposes of making a comparison between the domain name in dispute and the Complainant’s Protected Identifiers the suffix “.ie” is to be considered non distinctive. The Complainant cited the decision of the European Court of Justice in S.A. Société LTJ Diffusion v. Sadas Vertbaudet SA (Case C-291 /00) [2003] F.S.R. 34 in relation to whether two marks were to be considered “identical” (for the purposes of Article 8 (1) (a) CTMR and section 10(1) Trade Marks Act 1994). The Complainant submits that the European Court of Justice concluded that a sign is identical with a trade mark “where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer”.
The Complainant proceeded to analyse each of its above referenced trade marks and submitted that the domain name at issue is identical to what it describes as “marks:
number 2481631 “TAXASSIST” and “taxassist”; and
number 2481631 “TaxAssist”, and
number 2481633 “Tax Assist”.
[It is noted that the Complainant is incorrect in claiming that these are registered trade marks as the evidence submitted by the Complainant indicates that they are merely pending applications.]
The Complainant submits that the domain name is misleadingly similar to its registered marks.
The Complainant further submits that it has common law rights in the above marks that are protected by the law of passing off. The Complainant has proven that it owns goodwill in the words “TaxAssist”, “taxassist” and “TAXASSIST”.
In the case British Telecommunications plc v. One in a Million ([1999] 1 W.L.R. 903) the Court of Appeal found that domain names were instruments of deception capable of being protected by the tort of passing off.
The mere fact that the Registrant has registered the domain name in dispute which is identical or very similar the Protected Identifiers listed above, allows a court to infer that he intends to use himself or equip another with an instrument of fraud. If the Panel makes this inference then the Complainant is entitled to succeed in this Complaint.
The Complainant submits that in Even Warnink BV v. J Townsend & Sons (Hull) Ltd ([1979] A.C. 731) Lord Diplock held that an action for passing off is typically grounded on the likely consequences of the defendant’s misrepresentation rather than what the defendant intended.
An implicit representation of the Registrant is that he is connected with or has been licensed by the Complainant to register the domain name. Such a representation is false and misleading. The Registrant has never received any inducement, encouragement, consent or licence to register the domain name in dispute. In fact as soon as the Complainant discovered that the Registrant had registered the domain name in dispute, it took immediate steps to recover it.
Another potential damage to the Complainant’s goodwill is that any accountancy service using the domain name in dispute that may be inferior to the services supplied by the Complainant using the domain name in dispute would cause damage to the goodwill owned by the Complainant. The association of services provided by the Registrant with the services provided by the Complainant may be injurious as members of the public on the island of Ireland may assume a connection or association between the Complainant and the Registrant. The mere registration of the domain name in dispute by any other person or economic entity other than the Complainant is injurious to the goodwill owned by the Complainant.
In the premises, the Complainant is entitled to rely on the tort of passing off in the United Kingdom or Ireland to protect the Complainant’s goodwill in the TAXASSIST signs.
Alternatively, the Complainant submits that by virtue of Article 6 Quinquies of the Paris Convention for the Protection of Industrial Property (March 20, 1883, as revised at Brussels on December 14, 1900, at London on June 2, 1934, at Lisbon on October 31, 1958, at Stockholm on July 14, 1967 and as amended on September 1979) the Complainant can rely on the fact that TAXASSIST is a “Well Known Mark” as both the United Kingdom and the Republic of Ireland are members and signatories of the said Paris Convention. “The result of this is the Complainant is entitled to prohibit the use of a TAXASSIST by the Registrant (sic) where his use constitutes a reproduction or imitation of considered (sic) by the competent authorities of Ireland of use of “taxassist.ie” rely on the reputation gained in the United Kingdom to protect it’s the use or intended use of the Domain name in dispute in Ireland.” (sic)
The Complainant notes that as the Registrant is a “qualified Chartered Accountant” it is probable that he was aware of the Complainant’s business when he registered the domain name in dispute. Furthermore, it is also likely that he registered the domain name in dispute either with the intention of disrupting the Complainant’s potential business in Ireland or with the intention of improving his negotiating position in the impeding negotiations concerning the Master Franchisee with the Complainant.
The Registrant purchased the domain name in dispute in July 2007.
In October 2007 he sent an email to Complainant in which he stated that he had just come across the Complainant’s website and that he believed “taxassist to be a good [franchise] opportunity.” He stated that he would be interested in “discussing the possibility of rolling out taxassist to the Irish market.”
There then followed a protracted period in which discussions where held concerning the suitability of the Registrant as the “Master Franchisee” in the Republic of Ireland. These discussions faltered in March 2008 when the Registrant decided that the franchise fees requested by the Complainant for the Republic of Ireland Master Franchisee was too expensive. When the Registrant was asked by the Complainant in February 2008 if he had purchased the domain name in dispute, he replied that “he owns “www.taxassist.ie” but thinks he has every legal right to own it. He bought it a number of years ago and would appreciate a letter breaking down the reasons why we have a right to it.”
On 10 March 2008, the Complainant’s representative wrote to the Registrant at his address in Cork and requested that he assign the domain name in dispute to the Complainant. A copy of the said letter is exhibited as an annex to the Complaint. The Registrant has not replied to that letter and has not assigned the Domain name in dispute to the Complainant.
The Complainant submits that the Registrant has no rights in law or legitimate interest in respect of the domain name in dispute.
Referring to a witness statement submitted as an annex to the Complaint, the Complainant submits that the Registrant approached the Complainant on the October 29, 2007, in an email sent from a website established at “ www.whichfranchise.com” address on which the Complainant advertises for potential franchisees. The Registrant wrote the following:
“Hi I just came across your website on the internet and think taxassist looks like a good opportunity. I would be interested in discussing the possibility of rolling out taxassist to the Irish market. I am a qualified chartered accountant and tax consultant currently working as a tax manager in a big four firm. I have been working in tax for over 7 years. I also have a business partner who qualified as an chartered accountant also with another big four firm (specialising in the area of audit and accounting) who would potentially be interested in getting involved. Let me know your thoughts on rolling out the organisation to the Irish market? The basis for the preparation of accounts in Ireland and the UK would be the same and I have a strong knowledge of Irish taxes. Kind regards Hugh”
In the Complainant’s view, it is clear from the information above that the Registrant was contemplating the acting as a master franchisee on behalf of the Complainant for the Republic of Ireland market.
There then followed a period of negotiations between the Registrant and the Complainant as regards the franchising opportunities for the Registrant in Ireland using the Complainant’s marks.
On November 12, 2007, the Complainant registered the domain names <taxassistaccountants.ie> and <taxassist-accountants.ie>. The Complainant was unable to register <taxassist.ie> because it had already been registered by the Registrant.
On February 29, 2008, the Complainant requested confirmation of the Registrant that he was the person who held the domain name in dispute. The same day, the Registrant replied by email and confirmed that “Yes, I hold the domain name”. The Complainant requested that the Registrant transfer the Domain name in dispute to it.
On March 7, 2008, the Complainant was informed by the Registrant that the price requested for the master franchise was too much and that he did not want to take up the opportunity offered by the Complainant. Again the Complainant requested the return of the Domain name in dispute. The Registrant refused to transfer the domain name. In a telephone conversation between Ms. Westgarth (on behalf of the Complainant), the Registrant said that he thought that he had every right to own and keep <taxassist.ie>. He added that he had purchased the domain name in dispute “a number of years ago” and he added that he would appreciate a letter detailing why the Complainant has a right to own the domain name in dispute.
Ms. Westgarth’s contemporaneous note states: “Mr Murphy added that ‘he is prepared to come to some arrangement regarding transferring the domain name over to us, but he didn’t just want us to pay what he paid for it – he would want to make some money on the sale’.”
In March 2008, the Complainant instructed its lawyers to write to the Registrant offering to pay the Registrant’s reasonable expenses. The Registrant failed to reply to that letter or transfer the domain name to the Complainant.
The Complainant submits that the Registrant has no legitimate interest in the domain name in dispute save for the contractual arrangement between the Registrar and the Registrant of the domain name in dispute. Even that contractual arrangement is subject to the earlier rights in the form of registered and unregistered trade marks and passing off rights owned by the Complainant prior to the date of registration that being in July 2007.
The fact that the Registrant has negotiated with the Complainant with respect to the licensing of rights in the form of a franchise agreement implies that the Registrant accepts that he does not possess sufficient rights in order to own the domain name in dispute or use the reputation associated with the Protected Identifiers or the goodwill owned in the TAXASSIST signs.
During the negotiations between the Registrant and the Complainant regarding the franchise opportunities in the Republic of Ireland, the Complainant never consented, acquiesced, licensed or allowed the Registrant to either register the domain name in dispute or continue to register the domain name in dispute. At all material times the Registrant has asserted no rights to the domain name in dispute beyond the said contractual rights; nor has he asserted any rights in the Registered Trade Marks or the TAXASSIST signs.
The Complainant submits that the domain name in dispute was registered or is subsequently being used in bad faith
The IEDR Policy at paragraphs 1.1.3 and 2.1 and the Rules paragraph 3.4.8.3 give examples of what are to be considered a domain name registered or used “in bad faith”.
It is the Complainant’s assertion that contrary to the Registrant’s assertion that “I purchased the domain name some years ago”, the Registrant only purchased the domain name in dispute in July 2007.
The Complainant also asserts that the Registrant purchased the domain name in dispute when he had become aware of the importance and pre-eminence of the Complainant’s Protected Identifiers. The Registrant is an accountant and registered the domain name in dispute perhaps in order to improve his chances of success in negotiations to secure the master franchise for the Republic of Ireland later that year.
Thus, the Complainant submits that the domain name in dispute was registered and is being used by the Registrant in order to prevent the Complainant reflecting its Protected Identifiers and goodwill in which it owns rights. As has already been said, the Complainant owns registered trade marks and applications for the same in the words “Taxassist” (and many derivatives therefore) and owns goodwill in the TAXASSIST signs that it can protect on the island of Ireland.
The fact that the Registrant has demanded a sum of money from the Complainant which is in excess of the sum the Registrant paid for the domain name in dispute shows that even if the domain name in dispute was not registered in bad faith in July 2007, given the fact that the Registrant has demanded an inflated price for the domain name in dispute shows that since the date of that demand (March 2008) he now holds the domain name in dispute in bad faith. A reason that can be inferred from the Registrant’s reluctance to transfer the domain name in dispute to the Complainant when repeatedly requested so to do is that he intends to disrupt the Complainant’s business activities on the island of Ireland by representing to the public there that he is associated with or licensed by the Complainant. As such the mere registration of the domain name in dispute by the Registrant has been made in bad faith.
A further motivation of the Registrant for continuing to hold the registration of the domain name in dispute is that the Registrant may be intending to create confusion of users of the Complainant’s services on the island of Ireland by inferring that the Complainant has licensed, endorsed, given permission or otherwise permitted the Registrant to use its Protected Identifiers or goodwill in which the Complainant has rights (and has proven it has rights). Such confusion would be contrary to public policy, Article 8 CTMR Community Regulation 40/94, Section 10 the Trade Marks Act 1994, section 14 the Trade Marks Act 1996 and the European Court of Justice in Sabel v Puma (C-No. 251/95 of November 11, 1997) as it leads to diminution in brands and trade marks of honest traders such as the Complainant. As such the mere registration of the domain name in dispute by the Registrant has been made in bad faith.
The mere registration by the Registrant of the domain name in dispute has diluted the reputation and damaged the goodwill of the Protected Identifiers. The mere registration of the domain name in dispute by the Registrant and not the Complainant has meant that the Protected Identifiers are not as unique as they were prior to the registration of the domain name in dispute. This lack of uniqueness means that the trade marks are not acting as a guarantee of origin that the services provided in relation to the Protected Identifiers and goodwill are provided uniquely with the licence or endorsement of the Complainant. As such the mere registration of the domain name in dispute by the Registrant has been made in bad faith.
In supplemental submissions the Complainant submits that this Administrative Panel should not admit the Response as the time period for computing the deadline for submission was miscalculated by the Center. The Complainant clarified that the telephone conversations between it and the Registrant had not been taped but that a written record had been kept. The Complainant also repeated some of the arguments already made in respect of the substantive issues.
B. Registrant
The Registrant submits that a number of matters raised in the Complaint are irrelevant to this case and have been included to mislead the process.
The Registrant submits that Complainant is not a recognized service provider of taxation or accountancy services in Ireland and has no presence in the Republic of Ireland and the Registrant had no knowledge of the business of Complainant in the UK when he registered the domain name in dispute.
When carrying out a Google search in October 2007 to see if Registrant’s domain name would come up near the top of the list of hits, the Registrant came across Complainant and contacted Complainant to see if there would be any benefit for Premier Accountants doing business with Complainant.
Following discussions with the Complainant and receipt of the Complainant’s prospectus, the Registrant realized that it was not a good business opportunity for his firm. The Complainant required a payment of a very high franchise fee in exchange for access to their business model and brand. On careful consideration of the prospectus it was clear that the Complainant was not familiar with taxation legislation in Ireland and was not in a position to provide such services to customers in Ireland.
The Registrant submits that he proposes to use the domain <taxassist.ie> to build up the taxation business of Premier Accountants. The Registrant submits that the Complainant does not have a recognized brand in Ireland and has not built up any goodwill in the Republic of Ireland. The Registrant denies passing off and submits that it is quite clear to customers who log on to his website established at the <taxassist.ie> address that they are dealing with Premier Accountants and not Complainant. It makes sense for Registrant’s firm Premier Accountants to have the website at the <taxassist.ie> address because the Registrant’s firm is in a position to provide these services to customers. The Registrant is a qualified tax consultant and chartered accountant and his business partner is also a qualified chartered accountant.
The Registrant submits that the use of the <taxassist.ie> domain name by the Complainant could mislead Irish customers because the Complainant is not in a position to provide these services to Irish clients until it appoints a master franchisor who is qualified to provide these services.
The Registrant further submits that the following arguments made in the Complaint have no relevance in this case and have been used as a deliberate ploy to mislead the proceedings:
The Complainant cites UK case law in relation to concept of “misleadingly similar” and also refers to how “taxassist.ie” is identically similar to trademark numbers 2481631 and 2481633. However, these trademarks were only applied for in March 2008, and so these trademarks have no relevance to this case and should be disregarded as the domain name at issue has been registered since July 2007.
The Complainant has two other Irish Internet domain names viz. <taxassist-accountants.ie> and <taxassistaccountants.ie>. These other domain names were registered on November 12, 2008. The Registrant had already registered <taxassist.ie> in July 2007. The Registrant submits that the domain names registered by the Complainant subsequent to the registration of the domain name at issue have no relevance to this case. They were registered by the Complainant in response to the registration of the domain name <taxassist.ie> by the Registrant.
The .ie domain names registered by Complainant resolve to a UK website established by the Complainant that does not provide relevant Irish tax expertise, assistance or advice as required. The Registrant submits that this is very misleading to any Irish customer who is looking to receive tax assistance for their business.
While the Registrant acknowledges that the Complainant has grown a successful business in the UK, the fact stands that the Complainant currently has no presence in Ireland (unless they have appointed a master franchisor since January 2008). In support of this assertion the Registrant refers to a copy of the letter he received from the Complainant’s Chief Executive in January 2008 which clearly shows they were still looking for a master franchisor at that date.
The Registrant submits that his firm Premier Accountants provides tax assistance to clients based in Ireland which is clearly a service that the Complainant is unable to provide to Irish customers unless they have appointed a person with the relevant qualifications since January 2008.
The Registrant refers to the letter received by Registrant from the Complainant’s representative in March 2008 that was exhibited as an annex to the Complaint. He submits that he did not respond to that letter because a number of the facts contained in the letter at the time were factually incorrect. Specifically the letter referred to the Registrant as registering <taxassist.ie> while negotiating the master franchise with the Complainant. This is completely incorrect as the Registrant registered the domain name at issue in July 2007 before he was even aware that Complainant existed.
The Registrant further states that he is extremely irate at the facts outlined in the witness statement of Ms. Westgarth submitted in support of the Complaint. At no stage during the course of his telephone conversation with the witness was the Registrant advised that the conversation was being recorded. Furthermore he also categorically denies making the statement that he was prepared to come to some arrangement regarding transferring the domain name over to the Complainant, but he didn’t just want the Complainant to pay what he paid for it – he would want to make some money on the sale as alleged in the Complaint.
The Registrant submits that the Complainant has deliberately adopted tactics to mislead the Administrative Panel and to make out that the domain <taxassist.ie> was registered in bad faith.
As part of the growth strategy for Premier Accountants the Registrant has also registered <etax.ie> and <irishtaxreturns.ie> on behalf of his firm. The Registrant’s firm also advertises its services through Google adwords. All of the domain names will ultimately lead to Premier Accountant’s website and it will be obvious to potential clients that they are dealing with Premier Accountants.
As part of Registrant’s marketing strategy for Premier Accountants the keywords include “tax assistance ireland” and “tax advice Ireland”.
The Registrant submits that the transfer of the domain name <taxassist.ie> to the Complainant would have an impact on the Registrant’s online targeting initiatives.
6. Discussion and Findings
Procedural Matter
The Registrant has argued that the Center has miscalculated the date for filing of the Response essentially arguing that because domain names can be registered on a 24/7/365 basis, every day is a working day. Having considered the arguments this Administrative Panel rejects these arguments. If the IEDR Policy had intended such an interpretation, it would not have been necessary to refer to “working days” as a reference merely to “days” would have been sufficient.
As such the Panel finds that the Response was duly filed within the Response period.
Substantive Matters
Paragraph 1 of the IEDR Policy places on the Complainants the obligation to prove that:
1.1.1 a domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and
1.1.2 the Registrant has no rights in law or legitimate interests in respect of a domain name; and
1.1.3 a domain name has been registered or is being used in bad faith.
Paragraph 1.3.1 of the IEDR Policy provides that “Protected Identifiers for the purpose of the Policy include trade and service marks protected in the island of Ireland”.
A. Identical or Misleadingly Similar
Many of the rights relied upon by the Complainant are either, pending applications or rights that accrued after the date of registration of the domain name in dispute on July 30, 2007 and as such merely serve to confuse the issues.
The Complainant has rights in a number of registered trade marks that incorporate the words “TAX” and “ASSIST”. These are descriptive words and the strength of the Complainant’s Rights in these registrations may not be the strongest. Nonetheless they are sufficient to establish that the Complainant has rights in these Protected Identifiers.
The Complainant also has established common law rights in the use of the mark TAXASSIST that appears to be protectable within Northern Ireland and possibly the Republic of Ireland.
Since the domain name in dispute is in the view of this Administrative Panel misleadingly similar to the Complainant’s CTM word mark TAX ASSIST ACCOUNTANTS registration number 5262803 registered on October 3, 2006, in classes 9, 16 and 35, the Complainant has satisfied the first element of the test in Paragraph 1 of the IEDR Policy and it is not necessary to consider the arguments proposed by the Complainant in relation to its other marks.
While the words “tax” “assist” are descriptive, they are the dominant element of the mark that is protected by the Complainant’s CTM registration number 5262803.
Since at least October 2007, the Registrant has been aware that the Complainant is engaged in franchising its business under its TAX ASSIST mark.
The Registrant became aware of the Complainant’s registered trade marks during the period of negotiations about the master franchise for the Republic of Ireland that commenced in October 2007 and terminated in March 2008.
Moreover, it would be inconsistent with the Complainant’s clear rights in the said CTM word mark TAX ASSIST ACCOUNTANTS registration number 5262803 registered on October 3, 2006, which predates the domain name registration, for the Registrant to have any subsequently acquired rights in the mark and because of the misleading similarity between the domain name at issue and the Complainant’s mark it follows that the Registrant has no rights or legitimate interest in the domain name.
There is a clear conflict between the parties as to whether the Registrant was aware of the Complainant’s business when the domain name was registered.
Given the Complainant’s established Internet presence through its websites and its registrations in particular of the domain names <taxassist.com> and <taxassist.co.uk> it is difficult to understand how the Registrant could have registered the domain name without becoming aware of the Complainant’s domain name registrations and websites.
Since the month of October 2007, the Registrant has been aware of the franchise business carried on by the Complainant using the TAXASSIST marks. In the course of his investigations, the Registrant became aware of the Complainant’s portfolio of registered trademarks, domain names and web sites.
Since that date the Registrant has been aware that any use by the Registrant of the domain name would cause damage to the Complainant’s goodwill, and on the balance of probabilities would infringe the Complainant’s rights in its CTM word mark registration.
There is a conflict in evidence as to whether the Registrant has offered to sell the domain name at a profit in excess of its out of pocket expenses incurred in the registration of the domain name. In the circumstances it is not necessary to make a decision on this point.
This Administrative Panel finds that the Registrant has been using the domain name in bad faith since some date between October 2007 and March 2008 and continues to use the domain name in bad faith.
In the circumstances the Complainant is entitled to succeed on its Complaint.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 5.1 of the .IE Policy and 14 of the Rules, the Panel orders that the domain name, <taxassist.ie> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: July 9, 2008