WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intuit Inc. v. Privacy.co.com - 5b19c, Savvy Investments, LLC Privacy ID #1083438

Case No. D2020-1497

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 - 5b19c, Savvy Investments, LLC Privacy ID #1083438, United States.

2. The Domain Name and Registrar

The disputed domain name <torbrotax.com> (“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 June 9, 2020. On June 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 11, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2020.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 11, 2020. 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 states that it “has provided financial management solutions to consumers, revolutionizing how people manage their personal and business finances” for more than 37 years; that it “is the foremost provider of business and financial management software and online solutions”; that it “has over 9,000 employees worldwide, 20 locations in 9 countries, revenue of USD 6.8 billion and serves approximately 50 million individual and business customers with financial, business and tax management software products and online services including under its TURBOTAX mark”; that one of its “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, respectively”; and that “[f]or over 30 years, Complainant’s TURBOTAX products have been continuously ranked as the #1 best-selling tax software.”

Complainant states, and provides evidence to support, that it is the owner of numerous trademark registrations around the world for the mark TURBOTAX, including United States Reg. No. 1,369,883 (registered November 12, 1985). These registrations are referred to herein as the “TURBOTAX Trademark.” Complainant also states, and provides evidence to support, that it is the registrant of multiple domain names that include the TURBOTAX Trademark, including <turbotax.com> (created June 13, 1995).

The Disputed Domain Name was created on January 11, 2014, and “redirects Internet users to a site at ‘getsecurify.com’ where users are asked to go through a security check and download software, possibly malware.”

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

The Disputed Domain Name is confusingly similar to the TURBOTAX Trademark because “Respondent is clearly engaged in ‘typosquatting’, whereby a domain name registrant deliberately introduces slight deviations, such as a misspelling, into well-known marks for commercial gain or to divert Internet traffic”; and “[i]t is well established that the practice of ‘typosquatting’ results in the creation of domain names confusingly similar to the relevant mark.”

Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent “has no legitimate relationship to Complainant giving rise to any license, permission, or authorization for registration or use of the Domain Name”; “Respondent is not commonly known by the TURBOTAX or TORBROTAX name, and owns no trademark applications or registrations for TURBOTAX or TORBROTAX”; “Respondent is using the Domain Name to profit off of Complainant’s intended Internet traffic through a monetization scheme”; “Respondent’s use of a confusingly similar domain name to profit off of Complainant’s intended Internet traffic through a monetization scheme is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the Domain Name”; “Respondent’s use of the Domain Name asking Internet users to go through a security check and download software, possibly malware, is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the Domain Name”; and “[u]se of a typo-variant to disseminate malware is not a bona fide offering of goods or services.”

The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent is engaged in a practice called ‘typosquatting’… [that] redirects Internet users who misspell Complainant’s mark for Respondent’s commercial gain [and] Panels have consistently held that ‘typosquatting’ is a bad faith use of a domain name”; “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 use of a confusingly similar domain name to disseminate malicious computer software or malware constitutes bad faith”; and “Respondent’s only plausible reason to register and use the Domain Name that is a misspelling of Complainant’s TURBOTAX trademark is to take unfair advantage of the recognition associated with Complainant’s TURBOTAX mark and make a profit by redirecting consumers who make a typographical mistake.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the TURBOTAX Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the TURBOTAX Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “torbrotax”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

The Disputed Domain Name obviously contains a typographical variation of the TURBOTAX Trademark by substituting the letter “o” for the letter “u” and by inserting an additional letter “r.” As set forth in section 1.7 of WIPO Overview 3.0, “in cases where… at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, section 1.9 of WIPO Overview 3.0 states: “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.” Indeed, previous UDRP panels have found that “substitution” of a letter is “irrelevant for purposes of the Policy,” Rockefeller Group International, Inc. v. Registration Private, Domains By Proxy, LLC / Jason Mills, WIPO Case No. D2018-1804, as is the “addition” of a letter, Tyson Foods, Inc. v. Domain Administrator, See PrivacyGuardian.org / Site Matrix LLC, Domain Administrator, Case No. D2018-2050.

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent “has no legitimate relationship to Complainant giving rise to any license, permission, or authorization for registration or use of the Domain Name”; “Respondent is not commonly known by the TURBOTAX or TORBROTAX name, and owns no trademark applications or registrations for TURBOTAX or TORBROTAX”; “Respondent is using the Domain Name to profit off of Complainant’s intended Internet traffic through a monetization scheme”; “Respondent’s use of a confusingly similar domain name to profit off of 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 Domain Name”; “Respondent’s use of the Domain Name asking Internet users to go through a security check and download software, possibly malware, is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the Domain Name”; and “[u]se of a typo-variant to disseminate malware is not a bona fide offering of goods or services.”

WIPO Overview 3.0, section 2.1, states: “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 Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Complainant argues that bad faith exists because, inter alia, “Respondent’s activities fall into Paragraph 4(b)(iv)” given that “Respondent is engaged in a practice called ‘typosquatting’” in which Respondent “redirects Internet users who misspell Complainant’s mark for Respondent’s commercial gain”; that “Respondent is using the 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”; and that “Respondent’s use of a confusingly similar domain name to disseminate malicious computer software or malware constitutes bad faith.”

First, as set forth in section 3.1.1 of WIPO Overview 3.0, “a typo of a famous mark” is evidence of bad faith, and as set forth in section 3.1.4 of WIPO Overview 3.0, “the mere registration of a domain name that is identical or confusingly‑similar (particularly domain names comprising typos…) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Here, it is obvious that the Disputed Domain Name contains a typo of the TURBOTAX Trademark, given that it contains the TURBOTAX Trademark in its entirety except for substituting the letter “o” for the letter “u” and by inserting an additional letter “r,” and the TURBOTAX Trademark is clearly a widely known trademark given that it has been registered since at least 1985, is protected by numerous registrations in numerous countries, and is used in connection with the best-selling tax software.

Second, as numerous previous UDRP panels have found, “inviting the user to follow links which may lead to the installation of disruptive adware or damaging malware” is “for commercial gain or use for the purpose of disrupting the business of the Complainant.” ZB, N.A., dba Zions First National Bank v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-0386. See also, e.g., Maryland State Lottery and Gaming Control Agency v. Whois Privacidad SA de CV / Iris Milady Soto Puerto, WIPO Case No. D2015-2325 (“Complainant’s Cisco and McAfee software block access to the website because of adware and spyware on several pages within the website”); and CenturyLink Intellectual Property LLC v. By Proxy, Inc. Domain Names, WIPO Case No. D2014-1147 (website associated with disputed domain name directed visitors to download “a series of programs, including one that was identified by third party software as a heuristic virus”). Further, as set forth in section 3.1.4 of WIPO Overview 3.0, “use of a domain name for per se illegitimate activity… is manifestly considered evidence of bad faith.”

Accordingly, the Panel finds that Complainant has proven the third element 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 <torbrotax.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist
Date: August 18, 2020