WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

HRB Royalty, Inc. v. Pro-Life Domains Inc.

Case No. D2003-1021

 

1. The Parties

The Complainant is HRB Royalty, Inc., a Delaware Corporation with a principal place of business in Nassau, Bahamas, represented by Piper Rudnick LLP, United States of America.

The Respondent is Pro-Life Domains Inc. of Bronx, New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <wwwhrblock.com> ("the Domain Name") is registered with Intercosmos Media Group, Inc., d/b/a DirectNIC.com ("Intercosmos").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2003. That same day, the Center transmitted by e-mail to Intercosmos a request for registrar verification in connection with the Domain Name. Also on December 23, 2003, Intercosmos transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 31, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 20, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on January 22, 2004.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 23, 2004. 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 H&R Block owns trademarks, service marks, trade dress and trade names related to "H&R Block" for tax return preparation and financial planning services (the "H&R Block Marks"). Those rights include numerous registrations issued by the U.S. Patent and Trademark Office, many of which have become incontestable. Since as early as January 1956 (well over 45 years), H&R Block has prominently used the H&R Block Marks in connection with its tax preparation and financial planning services. Complainant spends millions of dollars to advertise its services under the H&R Block Marks in the United States and worldwide, for example by way of newspapers, magazines, television, radio, trade publications, the Internet, signage and counters. Thus, the H&R Block Marks have become well known to the trade and public for H&R Blockís tax preparation and financial planning services. Respondent has never been authorized to use the H&R Block marks.

H&R Block operates its website at "www.hrblock.com". Consumers can access information about H&R Block and its products and services, and even file a tax return on-line via the website. The H&R Block Website is a vital and integral part of H&R Blockís worldwide tax preparation business.

Respondent uses the Domain Name to redirect Internet users to "www.abortionismurder.com", a site showing a photograph of an aborted fetus and anti-abortion information. The website also offers for sale anti-abortion videos and CDs.

Through correspondence, H&R Block informed Respondent about its rights in the H&R Block Marks and its infringing activities, and attempted to resolve this matter. Respondent failed to respond to H&R Blockís letters.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that the Domain Name is identical or confusingly similar to H&R Blockís Marks, Respondent has no rights or legitimate interests in the Domain Name, and Respondent registered and is using the Domain Name in bad faith.

B. Respondent

Respondent failed to reply to Complainantís contentions.

 

6. Discussion and Findings

Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques, WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is uncontested that H&R Block has established worldwide rights in its famous H&R Block Marks and name. The Domain Name is nearly identical and surely confusingly similar to "H&R Block" as well as Complainantís domain name <www.hrblock.com>. Respondent has made insignificant alterations to the core mark "H&R Block" by removing the ampersand in "H&R Block" and the period between "www" and "block" to derive <wwwhrblock.com>.

An ampersand is not a valid character in a domain name and its absence is not sufficient to prevent the Domain Name from being confusingly similar to Complainantís marks. AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553. Furthermore, "www" is the well-known acronym for "world wide web" and thus it has no distinguishing capacity in a domain name context. Deutsche Telekom AG v. Luis Javier Collazos, WIPO Case No. D2003-0371).

The use of "www" at the beginning of a domain name causes confusion whenever a very common and well-known typing error occurs, such as the typist omits the period (".") which would normally separate a domain name from the "www" field. Id.

The Panel therefore holds that Complainant has established element (i) above.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. It is undisputed that Complainant has not licensed or otherwise permitted Respondent to use the H&R Block Marks in any manner including as a domain name. Respondentís only use of the Domain Name is an infringing one -- to link to the "www.abortionismurder.com" website. The Chase Manhattan Corporation et al. v. John Whitely, WIPO Case No. D2000-0346 ("An infringing use of Complainantís trademark can not give rise to a legitimate right or interest on the part of Respondent.").

Where, as here, the Complainant has raised a prime facie presumption of the Respondentís lack of such right or interest, and Respondent has failed to rebut that presumption, the Panel is satisfied that the Complainant has carried its burden of proving that Respondent has no legitimate interest in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product."

These criteria are not exclusive and the panel may conclude that the Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.

Respondent is an habitual typosquatter and cybersquatter who uses domain names comprised of confusingly similar and well-known marks to link to websites including anti-abortion websites. See, e.g., Fox News Network, L.L.C. v. Pro-Life Domains, Inc., WIPO Case No. D2003-0335; State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432. On the particular anti-abortion website at issue, Respondent furnishes anti-abortion information and materials and sells CDís and videotapes relating to the topic. It is undisputed that Respondent, once again, registered and used a domain name, one almost identical to Complainantís world famous mark, for the sole purpose of intentionally diverting Internet users from H&R Blockís website to Respondentís anti-abortion website for commercial gain. This constitutes bad faith registration and use of the Domain Name under Paragraph 4(b)(iv) above. Indeed, Respondentís typosquatting, alone, is a recognized indicator of bad faith. See National Association of Professional Baseball Leagues v. John Zuccarini, WIPO Case No. D2002-1011 ("Typosquatting is inherently parasitic and of itself evidence of bad faith."). It is hardly coincidental that Respondent registered a domain name comprising a common alteration of H&R Blockís famous marks in order to divert internet traffic from H&R Blockís site to its anti-abortion site. Thus, pursuant to Paragraph 4(b)(ii), Respondent has also acted in bad faith by seeking to prevent Complainant from reflecting its trademark in a corresponding domain name.

The Panel therefore holds that the Complainant has established element (iii) above.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wwwhrblock.com> be transferred to the Complainant.

 


 

Harrie R. Samaras
Sole Panelist

Date: March 8, 2004