WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intuit Inc. v. Privacydotlink Customer 286106 / Domain Admin

Case No. D2018-2002

1. The Parties

Complainant is Intuit Inc. of Mountain View, California, United States of America (“United States”), represented by Fenwick & West LLP, United States.

Respondent is Privacydotlink Customer 286106 of Seven Mile Beach, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Domain Admin of New York, New York, United States.

2. The Domain Name and Registrar

The Disputed Domain Name <turobotax.com> is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

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 5, 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 Complainant on September 10, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. 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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 3, 2018.

The Center appointed Richard W. Page as the sole panelist in this matter on October 24, 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.

4. Factual Background

For over 34 years, Complainant has provided financial management solutions to consumers, revolutionizing how people manage their personal and business finances. Complainant is a provider of business and financial management software and online solutions. Complainant has 9,000 employees worldwide, revenue of USD 6 billion and services over 46 million individual and business customers with financial, business and tax management software products and online services including under its TURBOTAX Mark.

One of 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. Complainant, through itself and its predecessor in interest, has used the TURBOTAX Mark in connection with tax software since at least as early as October 1984, and has expended significant resources in developing public recognition and goodwill in the TURBOTAX Mark.

Complainant’s primary website is <turbotax.com> which advertises and sells its TURBOTAX software product and related services.

Over the years, Complainant has widely promoted its TURBOTAX goods and services, including an advertisement displaying its TURBOTAX Mark which aired during the 2014 to 2018 Super Bowl games. The 2015 Super Bowl was the most watched American television broadcast with an average audience of 114.4 million viewers. The 2014 Super Bowl drew an average audience of 112.2 million viewers. The 2016 and 2017 Super Bowl broadcasts each drew an average audience of 111.9 million viewers and 103.4 million average viewers for the 2018 Super Bowl broadcast.

Complainant has: 713,216 followers of TURBOTAX on its Facebook site with 740,190 “likes”; over 35,900 followers of the TURBOTAX Twitter profile, together with significant subscribers on YouTube channel; followers on the Instagram site; and followers on LinkedIn.

Complainant has numerous trademark registrations including TURBOTAX as the primary element in the United States and worldwide. The earliest registration for TURBOTAX is United States Trademark No. 1369883 (registered November 12, 1985). Complainant is the registrant of over 5,000 domain names, many of which incorporate “turbotax” as the primary element.

Respondent registered the Disputed Domain Name on February 15, 2006, updated January 18, 2018. The disputed domain name redirects to a third party website displaying pay-per-click links related to Complainant’s field of business.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the TURBOTAX Mark and that the Disputed Domain Name is confusingly similar to that mark because it is virtually identical to and an obvious misspelling of the TURBOTAX Mark pursuant to paragraph 4(a)(i) of the Policy. The only difference between the Disputed Domain Name is the addition of the letter “o” after the prefix “tur” to create an intentional typo, alongside the gTLD “.com”. Respondent is clearly engaged in typosquatting, where a domain name registrant deliberately introduces slight deviations, such as misspellings, into well-known marks for commercial gain or to divert Internet traffic.

Complainant further alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name as it has no legitimate relationship to Complainant giving rise to any license, permission or authorization for registration or use of the Disputed Domain Name. Also, Respondent is not commonly known by “turbotax” or “turobotax”, and owns no trademark application or registration for TURBOTAX or TUROBOTAX.

Complainant learned that Respondent registered and is using the Disputed Domain Name <turobotax.com> to automatically resolve to a website at <incometaxprep.com> which provided links including to federal tax filing, 1040 income tax returns, income tax preparation and free tax software products and services that compete with Complainant’s tax preparation tax and fling products and services.

Given Complainant’s well-established rights in the TURBOTAX Mark, it is clear that Respondent has no, and can have no, rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy and has registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy. Complainant submits that Respondent intentionally registered and is using the Disputed Domain Name to take unfair advantage of the recognition associated with Complainant’s TURBOTAX Mark by diverting Internet users from Complainant’s official website at <turbotax.com> to its own website, where Respondent receives pay-per-click commissions.

Respondent’s activities do not constitute a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the Disputed Domain Name. Respondent’s only plausible reason to register and use the Disputed Domain Name is to take unfair advantage of the recognition associated with Complainant’s TURBOTAX Mark by diverting consumers from Complainant’s website to Respondent’s website, where Respondent benefits from the confusion and diversion by receiving pay-per-click commissions, in violation of paragraph 4(b)(iv) of the Policy. Panels have consistently held that “typosquatting” is a bad faith use of a domain name pursuant to paragraph 4(b)(iv) of the Policy.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”.

A respondent is not obliged to participate in a domain name dispute proceeding, but if it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a mark in which Complainant has rights; and,

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the TURBOTAX Mark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The Panel finds that Respondent has not contested Complainant’s allegations that it has numerous registrations of the TURBOTAX Mark.

The Panel further finds that there is sufficient evidence in this record that Complainant has enforceable trademark rights in the TURBOTAX Mark.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the TURBOTAX Mark pursuant to the Policy paragraph 4(a)(i).

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the TURBOTAX Mark is incorporated into the Disputed Domain Name, with the addition of an intentional misspelling or typo. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark and that the addition of non-distinctive letters like a typo or the gTLD “.com” does not prevent a finding of confusing similarity. See, F. Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

The Panel agrees that Respondent has engaged in typosquatting and that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interests in the Disputed Domain Name:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the TURBOTAX Mark.

Complainant contends that Respondent has no legitimate relationship to Complainant giving rise to any license, permission or authorization for registration or use of the Disputed Domain Name and that Respondent is not commonly known by “turbotax” or “turobotax”, and owns no trademark application or registration for TURBOTAX or “TUROBOTAX”.

Complainant further contends that Respondent’s activities using intentionally misleading information for profit do not constitute a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds that Complainant has pled a prima facie case for the lack of rights or legitimate interests of Respondent. Respondent has not contested Complainant’s allegations.

Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

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

(ii) respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product.

Complainant alleges that Respondent’s only plausible reason to register and use the Disputed Domain Name is to take unfair advantage of the recognition associated with Complainant’s TURBOTAX Mark by diverting consumers from Complainant’s website to Respondent’s website, where Respondent benefits from the confusion and diversion by receiving pay-per-click commissions, in violation of paragraph 4(b)(iv) of the Policy. Panels have consistently held that “typosquatting” is a bad faith use of a domain name pursuant to paragraph 4(b)(iv) of the Policy.

The Panel agrees that Respondent’s activities, including typosquatting and redirection to a website displaying pay-per-click links, constitute bad faith under paragraph 4(b)(iv) of the Policy. Therefore, Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <turobotax.com> be transferred to the Complainant.

Richard W. Page
Sole Panelist
Date: October 29, 2018