WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HRB Innovations, Inc. v. Domain Admin, Whois Privacy Corp. / Ryan G Foo
Case No. D2016-0342
1. The Parties
1.1 The Complainant is HRB Innovations, Inc. of Las Vegas, Nevada, United States of America ("United States" or "US"), represented by Stinson Leonard Street LLP, United States of America.
1.2 The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas / Ryan G Foo of Santiago, Chile.
2. The Domain Name and Registrar
2.1 The disputed domain name <hrbloxk.com> (the "Domain Name") is registered with TLD Registrar Solutions Ltd. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 19, 2016. At the time the Complaint was filed the Domain Name was registered in the name of the Registrar's privacy service. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 24, 2016, the Registrar transmitted by email to the Center its verification response identifying the privacy service as the registrant for the Domain Name and providing the contact details.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2016.
3.4 On February 25, 2016 the Registrar sent an email to the Center informing its client had asked it to lift the privacy service and provide the underlying registrant information. On February 26, 2016 the Center replied to the Registrar, asking it to provide the underlying registrant information. On the same date the Registrar replied to the Center, disclosing Ryan G Foo as the underlying registrant for the Domain Name and providing associated contact information.
3.5 On March 1, 2016 the Center sent an email communication to the Parties informing that after formal commencement of the case the Registrar provided the Center with the underlying registrant data, and therefore the Center was also forwarding the Notification of Complaint email to the underlying registrant's email address. In doing so in the opinion of the Panel the Center acted perfectly properly (as to which see paragraphs 5.23 and 5.24 of the decision in Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886).
3.6 In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2016.
3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 30, 2016. 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 part of a group of companies under common ownership and control that trade under the name "H&R Block". These companies have since 1955 provided tax preparation services and since then have prepared more than 650 million tax returns worldwide. This business has used the name "H&R Block" since 1956. Currently it has 12,000 retail offices across the United States. It has also since 1996 promoted and provided its services through a website operating from the domain name <hrblock.com>.
4.2 The Complainant is the owner of various registered US trade marks that comprise or incorporate the term "H&R Block". They include US registered trade mark No. 3,338,962 for the standard character mark for "H&R Block" in classes 35, 36 and 41 with a registration date of November 20, 2007.
4.3 The Domain Name was registered on January 17, 2012.
4.4 Subsequently the Domain Name was used to redirect Internet users to Intuit's Turbo Tax website. This is a competing service to that offered by the Complainant.
4.5 More recently the Domain Name has been used for a pay-per-click webpage that displays various links that appear to be related to the Complainant or various other tax related services. This pay-per-click webpage continues to operate from the Domain Name as at the date of the decision.
5. Parties' Contentions
5.1 The Complainant provides details of the history and current operation of the "H&R Block" business of which it form a part. It refers to its various US registered trade marks including US registered trade mark no 3,338,962 referred to above.
5.2 The Complainant contends that the Domain Name is confusingly similar to those marks, with the only differences being that the ampersand is omitted and the letter "c" is replaced with an "x". It is claimed that the differences are such that this is a case of typosquating, noting that the letter "c" is adjacent to the letter "x" on a "qwerty" keyboard.
5.3 It "presumes" that the Respondent obtains revenue for each Internet user that uses the Domain Name and is thereby redirected to Intuit's TurboTax website. In any event, it claims that the use made of the Domain Name involves the intentional trading of the fame of the Complainant's mark and that consequentially the Respondent has no legitimate right or interest in the same. It further claims that none of the examples of rights or legitimate interests provided in paragraph 4(c) of the Policy apply in this case.
5.4 The Complainant further asserts that the use made of the Domain Name demonstrates that the Domain Name was registered and used in bad faith.
5.5 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge any Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate".
A. Identical or Confusingly Similar
6.4 The Panel accepts that the Complainant has registered trade mark right in the word mark "H&R Block". It further accepts that the most sensible reading of the Domain Name is as a misspelling or mistyping of that mark.
6.5 The Panel therefore finds that the Domain Name is confusingly similar to that trade mark.
6.6 Further, had the Panel been in any doubt in this respect (which it is not), this is also a case where the way in which the Domain Name has been used (namely to redirect users to a competing tax related website) is a factor which the Panel would have been prepared to take into account when considering whether there is confusing similarity (for a further explanation of this point notwithstanding the fact that the relevant comparison is an objective one between domain name and the trade mark only, see RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089).
6.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.8 The Panel accepts the Complainant's argument that this a typosquatting case where the Domain Name was registered because it represents a mistyping of the Complainant's name and mark and has been subsequently used to redirect Internet users to a website of a competitor to the Complainant. The Panel also accepts that this use does not provide rights or legitimate interests for the purposes of the Policy and would go further and find that this is positive evidence that so far as the Respondent is concerned no such rights or legitimate interests exist.
6.9 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.10 As the Panel has already held, the Panel accepts that the Domain Name was registered because it represents a mistyping of the Complainant's name and mark and has been subsequently used to redirect Internet users to a website of a competitor to the Complainant. The Panel also accepts that it was most likely with the intention to obtain some form of financial advantage that the Domain Name was so registered and used. To register a domain name for such a purpose is registration in bad faith and the subsequent use falls within the example of circumstances indicating bad faith set out in paragraph 4(b)(iv) of the Policy.
6.11 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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, <hrbloxk.com>, be transferred to the Complainant.
Matthew S. Harris
Date: April 6, 2016