WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intuit Inc. v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2020-1498

1. The Parties

The Complainant is Intuit Inc., United States of America (“United States” or “U.S.”), represented by Fenwick & West, LLP, United States.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <tbotax.com> is registered with Media Elite Holdings Limited dba Register Matrix (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 12, 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 June 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2020.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 21, 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

The Complainant carries on business as a provider of financial management software with over 9,000 employees worldwide and 20 locations in 9 countries. It has served approximately 50 million individual and business customers with tax management software products under its TURBOTAX trademark. The Complainant’s TURBOTAX tax software and associated online solutions enable individuals and business owners to prepare and file their personal and/or business income taxes. For over 30 years, the Complainant’s TURBOTAX products have been ranked as the number one best-selling tax software in relevant markets.

The TURBOTAX trademark has been widely promoted and advertised, including commercials, which aired during the 2014, 2015, 2016, 2017, 2018, 2019, and 2020 Super Bowl Games. The Complainant has 724,161 followers of the TURBOTAX Facebook page, over 43,900 followers of the TURBOTAX Twitter profile, 132,000 subscribers of the TURBOTAX YouTube channel and 21,100 followers on the TURBOTAX Instagram site.

The Complainant owns a number of trademark registrations for TURBOTAX, including the following:

U.S. Trademark Registration No. 1,369,883 for TURBOTAX, registered on November 12, 1985;
U.S. Trademark Registration No. 2,512,370 for TURBOTAX, registered on November 27, 2001;
U.S. Trademark Registration No. 2,597,246 for TURBOTAX, registered on July 23, 2002;
U.S. Trademark Registration No. 4,181,861 for TURBOTAX, registered on July 31, 2012;
U.S. Trademark Registration No. 4,679,594 for TURBOTAX and design, registered on January 27, 2015.

The Complainant also owns a number of trademark registrations for TURBOTAX around the world, including the following:

Australian Trademark Registration No. 1951401 for TURBOTAX, registered on June 11, 2019;
Brazilian Trademark Registration No. 840040474 for TURBOTAX, registered on February 18, 2015;
Canadian Trademark Registration No. TMA787291 for TURBOTAX, registered on January 14, 2011;
Chinese Trademark Registration No. 10535646 for TURBOTAX, registered on June 28, 2013;
European Union Trade Mark Registration No. 006630404 for TURBOTAX, registered on January 29, 2009;
Japanese Trademark Registration No. 4322941 for TURBOTAX, registered on October 8, 1999; and
Russian Trademark Registration No. 703287 for TURBOTAX, registered on March 14, 2019.

The Complainant also owns and operates websites associated with the following domain names:

<turbotax.com>
<turbotax.net>
<turbotax.org>
<shopturbotax.com>
<tryturbotax.com>
<turbotaxintuit.com>

The disputed domain name <tbotax.com> was registered on February 16, 2008. At the time the Complaint was filed, the disputed domain name reverted to a website, which redirects Internet traffic to the Complainant’s website through a monetization platform.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the registered trademark TURBOTAX. The disputed domain name <tbotax.com> is a misspelling of the Complainant’s trademark TURBOTAX with the omission of the letters “ur” to create the term “tbotax”. The Respondent is engaged in typosquatting and intentionally attempting to register a misspelling or variation of the Complainant’s trademark TURBOTAX.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the registered trademark TURBOTAX or the misspelling “tbotax”. The Respondent was not permitted to use, is not licensed or authorized to use the Complainant’s registered TURBOTAX trademark. The Respondent is not using the disputed domain name in association with a bona fide offering of goods or services. The Respondent has sold the disputed domain name <tbotax.com> to a monetization platform that resells Internet traffic to buyers, through an anonymous auction or bidding process. This process redirects Internet users to the Complainant’s TURBOTAX website through a monetization platform, which generates referral fees from the Complainant. The Complainant has no control over the monetization platform such that the Respondent may decide to withdraw from any monetization platform or arrangement and redirect the disputed domain name to another site, including competitors of the Complainant.

The Complainant contends that the Respondent has registered a confusingly similar domain name being fully aware of the Complainant’s famous TURBOTAX trademark. The deliberate misspelling of the Complainant’s trademark by the omission of the letters “ur” constitutes typosquatting. The Respondent has registered and used the disputed domain name for the purposes of monetary gain by redirecting the disputed domain name to the Complainant’s website through a monetization platform whereby the Respondent collects revenues by using a version of the Complainant’s own trademark. The Respondent is thereby interfering with the Complainant’s business.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(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

The Panel finds that the Complainant does have registered trademark rights in the trademark TURBOTAX by virtue of the registrations referenced in section 4 of this Decision.

The Panel finds that the disputed domain name <tbotax.com> is confusingly similar to the Complainant’s trademark. The omission of the letters “ur” in the middle of the word “turbo” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s registered trademark, as the latter remains recognizable within the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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”.

Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a strong prima facie case with respect to the Respondent’s lack of rights or legitimate interests. The Complainant clearly owns rights in the TURBOTAX trademark as noted in section 4 of this Decision. The Panel acknowledges that the Complainant’s TURBOTAX trademark is famous and accordingly it is not possible that the Respondent was unaware of the Complainant’s trademark rights when it registered the disputed domain name.

In the circumstances of this case, the composition of the disputed domain name itself reveals an obvious intention to typosquat on the Complainant’s trademark, and associated goodwill and reputation. See WIPO Overview 3.0, section 2.5.1.

Further, the Respondent’s use of the disputed domain name in association with a website, which redirects Internet users to the Complainant’s website (and generates commission revenues for the Respondent paid by the Complainant itself) is not a bona fide use of the disputed domain name under the Policy.

In this situation, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.

Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain name with obvious knowledge of the Complainant’s famous TURBOTAX trademark in order to divert Internet users seeking the Complainant’s website and services for purposes of monetary gain. The Respondent has intentionally targeted the Complainant’s TURBOTAX trademark, which was well known long before the registration of the disputed domain name, by using the confusingly similar disputed domain name in association with a website, which redirects Internet users who have misspelled the Complainant’s trademark. The Respondent’s scheme uses a monetization platform, which actually collects referral fees from the Complainant for the use of a confusing version of the Complainant’s own trademark. The Respondent has targeted the Complainant by registering and using a confusingly similar domain name for the purposes of generating commission fees. The Complainant has no control over the disputed domain name and the Respondent is in a position to redirect the disputed domain name wherever it chooses. This is compelling evidence of an abusive registration under the Policy.

The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) 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 <tbotax.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: July 29, 2020