WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intuit Inc. v. Privacy.co.com,Savvy Investments, LLC Privacy ID# 1088755
Case No. D2019-1659
1. The Parties
The Complainant is Intuit Inc., United States of America (“United States”), represented by Fenwick & West, LLP, United States.
The Respondent is Privacy.co.com, Savvy Investments, LLC Privacy ID# 1088755, United States.
2. The Domain Name and Registrar
The disputed domain name <turbotac.com> (the “Disputed Domain Name”) is registered with Sea Wasp, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2019. On July 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 18, 2019, 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 the Complainant on July 19, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 23, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on July 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on August 15, 2019. 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
The Complainant is a well-known provider of business and financial management software and online solutions. The Complainant has 9,000 employees worldwide, 19 locations in nine countries, revenue of USD 6 billion and serves approximately 50 million individual and business customers with financial, business and tax management software products and online services. One of the Complainant’s flagship products is its tax software, “TurboTax”, that enables individuals and small business owners to prepare and file their personal income taxes and small business taxes, respectively. “TurboTax” was developed in the mid-1980s and acquired by the Complainant in the early 1990s.
The Complainant owns numerous trademark registrations for its tax management software in the United States and in multiple jurisdictions worldwide. The Complainant, through itself and its predecessor in interest, has used its trademark registrations 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 its trademarks. The Complainant’s trademarks include, but are not limited to:
TURBOTAX, United States Registration No.1,369,883, registered on November 12, 1985 in international class 9; TURBOTAX, United States Registration No. 2,512,370, registered on November 27, 2001 in international class 35; TURBOTAX, United States Registration No. 2,597,246, registered on July 23, 2002 in international class 42; and TURBOTAX, United States Registration No. 4,181,861, registered on July 31, 2012 in international classes 9, 35, 36 and 42 (hereinafter collectively referred to as the “TURBOTAX Mark”).
In addition, the Complainant is the registrant of over 5,000 domain names, including, but not limited to the following that include or incorporate the Complainant’s TURBOTAX Mark: <turbotax.com>, <turbotax.net>, <turbotax.org >, <shopturbotax.com> and <turbotaxintuit.com>. The Complainant’s domain names resolve to its official website at “www.turbotax.intuit.com”.
The Disputed Domain Name was registered on March 20, 2003. According to a screenshot provided by the Complainant as an annex to the Complaint, the Disputed Domain Name initially resolved to a website at “ww1.turbotac.com” with pay-per-click hyperlinks. The links contained information about tax filings, including IRS penalty abatement, printable tax form products that are similar to the Complainant’s products and services. As of the writing of this decision, the website is no longer available online since presumably the Respondent took down the website. Instead, the Disputed Domain Name currently resolves to a website which states:
“This site can’t be reached - www.turbotac.com refused to connect.”
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark or trademarks.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)(iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the TURBOTAX Mark.
It is uncontroverted that the Complainant has established rights in the TURBOTAX Mark based on its many years of use as well as its federally registered trademarks that include or incorporate the TURBOTAX Mark. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the TURBOTAX Mark.
The Disputed Domain Name <turbotac.com> consists of a misspelling of the TURBOTAX Mark, followed by the generic Top-Level Domain (“gTLD”) “.com”. This misspelling is an example of typosquatting, a situation in which a domain name includes a misspelled registered trademark. Here, the use of the letter “c” instead of an “x” does not operate to prevent a finding of confusing similarity between the TURBOTAX Mark and the Disputed Domain Name. See, e.g., ALH Group Pty Ltd v. Naveen Mathur, WIPO Case No. D2015-2004 (finding the disputed domain name confusingly similar to the trademark despite the addition of the letter “s”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.9, which states that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element […]”
Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its TURBOTAX Mark. The Respondent does not operate any business under the name “TurboTax” or “TurboTac” nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent registered the Disputed Domain Name long after the TURBOTAX Mark had first been used and become famous in the United States and worldwide. The only use that the Respondent has made of the Disputed Domain Name is to host a website that contains hyperlinks to sponsored ads. Such use does not give rise to a right or legitimate interest on the part of the Respondent. The Chase Manhattan Corp. v. Whitely, WIPO Case No. D2000-0346.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s TURBOTAX Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its TURBOTAX Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).
The Respondent is engaged in the practice of “typosquatting,” which redirects Internet users who misspell the TURBOTAX Mark to the Respondent’s website for the Respondent’s commercial gain. UDRP Panels have consistently held that “typosquatting” constitutes a bad faith use of a domain name pursuant to the Policy, paragraph 4(b)(iv). The Respondent’s action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences an intent to disrupt the Complainant’s business, deceive customers and trade off the Complainant’s goodwill by creating an unauthorized association between the Disputed Domain Name and the Complainant’s TURBOTAX Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552.
Second, the website to which the Disputed Domain Name initially resolved contained hyperlinks that were pay-per-click sponsored ads that promoted, among other things, tax filing products and services. As such, the Respondent was not only trading on consumer interest in the Complainant to generate Internet traffic and commercially benefit from the sponsored links that appeared on the website, but the Respondent also derived commercial advantage in the form of referral fees. In the Panel’s view, this constitutes bad faith. See Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128. Further, when the links on pay-per-click pages are based on the trademark value of a complainant’s domain name, the trend in UDRP decisions is to recognize that such practices constitute bad faith. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name).
Finally, the Respondent knew or should have known of the Complainant’s rights in its trademarks when registering the Disputed Domain Name. The Complainant’s TURBOTAX Mark is wellknown, widely used and had been in use by the Complainant for decades prior to the Respondent’s registration of the Disputed Domain Name. Thus, it strains credulity to believe that the Respondent had not known of the Complainant or its TURBOTAX Mark when registering the Disputed Domain Name or creating its website to which the Disputed Domain Name resolved. When a domain name contains a well-known trademark, no other action aside from registering the domain name is required for a finding of bad faith. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name). This conduct is indicative of bad faith. See Champion Broadcasting System, Inc. v. Nokta Internet Technologies, WIPO Case No. D2006-0128.
Based on the foregoing, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <turbotac.com> be transferred to the Complainant.
Date: August 18, 2019