WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HRB Royalty, Inc. v. Asif Vadaria
Case No. D2007-1658
1. The Parties
The Complainant is HRB Royalty, Inc., Nassau, Bahamas, represented by Berkowitz Oliver Williams Shaw & Eisenbrandt LLP, Kansas City, Missouri, United States of America.
The Respondent is Asif Vadaria, Chicago, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <taxcutinc.com> (the “Domain Name”) is registered with DSTR Acquisition. I, LLC d/b/a 000Domains.com (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2007. On November 12, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. In a subsequent exchange of emails (which came to an end on November 22, 2007), the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient in that it did not correctly identify the Respondent, the Complainant filed amendments to the Complaint on November 26, 2007 and November 28, 2007. The Center verified that the Complaint together with the amendments to 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”).
3.2 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 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2007. The Response was filed with the Center on December 25, 2007.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 11, 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
4.1 The Complainant is “affiliated” with the H&R Block group of companies, which collectively make up the largest provider of individual income tax preparation services in the United States and also provide tax services internationally. The Complainant’s ultimate parent is listed on the New York Stock Exchange.
4.2 The Complainant, through its direct and indirect licensees, has used the “Tax Cut” name since at least 1988 in connection with its products and services.
4.3 The Complainant and its affiliates own various registered trademarks. The trademarks that it relies upon in the context of these proceedings are:
(i) US registered Trademark No 3,150,594 filed on March 9, 2005 in respect of “computer programs for use in the preparation of tax returns” in the following form:
The registration records the date of first use as November 30, 2001 and first use in commerce as November 30, 2004.
(ii) US registered Trademark No 1,715,156 filed on March 12, 1991 in respect of “computer programs for use in the preparation of tax returns”. This registration is for the words “tax cut” but the mark is subject to the disclaimer “no claim is made to the exclusive right to use ‘tax’ apart from the mark as shown”
The registration records the date of first use and first use in commerce as November 15, 1988.
4.4 The Respondent is an individual but apparently either trades under the name, or through a business called, “Tax Cutters Inc”.
4.5 The Respondent registered the Domain Name on December 24, 1999.
4.6 As at the date of the Complaint and this decision the Domain Name is being used for a website that is branded with the name “Taxcutters, Inc”, and “Taxcutters, Inc” describes itself as “Computerized Accounting and Income Tax Specialists”. The “contact details” on the website identify the Respondent i.e. “Asif Vadaria (CPA)”.
4.7 The website is somewhat old fashioned in style but it also contains a link to “www.udomytax.com”. The website at the “www.udomytax.com”address appears to be another website for “Taxcutters Inc” and the Respondent. However, this looks very different from the website operating from the Domain Name, being far more professional in style.
4.8 The Complainant through its attorneys sent cease and desist letters to the Respondent on August 9 and October 12, 2007. The Respondent did not respond to either of these letters.
5. Parties’ Contentions
5.1 The Complainant’s contentions are as follows:
5.2 The Complainant relies upon the registrations already described. It also contends that as a result of its use of “‘Tax Cut’ and related Marks” since at least as early as 1988, it has common law rights in the “Marks”.
5.3 It claims that the Domain Name comprises the TAX CUT mark with the generic addition “inc”. As such it is said to be confusingly similar “if not essentially identical” to the Complainant’s “Marks”. It relies in this respect on the decisions in American Online v. iDomainNames.com, NAF Case No. FA 93766 and Gorstew Limited & Unique Vacations, Inc v Berkshire Trust, NAF Case No. FA008000095430.
No rights or legitimate interests
5.4 The Complainant contends that the Respondent has without authorisation “misappropriated a name that is a well-established identifier of the Complainant’s goods and services for an improper competing commercial purpose” and this has been done “with the intent to mislead and divert consumers or to tarnish the Marks at issue”. As a consequence the Respondent is said to have no rights or legitimate interests in respect of the Domain Name.
Bad faith registration and use
5.5 The Complainant contends that given the similarity between the Domain Name and the Complainant’s “Marks”, and the competing businesses of the parties, a presumption must be made that the Respondent was aware of the existence of the Complainant and its “Marks” at the time it registered the Domain Name.
5.6 This is said to be evidence:
(i) that by means of the Domain Name the Respondent has intentionally attempted to attract for commercial gain, Internet users to his website or other on-line location by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on the website or location; and
(ii) of a pattern of conduct that constitutes bad faith.
5.7 The Respondent responds to the Complainant’s contentions as follows:
5.8 The Respondent makes a number of factual contentions in respect of registered trademark no. No 3,150,594. In particular, he notes that the mark takes the form of a stylised mark, it is descriptive and that the Complainant did not start to use this mark until “long after [he] began use”.
5.9 He also claims the words “Tax Cut” to be two English words that are used extensively in everyday language. He claims that “generic names” such as these are “regarded by the law as free for all to use” and “they are in the public domain”. Reference is made to a large number of other websites that use that term either as the two words “tax cut” or as a single word “taxcut”.
5.10 Reference is also made to use the word “Xerox” and the potential consequences of its use in every day language as a synonym for “photocopying”.
5.11 Lastly, the Respondent makes reference to two UDRP cases which are said to support his contentions that the Complainant cannot claim rights in this combination of words. The cases are Matchnet Plc v. Josh Joffe, NAF Case No. FA0305000159456 and Tax Analysts v. eCorp, WIPO Case No. D2007-0040.
Rights or legitimate interests
5.12 The Respondent contends that he did not know about the “Trademark” when he registered the Domain Name in 1999. He also complains about the delay by the Complainant in commencing these proceedings and that “a doctrine of laches is in order here”.
5.13 The Respondent repeats a number of points that he makes in relation to the issues of rights in a trademark and rights or legitimate interests. In addition, he makes reference to the fact that the Complainant is providing tax preparation software and that the Respondent, in contrast, is providing tax preparation services. Lastly, he makes various statements to the effect that he is a “small guy” being unfairly treated and intimidated by the Complainant and its attorneys.
Reverse Domain Name hijacking
5.14 The Respondent contends that the circumstances of this case are such that the Panel should make a finding of reverse domain name hijacking against the Complainant.
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy states that the Complainant must prove the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith.
6.2 However, before addressing these issues it is necessary to address a point which the Respondent makes under the rights and legitimate interests heading but which is of more general importance. That is the Respondent’s claim that the doctrine of laches applies here.
A Laches and Delay
6.3 This Panel in previous cases has held that the doctrines of acquiescence or laches do not apply in UDRP proceedings (see LIAT (1974) Ltd. v. Mark Armstrong, WIPO Case No. D2006-1574; citing The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616; and it’s own earlier decision in McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078). More recent cases to the same effect include Tax Analysts v. eCorp, WIPO Case No. D2007-0040.
6.4 The fundamental difficulty for a respondent claiming laches or the like is that there is nothing either in the Policy or the Rules that suggests that such a doctrine should apply. There is perhaps an argument that it may be legitimate to import such a doctrine from national law where the parties come from the same jurisdiction, but this was expressly rejected both in the Maxol and the Tax Analysts cases. This Panel has also recently suggested that the idea of importing national law to the Policy in cases where parties are from the same jurisdiction is inherently misconceived (see in particular the detailed reasoning in this respect in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461).
6.5 Nevertheless, if a complainant delays in bringing proceedings he will make matters more difficult for himself. First, there is the fact that a complainant must prove not only bad faith use but bad faith registration. Often it is possible to infer bad faith registration from bad faith use, but the longer the delay between registration and the commencement of proceedings, the less likely it is that a panel will be prepared to do so. A complainant may, therefore, need to bring forward direct evidence to address the issue of bad faith registration. Second, there is the possibility that the use that the registrant has made of the domain name since registration may in some cases result in him having developed a right and legitimate interest in the name. These are both issues that this Panel will come back to in this decision. There is also the more general point that extensive delay without explanation may in certain circumstances result in adverse inferences of fact against a complainant.
B. Identical or Confusingly Similar
6.6 The Complainant has shown that it has registered trademark rights in the words “tax cut” in the form of US registered trademark no. 1,715,156. The Panel finds that the Domain Name is confusingly similar to that mark.
6.7 As the Complainant correctly contends, the addition of the suffix “inc” to the words “tax cut” in the Domain Name does not stop the Domain Name being confusingly similar to trademark no. 1,715,156. “Inc” is simply a term that refers to an entity that has been incorporated under law. The Panel notes that this trademark is subject to a disclaimer so far as the use of the word “tax” alone is concerned, and that disclaimers can have a bearing on the issue of whether or not a domain name is identical or confusingly similar to a trademark (see, for example, the analysis in Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, WIPO Case No. D2005-0035). However, in this case the disclaimer does not prevent the Domain Name being confusingly similar to the mark. The similarities between the trademark and the Domain Name do not reside in the use of the word “tax” alone but in the use of the words “tax” and “cut” in combination.
6.8 In the circumstances, it is not necessary to consider the Complainant’s arguments in relation to registered trademark no. 3,150,594 and common law rights. Similarly, it is not necessary to consider the Respondent’s arguments regarding rights in a stylised mark and the fact that this mark did not begin to be used commercially until November 2004, since these comments apply to the No 3,150,594 trademark only.
6.9 The Respondent does, however, extensively comment on the “generic” nature of the term “tax cut”. This is an issue that the panel addresses to some degree under the heading “Registered and used in Bad Faith” later in this decision. However, since the Respondent first addresses the issue in the context of trademark rights it is worth addressing the point briefly at this stage.
6.10 The claims made by the Respondent that since the term “tax cut” can be seen as a generic term, it is “free for all to use”, reflects a common misunderstanding of how trademark law operates. Many trademarks are ordinary English words. The classic example that is often invoked is the word “apple”. It is of course the ordinary English word for a type of fruit. However, this word also has two famous trademark uses. The first is as the name of a well-known computer and related equipment retailer. The other is as the name of the record company founded by The Beatles. It is unlikely that the owners of these separate “apple” trademarks could prevent someone using the word “apple” as a reference to fruit in ordinary every day speech. In that sense it is a word that remains “free for all to use”. However, that does not mean that it is not capable of being used as a trademark either by a business selling computer equipment or a business selling recorded music.
6.11 No doubt the Respondent would say that the case currently before the Panel is somewhat different from the “apple” example given. The word “apple” has little inherent connection with the world of computers and music. In this case the term “tax cut” when used in every day speech is likely to refer to something to do with taxes and it is in relation to tax related products that the Complainant has registered its marks. What is to stop someone registering ordinary English words in a context where they otherwise might naturally be used?
6.12 Whilst the law varies from country to country, one of the answers1 to this question is that most trademark systems around the world have mechanisms to stop the registration of words for goods and services that are no more then descriptive of those goods and services and/or have not, through use, become distinctive of particular goods and services. This might be by means of some form of examination, opposition process or post grant challenge.
6.13 In this case the Respondent seems to be saying that because of the alleged generic nature of the trademark relied upon, somehow that trademark was wrongly granted. However, this is something that cannot sensibly be addressed in the context of proceedings under the Policy. It is not for this Panel to second-guess the actions of a national trademark office in this manner. If the Respondent thinks the grant of rights in this case was in error, then this is something for him to take up such procedures, if any, that may remain available to him under national law.
6.14 That it is not for a panel to second guess the validity of a trademark on the grounds of its supposed generic nature is a stance that has been adopted by so many cases that this Panel would suggest that there is now a consensus view on this issue. For examples of cases in which a panel has held this to be the correct approach this Panel would refer to Lockheed Martin Corporation v. The Skunkworx Custom Cycle, WIPO Case No. D2004-0824 and the other cases cited in that decision on this issue. The Panel is aware that in the early case of Rollerblade Inc v CBNO, WIPO Case No. D2000-0427, a three person panel did suggest that it might be prepared to embark upon the exercise of assessing whether a registered trademark was invalid because the marks had become generic. However, this panel would suggest that the approach suggested by Rollerblade does not represent the current prevailing view amongst panelists and also notes that the panel in Rollerblade, neither needed to, nor decided to, proceed down that path..
6.15 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
6.16 The Respondent, on the question of whether the Domain Name is confusingly similar to a trademark in which the Complainant has rights, has referred to two UDRP cases. These cases do not assist the Respondent insofar as this aspect of the case is concerned. However, the Panel accepts that at first sight there seems to be similarities between the cases relied upon by the Respondent and the facts of the present case. Out of fairness to the Respondent, the Panel comments in greater detail upon these cases at the end of this decision.
C. Rights or Legitimate Interests
6.17 The Complainant’s contentions under this heading are very short. It contends that the Respondent is using the Domain Name in order to misappropriate the name of the Complainant in his Domain Name so as to divert customers from the Complainant to the Respondent or to tarnish the Complainant’s trademarks. This is said to preclude the Respondent from having rights or legitimate interests in the Domain Name.
6.18 In this case the Panel is not convinced that this is a case where there has been any intent by the Respondent to tarnish the Complainant’s TAX CUT mark. However, the Panel agrees that if a complainant can make out a positive case that a domain name is being deliberately used to divert consumers, then the burden will fall upon a respondent to show why it is that it nevertheless has a legitimate right and interest in the domain name.
6.19 Another way of looking at this is by reference to Paragraph 4(c)(i) of the Policy. This identifies, as one of the examples of rights to or legitimate interest in a domain name, the use of the domain name, before notice of a dispute, “in connection with a bona fide offering of goods or services”. It seems reasonably clear that the Respondent in this case is offering genuine goods and services from the website operating from the Domain Name. However, no matter how genuine the goods and services on offer from a website, if the domain name owner intends to misleadingly draw Internet users to that website by reason of his chosen domain name, then the offering in question is not bona fide.
6.20 In this case, for the reasons that are set out in detail under the heading of bad faith below, the Panel accepts this has indeed been the intention of the Respondent in this case. Accordingly, the Panel also finds that the Complainant has made out a prima facie case that the Respondent has no right or legitimate interest in the Domain Name.
6.21 There is a slight complication in this case in that the Domain Name appears to have been used in connection with the Respondent’s goods and services for approximately 9 years. Could it be said that the Respondent has as a consequence of this use and passage of time become “commonly known” by the Domain Name?
6.22 On balance the Panel thinks that this is not in the case. The reasons for this are as follows:
(i) For the reasons already given, it is for the Respondent to make out such a case and he has failed to either argue this or to put forward evidence before the Panel to this effect.
(ii) The Domain Name takes the form of <taxcutinc.com> and the Respondent apparently does not actually trade under the names “Tax Cut” or “Tax Cut Inc”. He instead trades under the name “Tax Cutters Inc”. The difference is perhaps a small one, but it is an important one, particularly when one bears in mind points (iii) and (iv) below.
(iii) The Domain Name is one of a number of domain names from which the Respondent apparently conducts his business. Another domain name is <udomytax.com> and this leads to a somewhat more professional looking site.
(iv) At the heart of the Respondent case is the argument that the term “Tax Cut” is generic. As is explained in greater detail under the heading of bad faith, the Panel is prepared to accept that this in part may have influenced the Respondent’s choice of name in this case, but this very argument counts against any claim by the Respondent that he is commonly known by the “Tax Cut” name (as opposed to “Tax Cutters Inc”).
6.23 In summary, for all these reasons and for the reasons given under the heading “bad faith registration and use” below, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.24 Key in this case is the intention and knowledge of the Respondent when he registered the Domain Name in December 1999. In this respect (and bearing in mind the Panel’s comments about the consequences of delay, earlier in this decision), there is no real doubt about whether the current use of the Domain Name reflects the Respondent’s motives for registering the Domain Name so many years ago. The parties both appear to proceed on the basis that the Domain Name was registered with the intent to use it in connection with the Respondent’s business in a similar manner to which it is being used today.
6.25 The Complainant contends that the Respondent was “obviously aware of the existence of the Complainant and its Marks” at the time he registered the Domain Name. The Panel concludes as a matter of fact for the purposes of these proceedings, that the Complainant is right in this allegation. However, the Panel would express this rather differently. In the Panel’s opinion, the Respondent generally was aware of the Complainant’s business and, in particular, that this business used the “Tax Cut” name to refer its goods and services. It is this that is important in this context, not whether the Respondent was aware that the Complainant held a valid “trademark” in the “Tax Cut” name either under local law or for the purposes of the Policy.
6.26 The reasons why the Panel has reached this conclusion are as follows;
(i) The fame and size of the Complainant’s business, to which the Respondent directly attests in the Response.
(ii) The fact that the Respondent is engaged in a business that is related to the Complainant’s business. The Panel notes in this respect the Respondent’s contention that the Complainant is providing tax preparation software and that he, in contrast, is providing tax preparation services. However, the businesses are sufficiently similar that it seems unlikely that the Respondent was not aware of the Complaint’s activities.
(iii) It is not clear when and in what circumstances the Respondent chose the “Taxcutters Inc” name for his business. However, even if that choice predates the Domain Name, it is somewhat odd that the Domain Name does not incorporate the name of his business but something slightly different. That difference calls for an explanation and none is given.
6.27 There is also the fact that the Respondent (who is a professional person and someone who the Panel can assume has chosen his words carefully) has not claimed that he did not know about the Complainant’s business and use of the “Tax Cut” name. He claims that he did not know about the Complainant’s “trademark”. However, as the Panel has already explained, this is not quite the issue here.
6.28 Given this finding of fact, the only credible conclusion is that the Respondent chose the Domain Name with the knowledge that in doing so, Internet users, believing that the Domain Name was in some way associated with the Complainant, would be diverted to his own site. It is also implausible that with this knowledge he chose the Domain Name without the intention of commercially benefiting from that confusion. If such confusion was not intended and had he wanted to avoid this, he could have chosen another domain name that more directly reflected the name of his business.
6.29 Such registration and use falls within the scope of paragraph 4(b)(iv) of the Policy, which refers to intentionally attempting “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line 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 [the respondent’s] website or location”.
6.30 The Panel is quite prepared to believe that in choosing the Domain Name, the Respondent honestly believed that he was perfectly entitled to do what he did. Perhaps he thought that given the “generic” nature of the term “Tax Cut”, he was as entitled to use that term in a domain name as the Respondent. Perhaps he thought that any confusion that resulted was confusion that the Complainant brought upon itself as a result of its choice of such “generic words” for its own products and business. Unfortunately for the Respondent, even if this is correct, the registration and use was still in bad faith on the facts of the present case. It is no defence to proceedings under the Policy simply to assert or even show that the words in the domain name might be used generically if as a matter of fact a registrant sought to register the domain name because of its associations with the name of someone’s business or products.
6.31 The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
E UDRP cases relied upon by the Respondent
6.32 As the Panel has already stated, and out of fairness to the Respondent, it will briefly comment upon two cases that the Respondent has identified in his Response and which the Panel accepts at first sight have some similarities with the present case. In both of these cases the panel held that the registrations were not abusive registrations and rejected the complaints. However, on closer examination, the Panel believes these cases to be distinguishable from the case currently before it.
6.33 The first case is Matchnet Plc v Josh Joffe, NAF Case No. FA0305000159456. The complainant in that case owned a US registered trademark in the words “American Singles” and the domain name in issue was <americasingle.com>. The panel in Matchnet held that whilst the domain name was confusingly similar to the complainant’s trademark, the respondent could show rights and legitimate interests. In large part the reasoning of the panelist in this case is dependent upon an analysis of United States trademark law. For the reasons that this Panel describes at some length in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, the Panel would respectfully suggest that such reasoning by reference to local law is neither relevant nor helpful when it comes to the question of rights or legitimate interests.
6.34 However this may be, there is furthermore a crucial factual difference between the current case and the facts in Matchnet. In Matchnet, the panel held that the domain name was registered as part of a pattern of registrations involving the word “single” that appears to have predated by two years the complainant first use of the “Amercian Singles” name. In the circumstances, whilst the panel thought it unnecessary to address the issues of bad faith in its decision, the Matchnet case is perhaps distinguishable as a case where the respondent may not have had the necessary intent for a finding of bad faith since he was simply continuing an activity that he had started before he could have had knowledge of the complainant’s interest in the relevant name.
6.35 The second case is Tax Analysts v. eCorp, WIPO Case No. D2007-0040. That case involved the domain name <taxanalyst.com> and one of the trademarks relied upon by the complainant was a US registered word mark for the words “Tax Analysts”. Once again, notwithstanding protestations on the part of the respondent that the term in question was generic, the panel held that the domain name was confusingly similar to that trademark. That panel then went on to state that the key issue was whether the complainant had selected the domain name “opportunistically to create confusion and exploit the [c]omplainant’s mark” and therefore in that case (as with the case currently before the Panel) the issues of legitimate rights and interests were intertwined.
6.36 On the question of bad faith use, in contrast to the present case, the panel found that there was no bad faith use within the scope of paragraph 4(b)(iv) of the Policy. The respondent had denied that it had any knowledge of the “alleged trademark” when it registered the disputed domain name and it is clear that this was crucial to the panel’s determination on this issue. Therefore, at first sight the case looks similar to the one currently before the Panel, even down to the form of the denial by the respondent of any knowledge of the complainant’s trademark rights.
6.37 However, on closer examination the Panel thinks the Tax Analysts case is somewhat different. Notwithstanding the reference in the Tax Analysts case to the respondent’s knowledge of the complainant’s “trademark” rights, this Panel does not think that that panel was suggesting anything different from what has been said in the present case i.e. that what is important is whether the respondent was aware that a business used the relevant words to identify its business or its specific goods and services prior to registration of the domain name (or to put it another away, was aware that the relevant term had been used in a trademark sense rather than aware of the actual existence of a registered trademark). The reference to the respondent’s knowledge of a trademark in the Tax Analysts case is simply shorthand for this. The panel concluded in the Tax Analysts case that as a matter of fact the respondent did not have the relevant knowledge. Whilst the complainant appears to have used the words in business for many years prior to the registration of the domain name, the complainant and the respondent were engaged in different fields of business. It would also appear that the complainant only obtained the “Tax Analysts” word mark several years after the domain name was registered and that other trademarks that predated the domain name had expressly disclaimed the use of the words “Tax Analyst”. Therefore, the history of these registered trademarks seems to suggest that it was not until sometime after the registration of the domain name that the words became distinctive in respect of the goods and services for which they had been registered.
6.38 To put it more succinctly, the Tax Analysts case is different from the case currently before the Panel not because the panel took a different view as to how respondent knowledge should be assessed under the Policy, but simply because it was not convinced that the use by the complainant of the words “Tax Analysts” in connection with the complainant’s business had influenced the choice of the domain name by the respondent. In this case, for the reasons that have already been given, the Panel has reached a different factual conclusion.
6.39 The Respondent requested the Panel to make a finding of reverse domain name hijacking by the Complainant. As the Complainant has succeeded in this dispute, the Panel cannot find that this is a case of reverse domain name hijacking.
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, <taxcutinc.com> be transferred to the Complainant.
Matthew S. Harris
Dated: January 22, 2008
1 Another answer is that in many jurisdictions it will be a defence to a claim of trademark infringement to say that the words in question are simply being used, not to identify specific goods and services, but instead in their ordinary “generic” sense. However, trademark infringement proceedings are not the same thing as proceedings under the Policy (see for example, the comments of the panel to this effect in Delta Sir Transport NV (trading as SN Brussels Airlines) v. Theodule de Souza, WIPO Case No. D2003-0372) and therefore it is not necessary or helpful to explore this issue further.