The Complainant is Intuit Inc., Legal Department of Mountain View, United States of America (“United States”), represented by Fenwick & West, LLP, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, United States / Markus Tamm of Jelgava, Latvia.
The disputed domain name <terbotax.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
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 3, 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 the Complainant on September 7, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The 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 the Respondent of the Complaint, and the proceedings commenced on September 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2018.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on October 10, 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.
The Complainant, Intuit Inc., is a provider of business and financial management software and online solutions. One of the Complainant’s flagship products is its TURBOTAX tax software and online solutions that enable individuals and small business owners to prepare and file their personal income taxes and small business taxes, respectively.
The Complainant is the holder of a multitude of trade- and service mark registrations across various jurisdictions throughout the world for the mark TURBOTAX, which it uses in connection with its business. The Complainant’s trademark portfolio includes, inter alia, the following trade- and service mark registrations:
- TURBOTAX, word mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 1369883 on November 12, 1985 in class 9;
- TURBOTAX, word mark registered with the USPTO under No. 2512370 on November 27, 2001 in class 35;
- TURBOTAX, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 006630404 on January 29, 2009 in classes 9, 35, 36 and 42;
The Disputed Domain Name was registered on April 23, 2002. The Disputed Domain Name redirects to the domain name <ww1.terbotax.com> which provides links to third party websites offering tax products and services.
The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark and that this constitutes a clear case of typosquatting.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i) The disputed 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 disputed domain name; and
iii) The disputed domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements.
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks and service marks in which the Complainant has rights. The Complainant’s TURBOTAX mark has been registered and used.
The Disputed Domain Name incorporates the Complainant’s TURBOTAX mark in its entirety with the sole exception of substituting the letter "u" with the letter "e". The substitution of a mere letter does not significantly affect the appearance or pronunciation of the Disputed Domain Name. This practice is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar marks to the Complainant’s trademark (See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); Mapfre S.A. y Fundación Mapfre v. Josep Sitjar, WIPO Case No. D2011-0692; Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050).
Accordingly, the Complainant has made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. There is a high likelihood that the Respondent is making “commercial gain” by virtue of randomly redirecting Internet users to websites offering products or services connected or identical to the products and services marketed by the Complainant. Commercial gain appears to be based on the misleading diversion of some consumers, to the extent they navigate to the Disputed Domain Name because they believe it is associated with the Complainant. The likelihood that Internet users are misled is increased by the content of the websites to which the Disputed Domain Name redirects, which includes competing services. Evidently, such a use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent had the opportunity to demonstrate his rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
In the present case, the Panel holds that the substitution of the letter “u” with the letter "e" in the term TURBOTAX is a form of typosquatting which is evidence of bad faith (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; and Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager, WIPO Case No. D2011-1951).
It is therefore unlikely that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. Moreover, the Disputed Domain Name is programmed to redirect to different websites offering services identical or similar to the Complainant’s services. As a result, the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name.
The Respondent is using the Disputed Domain Name to randomly redirect to other websites offering services identical or similar to those of the Complainant. The Panel finds that such a use indicates the intentional attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.
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 <terbotax.com> be transferred to the Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: October 24, 2018