WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kelly Phillips Erb v. Private Registration, Tax Girls, Nerdy Girl Enterprises, Inc
Case No. D2015-0958
1. The Parties
Complainant is Kelly Phillips Erb of Paoli, Pennsylvania, United States of America (“United States”), represented by The Keller Law Firm, LLC, United States.
Respondent is Private Registration, Tax Girls, Nerdy Girl Enterprises, Inc of Santa Rosa, California, United States, represented internally.
2. The Domain Name and Registrar
The disputed domain name <taxgirls.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2015. On June 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. The same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2015. The Response was filed with the Center on June 18, 2015. Respondent filed a further Response on June 24, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 6, 2015. 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 is a tax attorney based in Paoli, Pennsylvania. She provides tax advice to clients, and is a fairly prolific writer and speaker on tax issues. Complainant owns the domain name <taxgirl.com>, and since 2003 has operated a website at that address to post a blog on topics related to taxation. For the past several years, the American Bar Association has named the TaxGirl blog one of the top 100 law blogs.
Complainant also contributes to the well-known business website “www.forbes.com”, and has also contributed articles to Trulia, Reuters, Time, and AOL’s WalletPop. In 2012, Complainant authored a book Ask the Tax Girl: Everything Parents Should Know About Taxes.
Complainant uses her TaxGirl moniker on various social media, including Twitter, Facebook, and YouTube. She also produces a TaxGirl podcast, available through iTunes. Complainant has more than 30,000 Twitter followers.
Complainant has used the mark TAXGIRL to market her tax consultation and advisory services since 2000. In October 2007, Complainant’s mark TAXGIRL was registered with the United States Patent and Trademark Office (“USPTO”).
Complainant has also used the mark ASK THE TAX GIRL for tax consulting, advice and planning services since 2006, and that mark was registered with the USPTO in March 2010.
Complainant also sells merchandise under the TAXGIRL mark at the “www.cafepress.com” website.
Respondent Nerdy Girl Enterprises, Inc. is a corporation based in Santa Rosa, California. Respondent’s chief executive officer is Michelle Luevano, who also formed and is president of a Nevada corporation, Tax Girls Incorporated, which was formed in April 2014. Respondent provides accounting, tax, and payroll services for “small business clients.” According to Respondent, in 2014 it earned USD 602,000 “for providing accounting, tax, and payroll services to less than 50 Small Business clients.”
Respondent asserts that it has been doing business on a local basis since May 2013, and has used the names “Tax Girls” and “Bookkeeper Girls” for such business.
The Domain Name was registered on January 19, 2012. According to Respondent, the Domain Name was registered “by a 3rd party CPA practice in Southern California named Morgan, Daggett, and Wotman, LLP” in January 2012. Respondent alleges that the Morgan, Daggett firm “approached the Respondent for the purpose of a Joint Venture AFTER registering <taxgirls.com> as it perceived a beneficial relationship with our then Trade Name and Corporate Identity Bookkeeper Girls, Inc. and BookkeeperGirls.com.” Respondent alleges that it “began licensing the domain name from the registered owner in Late 2012.”
There is no documentation in the record that the Morgan, Daggett and Wotman firm was or is the actual registrant of the Domain Name. Nor is there any affidavit from someone at that firm to corroborate Respondent’s assertions.
The WhoIs record for the Domain Name lists the Registrant as “Private Registration.” The Registrant Organization, according to WhoIs, is “Tax Girls.” The street address and other contact information in the WhoIs record, including the contact email address, matches Respondent’s address and contact information, and makes no reference to the Morgan, Daggett and Wotman firm.
The website to which the Domain Name resolves offers accounting, financial statement preparation and bookkeeping services. According to a Sonoma County business register record submitted into the record by Respondent: “Tax girls provides local quickbooks, accounting, and tax on-site support to bay area clients. We also provide a complete virtual bookkeeping solution to small businesses and non-profits across the US at a fraction of the cost of hiring an in-house bookkeeper or CPA.”
This business register record also refers to “our team of tax and accounting professionals.”
In February 2015, Complainant sent Respondent an email requesting that Respondent cease using the Domain Name to offer competing services. On March 23, 2015, Complainant’s counsel sent a cease-and-desist letter to Respondent. That day, Respondent replied by email:
“Would be happy to sell you our domain and book of business using that domain for going price of USD 440,000. Until u make a full legitimate offer worth my review any further contact from you constitutes as harassment and solicitation and you are requested to cease and decease [sic] today. Thanks and have a happy tax season.”
Complainant alleges that the same day, “an agent of Respondent also telephoned Complainant’s counsel […] and left a voice mail message indicating that Respondent would not transfer or stop using the disputed domain [name] unless Complainant paid Respondent more than USD 300,000.00 to do so.”
5. Parties’ Contentions
Complainant asserts that she has satisfied the three elements required under the Policy for a transfer of the Domain Name.
Respondent asserts that the Complaint should be denied. Much of the Response is comprised of attacks on the Complainant and extraneous (and often redundant) material that the Panel does not find central to its decision in this proceeding.
Generally stated, Respondent argues that the Domain Name is not confusingly similar to the TAXGIRL mark because the term “tax girls” is two words used in their descriptive sense, and the mark TAXGIRL has no space. Respondent asserts that it is a legitimate enterprise that provides services to local small businesses, limited to California, Nevada, and Alaska in terms of client base, and Complainant’s Pennsylvania-based business is all the way across the United States.
Respondent also asserts that it is not in competition with Complainant because Respondent provides “tax preparation services” to its “already engaged Small Business Clients,” whereas Complainant provides “tax advice or tax consultations to the general public.”
Respondent asserts that “we had never heard or care to hear about TAXGIRL as the blogger as this party has no significance to us nor have ever been even mentioned from any personal in our presence in the past, present or future.” (There is no explanation of how Respondent knows that it had never heard of TAXGIRL in the future.)
With respect to the offer to sell the Domain Name for USD 440,000, Respondent asserted that the value of its business (USD 602,000 “annually” and “grow at 15% a month at least”) warranted an offer of at least that amount as a matter of good business sense. Moreover, Respondent insists, the offer included the entire business, not just the Domain Name. Finally, Respondent asserts that it is not the actual owner of the Domain Name, the “rightful and current owner” being Morgan, Daggett and Wotman LLP. As such, it had no authority to sell the Domain Name. In Respondent’s words, “Respondent has no actual right or possession to sell the domain [name] and in fact is under a term license agreement for the sole use of the domain [name] in question.”
Respondent asks that the Complaint be denied and that Complainant be declared guilty of Reverse Domain Name Hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 beyond question that Complainant holds trademark rights, through registration and use, in the mark TAXGIRL from 2007 (with first use in commerce in 2000). The Domain Name is identical to the mark except for the addition of the letter “s.” This “s” has the slight effect of pluralizing the mark, which, in the Panel’s view, does very little to reduce the confusing similarity between Complainant’s mark and the Domain Name.
The Panel concludes that Policy paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the Panel’s view, none of the foregoing bases for establishing rights or legitimate interests in the Domain Name is present here. Respondent is not making a bona fide offering of services. While the Panel notes that the term “taxgirls” could have a descriptive sense, it appears in this case that Respondent is clearly targeting Complainant’s business. Notwithstanding Respondent’s arguments to the contrary, Complainant and Respondent both use the Internet in furtherance of their respective businesses, and those businesses overlap considerably in their scope. Both parties offer tax services to clients. Respondent’s repeated efforts to depict Complainant as a mere purveyor of “hatchet blogs” and “gossip sites” do not obscure this fact.
Further, the fact that Respondent claims to operate in, and target, a geographic clientele nearly 2,000 miles from Complainant’s office means little in the context of the Internet. Indeed, on one exhibit Respondent put into the record, Respondent purports to offer its various services “across the U.S.”
There is no evidence that Respondent has been “commonly known” by the Domain Name, and Respondent even asserts at one point that its tax services are provided to its “already engaged Small Business Clients.” The formation of a corporation in Nevada in April 2014 named Tax Girls, Incorporated does not, by itself, establish that Respondent was commonly known by the Domain Name.
Finally, Respondent is not asserting that it is making a noncommercial or fair use of the Domain Name, and the evidence is clear that the Domain Name is being used in conjunction with Respondent’s business.
The Panel concludes that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel declines to rule on paragraphs 4(b)(i) and 4(b)(iii) above, because it is unnecessary to do so, but notes that these paragraphs could well have formed the basis for a bad faith finding in this case. There is no issue here under paragraph 4(b)(ii), since there is no showing that Respondent is a serial cybersquatter.
The Panel concludes that Respondent is in bad faith within the meaning of paragraph 4(b)(iv). The Panel finds it more likely than not under this record that Respondent had Complainant’s TAXGIRL mark in mind when registering the Domain Name in 2012. Respondent’s assertion to the contrary is rejected as implausible under the circumstances here. Complainant’s renown under the TAXGIRL mark appears to be fairly extensive, at least within the community of accountants and tax professionals.
Moreover, the Panel finds that Respondent’s statements are hard to credit in general in this case. For example, on the one hand Respondent claims that it is a mere licensee of the Domain Name and has no right to sell it, and on the other hand Respondent makes an offer to sell the Domain Name for USD 440,000. Whether this offer was limited to selling the business in its entirety or solely the Domain Name misses the point. Respondent actually offered to sell the Domain Name despite, by Respondent’s own account, having no authority to do so.
Somewhat relatedly is the confusion in the record as respects the ownership of the Domain Name. If the “rightful and current owner” is the Morgan Daggett and Wotman firm from southern California, why does the WhoIs record show the Registrant as “Private Registrant” and why do all of the registrant contact details match Respondent’s street address and email address? Why is there no evidence in the record, such as an affidavit from a representative of the Morgan Daggett and Wotman firm or the supposed license agreement itself, to corroborate the claim that Respondent is not the actual owner of the Domain Name?
Further, Respondent claims to have a “very localized client base in Santa Rosa, CA”, but boasts in at least one document that it provides services “across the U.S.”.
At one point, Respondent refers to the 50 local businesses it serves, and then states: “None of which are on the East Coast or have ever heard of the ‘famous’ blogger who writes about teenagers and pets and their tax complications.” This statement, submitted in the Response in this proceeding, is unaccompanied by any evidence that the 50 clients actually have never heard of Complainant. In this Panel’s view it appears to be merely a reckless statement.
Finally, at another point, Respondent describes the USD 440,000 offer as an “off the cuff statement”. This assertion is difficult to square with the actual offer of USD 440,000 conveyed in the email to Complainant. It is ultimately difficult to determine which of Respondent’s statements, in the Response or in its communications with Complainant, are “off the cuff” statements and which are genuine.
These and other discrepancies, internal inconsistencies, and reckless comments undermine Respondent’s statements, and hence make it difficult for the Panel to accept the already implausible assertion that Respondent, a tax and accounting professional, did not target Complainant’s mark when registering the Domain Name. The Panel finds that the Domain name was registered in bad faith.
This registration, followed by Respondent’s commercial use of the Domain Name to resolve to a website supporting Respondent’s business which is in competition with Complainant’s business, is in bad faith within the meaning of Policy paragraph 4(b)(iv).
The Panel concludes that Policy paragraph 4(a)(iii) has been satisfied.
D. Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. As the Panel has found in favor of the Complainant, it dismisses the request for a finding of reverse domain name hijacking.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <taxgirls.com> be transferred to Complainant.
Robert A. Badgley
Date: July 15, 2015