WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intuit Inc. v. Six Pentacles
Case No. D2018-0405
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 Six Pentacles of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <turbotx.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2018, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 21, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on April 9, 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
Complainant is a main provider of business and financial management software and online solutions and services, as well as online software products, including under its TURBOTAX mark. Complainant has 8,300 employees and sales of USD 5.2 billion.
Complainant owns numerous registrations in the United States for the mark TURBOTAX, including the following:
TURBOTAX, Reg. No. 1369883, with registration date of November 12, 1985, duly renewed, filed on November 29, 1984, covering computer programs in International Class 9. First use in commerce: October 17, 1984.
TURBOTAX, Reg. No. 2512370, with registration date of November 27, 2001, duly renewed, filed on October 25, 2000, covering “Providing tax information, calculation, preparation and filing services” in International Class 35. First use in commerce: October 1984.
TURBOTAX, Reg. No. 2597246, with registration date of July 23, 2002, duly renewed, filed on October 25, 2000, covering “Providing temporary use of on-line non-downloadable software for tax calculating, preparing and filing” in International Class 42. First use in commerce: January 31, 1997.
TURBOTAX, Reg. No. 4181861, with registration date of July 31, 2012, filed on May 17, 2011, covering “Magnetically encoded debit cards, pre- paid tax refund debit cards, stored-value cards, and reloadable debit cards” in International Class 9, “Marketing services for financial institutions” in International Class 35, “On-line banking services enabling users to directly deposit tax refunds into accounts at financial institutions; transaction processing services related to deposits of tax refunds” in International Class 36, and “Providing temporary use of non- downloadable software to pre-populate tax forms with tax data from online banking accounts” in International Class 42. First use in commerce: March 2009 (Class 9), September 2009 (Class 35), October 2009 (Classes 36 and 42).
Complainant also owns registrations for the mark TURBOTAX in Brazil, Canada, China, European Union, India, Japan, Singapore and Thailand.
Complainant has widely promoted its TURBOTAX goods and services including in advertisements aired during the last five Super Bowl football games, and in television and social media.
Complainant owns, inter alia, the following domain names: <turbotax.com>, <turbotax.net>, <turbotax.org>, <shopturbotax.com>, <tryturbotax.com> and <turbotaxintuit.com>.
The disputed domain name was registered on May 27, 2007. According to the Complainant’s allegations and evidence, the disputed domain name redirected to Complainant’s website through an advertising platform.
Currently, the website at the disputed domain name is inactive.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is confusingly similar to Complainant’s TURBOTAX mark. The disputed domain name is virtually identical to, and an obvious misspelling of Complainant’s TURBOTAX trademark. The only difference between the disputed domain name and the TURBOTAX mark is the omission of the letter “a” to create the word “turbotx”, alongside with the gTLD “.com”. Respondent is clearly engaged in typosquatting, a practice that results in the creation of domain names confusingly similar to the relevant mark. See inter alia, Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no legitimate relationship to Complainant giving rise to any license, permission, or authorization for registration or use of the disputed domain name. Respondent is not commonly known by the “turbotax” or “turbotx” name, and owns no trademark applications or registrations for “turbotax” or “turbotx”. According to the relevant WhoIs record, Respondent’s name is “Six Pentacles”.
Respondent is using the disputed domain name to profit from of Complainant’s intended Internet traffic through a monetization scheme. On information and belief, Respondent has sold the Internet traffic to the disputed domain name to an advertising platform that re-sells Internet traffic to buyers, through an anonymous auction or bidding process. In this case, the disputed domain name currently redirects visitors to Complainant’s “www.turbotax.com” website and, through the advertising platform, Respondent is collecting referral fees from Complainant. However, Complainant has no control over the advertising platform such that Respondent may decide to withdraw from any advertising platform or arrangement and re-direct traffic to another site, including those of Complainant’s competitors.
Respondent’s use of a confusingly similar domain name to profit off Complainant’s intended Internet traffic through a monetization scheme is not a bona fide offering of goods or services, nor is it a legitimate noncommercial 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 selling Internet traffic and collecting referral fees.
Respondent registered and is using the disputed domain name in bad faith. Respondent is engaged in typosquatting, redirecting Internet users who misspell Complainant’s mark for Respondent’s commercial gain. Panels have consistently held that typosquatting is a bad faith use of a domain name pursuant to Policy paragraph 4(b)(iv).
In addition, Respondent is using the disputed domain name to attract Complainant’s customers and make a profit from every Internet user it redirects. Respondent is using a domain name that is confusingly similar to Complainant’s mark in order to cause confusion for Respondent’s own commercial gain. Respondent’s activities also arguably fall into Policy paragraph 4(b)(i) because, by selling the Internet traffic that hits the disputed domain name for a set period of time, Respondent has registered the disputed domain name primarily for the purpose of renting the disputed domain name to Complainant or, if Complainant cannot or does not purchase the traffic, to Complainant’s competitors.
Respondent’s only plausible reason to register and use the disputed domain name that is a misspelling of Complainant’s TURBOTAX trademark is to take unfair advantage of the recognition associated with this mark and make a profit by redirecting consumers who make a typographical mistake. Thus, Respondent has registered and is using the disputed domain name in bad faith, to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
By submitting printouts taken from the USTPO trademark database, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the TURBOTAX mark. See section 4 above.
The Panel notes that the disputed domain name only differs from Complainant’s TURBOTAX mark by the omission of the letter “A”, and the addition of the generic top level domain “.com”. It is well established that such kind of differences are too irrelevant to distinguish one identifier from the other. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”)
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s TURBOTAX mark.
The first requirement of the Policy is met.
B. Rights or Legitimate Interests
Complainant has provided at Annex A to the Complaint an (undated) printout of the website at the disputed domain name containing information, text and images related to Complainant mark, product and services. This evidence suggests that Respondent likely intended to generate click-through income by redirecting Internet users presumably searching for Complainant and its well-known TURBOTAX software to Complainant’s website “www.turbotax.com”. These users are redirected simply because they fail to type an “a” between the letters “t” and “x” in the term “tax”.
A Panel visit to the Wayback Machine at the “www.archive.org” website in search for archived pages of the “www.turbotx.com” website mostly delivered blank pages.1 The Panel also notes that presently the website at the disputed domain name is inactive. Together, these facts suggest that since the registration of the disputed domain name – well over a decade ago - until presently, Respondent did not contemplate any use of the disputed domain name other than profiting from typosquatting by creating confusion among Internet users, or holding it passively without any authorization or consent by Complainant. In the opinion of the Panel, neither use of the disputed domain name is a bona fide use under Policy paragraph 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name without, without intent for commercial gain to misleadingly divert consumers, pursuant to Policy paragraph 4(c)(iii).
The Panel also notes that according to the relevant WhoIs data, Respondent’s name is “Six Pentacles”, and there is no evidence indicating that it has been known - commonly or otherwise - by the disputed domain name. Thus, Policy paragraph 4(c)(ii) clearly does not apply.
The facts and circumstances above are sufficient for Complainant to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Given Respondent’s failure to provide the Panel with any explanation for its registration and use of the disputed domain name as shown, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1 (“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”)
The second element of the Policy is also met.
C. Registered and Used in Bad Faith
The Panel notes that at least two of Complainant’s United States trademark registrations for the mark TURBOTAX predate the registration of the disputed domain name by well over thirty years. See section 4 above. Complainant has shown that it invested substantial resources in promoting its TURBOTAX mark, products and services in main sports events, on TV and social media. In addition, Respondent’s very choice of the disputed domain name, differing from Complainant’s mark by just a missing “a”, reveals that Respondent knew of and targeted Complainant, its mark, products and services at the time of registration of the disputed domain name.
As shown above, at least on one occasion the disputed domain name displayed Complainant’s website. In other words, Respondent, by using the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Pursuant to Policy paragraph 4(b)(iv), this is a circumstance of registration and use on the disputed domain name in bad faith.
Respondent unauthorized use of Complainant’s TURBOTAX mark is a clear case of typosquatting, which in and by itself is evidence of registration and use in bad faith. See WIPO Overview 3.0, section 3.2.1 (“Additional bad faith consideration factors. Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark …”)
On the other hand, the website at the disputed domain name is currently inactive. In the view of the Panel, this shows that Respondent either attempts to generate income by redirecting Internet users presumably searching for Complainant’s TURBOTAX software, or instead is passively holding the disputed domain name. This use, together with its failure to contest any of Complainant’s contentions or evidence, strongly suggest that Respondent is acting in bad faith.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <turbotx.com> be transferred to the Complainant.
Date: April 23, 2018
1 See WIPO Overview 3.0, paragraph 4.8 (“May a panel perform independent research in assessing the case merits? Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.”)