WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HRB Royalty, Inc. v. Charlenia Owens
Case No. D2007-1656
1. The Parties
The Complainant is HRB Royalty, Inc., Nassau, Bahamas, represented by Berkowitz Oliver Williams Shaw & Eisenbrandt LLP, United States of America.
The Respondent is Charlenia Owens, Trenton, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ezrapidrefund.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2007. On November 12, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing contact details. 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 November 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2007. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 13, 2007. The Respondent did not submit any Response.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on December 24, 2007. 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 paragraph 7 of the Rules.
4. Factual Background
In the absence of a Response the facts are set out in the Complaint.
The Complainant is HRB Royalty, Inc., a Delaware Corporation. It is a wholly owned indirect subsidiary of H&R Block Inc., and is part of a family company (collectively H&R Block) make up the largest provider of individual income tax preparation services in the United States. H&R Block also provide additional goods and services in the United States and internationally.
H&R Block is primarily in the business of preparing tax returns for consumers from office locations operated by the H&R Block family of companies and/or their franchisees and through its proprietary tax preparation software. Entities within the H&R Block family also provide personal financial planning, mortgage services and banking services. H&R Block Inc., the Complainant’s ultimate parent company is a Fortune 500 company and is currently listed on the New York Stock Exchange as “HRB”.
The Complainant itself and through its direct and indirect licensees has used and owned the trademark RAPIDREFUND and related marks (the “marks”), since at least 1986 in connection with H&R Block’s tax services business. The Complainant and its affiliates own multiple trademark registrations for the marks in the United States and internationally, including United States patent and trademark office registrations Nos. 2637032 and 1502530. Copies of a United States Patent and Trademark Office print out of these trademarks are exhibited at Annex 6 to the Complaint. The Complainant submits that its rights in these marks are incontestable and refers to 15 usc Section 1065 to support this and which is set out at Annex 7 to the Complaint.
The Complainant submits that it has expended considerable effort and made extensive expenditure to promote its business using the marks and the attendant tax services offered in connection with the marks.
According to the Complainant the Respondent currently owns and operates a website using the domain name <exrapidrefund.com>. It submits that the Respondent is using the domain name to market indirectly a competing service. Evidence of this is set out at Annex 3 to the Complaint. At Annex 3, there is a reference to a company called Akeja Tax Services Inc., described as a “spok global corporation company”. It appears to promote rapid (tax) refund specialists and obtaining maximum refunds for its clients. It states that it will get “the best refund no matter how simple or complicated the return may be”.
The history of the dispute is that the Complainant discovered the Respondent’s domain name through a reverse Whois search. It sent a cease and desist letter dated August 1, 2007 informing the Respondent that it was violating the Complainant’s trademark rights and requested that the Respondent cease using the domain name at issue. No response was received. Accordingly, a second cease and desist letter was sent to the Respondent by the Complainant’s general counsel on October 11, 2007, again requesting that the Respondent cease using the domain name and that it transfer ownership of the domain name to the Complainant. The Complainant has received no response to either communication.
In the absence of a Response the Panel accepts the truth of the facts set out in the Complaint.
5. Parties’ Contentions
(i) The Complainant contends that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It submits that the domain name is confusingly similar (if not, essentially identical) to the Complainant’s marks.
(ii) The Respondent has no rights or legitimate interests in the domain name in dispute. It submits that the domain name does not reflect a name by which the Respondent is commonly known.
(iii) The domain name is registered and is being used in bad faith. The Complainant submits that the Respondent was “obviously aware” of the existence of the Complainant and its marks and that given the competing businesses of the parties a presumption must exist that the Respondent was aware of the existence of the Complainant and its marks at the time it registered the domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or confusingly similar
Based on the evidence of the registered trademarks owned by the Complainant group as set out above, the Panel is satisfied that the Complainant has used the mark RAPIDREFUND and related marks since at least as early as 1986 in connection with tax software, tax preparation and filing services and other tax related goods and services. The Complainant submits that it has common law rights in the marks as well as incontestable rights pursuant to the registrations. The Panel is satisfied that the Complainant has used the marks but given the existence of registered marks does not need to consider common law rights for the purpose of determining the Complaint.
The domain name in dispute incorporates the Complainant’s mark RAPIDREFUND. The only difference is the addition of the prefix “ez”. In the Panel’s view the addition of the prefix is essentially immaterial. The core of the domain name is “rapidrefund” which is undoubtedly confusingly similar to the Complainant’s marks.
Accordingly, the Panel finds for the Complainant in respect of this element.
B. Rights or Legitimate Interests in respect of the Domain Name
The Complainant relies upon evidence that the Respondent is currently using the domain name at issue to host a directly competing service with that of the Complainant i.e., that offered by Akeja Tax Services Inc., details of which are set out in Annex 3 to the Complaint (referred to above). The Complainant stresses that the Respondent is not authorised to use the Complainant’s marks.
There is also no evidence that the domain name reflects the name by which the Respondent is commonly known. Moreover, the Respondent’s trading activity ie., Akeja Tax Services Inc., does not incorporate the words “Rapidrefund”. Rather the slogan “Rapidrefund”, the subject of the Complainant’s trademarks has the character of a marketing slogan which is used to identify the Complainant’s goods and services and which is used legitimately by the Complainant in the course of its business. The Panel is therefore satisfied that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The Complainant relies upon:
(a) the similarity between the Domain Name and the Complainant’s marks;
(b) the competing businesses of the parties;
(c) the Respondent’s constructive (and in the Panel’s view most likely actual) knowledge of the Complainant as a trade competitor.
Taking into accounts these factors the Panel accepts the Complainant’s submission that the registration of the domain name has been intentionally used as an attempt to attract for commercial gain internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, association and endorsement of the website.
A further factor which in the Panel’s view is evidence of bad faith is the fact that despite sending cease and desist letters on two occasions to the Respondent, the Respondent chose not to reply. This was compounded by the failure of the Respondent to serve a Response in the present proceedings. The Respondent has therefore had three separate opportunities in which to counter the Complainant’s assertions of its Complaint. It has failed to do so, presumably intentionally.
Taking all these factors into account, the Panel is satisfied that the domain name is registered and is being used in bad faith.
It follows that the Complaint has succeeded in proving its Complaint.
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 in dispute <ezrapidrefund.com> be transferred to the Complainant from the Respondent.
Clive Duncan Thorne
Dated: January 7, 2008