It’s the end of the line for the domain Tubortax.com – after 15 years of presumably massive earnings, it’s time to pay the final tax.
The typosquatting domain was challenged in a UDRP filed by Intuit Inc., makers of the popular tax filing software, TurboTax.
The infringing domain was parked with a zero click PPC lander that generates pennies on the dollar, but over the course of 15 years one can imagine the amounts accumulated – all thanks to fat finger typing!
Final decision: Transfer the domain Tubortax.com to the Complainant.
TuborTax.com – Lost in a UDRP decision – Photo by Icons8 Team on Unsplash
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intuit Inc. v. Domain Admin, Privacy Protect, LLC / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd
Case No. D2020-15001. The Parties
The Complainant is Intuit Inc., United States of America (“United States”), represented by Fenwick & West, LLP, United States.
The Respondent is Domain Admin, Privacy Protect, LLC / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd, Panama.
2. The Domain Name and Registrar
The disputed Domain Name <tubortax.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (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 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 June 12, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint; an amendment was not provided.
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 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2020.
The Center appointed Ian Blackshaw as the sole panelist in this matter on August 10, 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
For over 37 years, the Complainant has provided financial management solutions to consumers for their personal and business finances. Today, the Complainant is the foremost provider of business and financial management software and online solutions. The Complainant 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 under its TURBOTAX mark.
One of the flagship products of the Complainant 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. The Complainant, through itself and its predecessor in interest, has used the TURBOTAX mark 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 TURBOTAX mark. For over 30 years, the Complainant’s TURBOTAX products have been continuously ranked as the number 1 best-selling tax software, with thousands of customer reviews and an average of 4.7 out of 5 stars.
Printouts from the Complainant’s website advertising and selling its TURBOTAX software products and related services have been provided to the Panel.
Over the years, the Complainant has widely promoted its TURBOTAX goods and services including in advertisements displaying its TURBOTAX mark aired during the 2014, 2015, 2016, 2017, 2018, 2019, and 2020 Super Bowl games. The 2015 Super Bowl was the most watched American television broadcast with an average audience of 114.4 million viewers. The 2014 Super Bowl drew an average audience of 112.2 million viewers. The 2016 and 2017 Super Bowl broadcasts each drew an average audience of 111.9 million viewers, the 2018 and 2019 Super Bowl broadcasts each drew an average audience of approximately 100 million viewers, and viewership increased to approximately 102 million in 2020.
The Complainant has:
– 724,161 followers of the TURBOTAX Facebook site with 743,068 “likes”.
– Over 43,900 followers of the TURBOTAX Twitter profile.
– 132,000 subscribers of the TURBOTAX YouTube channel, with 1,830,494 views of the TurboTax 2020 commercial “From Home” video.
– 21,100 followers of the TURBOTAX Instagram site.Printouts of the Complainant’s television and social media advertising have also been provided to the Panel.
The Complainant owns the following TURBOTAX and TURBOTAX-formative trademark registrations in the United States:
The disputed Domain Name was registered on December 18, 2005, and redirects visitors to various websites, including in some instances to the Complainant’s own website.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following assertions:
The disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Paragraph 4(a)(i) of the Policy requires that the disputed Domain Name be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In this case, the disputed Domain Name is confusingly similar to the Complainant’s TURBOTAX word mark because the Respondent’s disputed Domain Name is virtually identical to and an obvious misspelling of the Complainant’s TURBOTAX trademark. The only difference between the disputed Domain Name and the Complainant’s TURBOTAX trademark is the reversal of the lettering from “rbo” to “bor” to create the misspelled word “tubortax”, alongside the generic Top-Level Domain (“gTLD”) “.com”. The 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.
It is well established that the practice of “typosquatting” results in the creation of domain names confusingly similar to the relevant mark. See Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (holding a disputed domain name confusingly similar and/or virtually identical because predictable and easily made typing errors could result in an Internet user being diverted from the Complainant’s site to that of the Respondent); ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627 (finding that “typosquatting”, the practice of misspelling an element of the trademark, has consistently been regarded as creating domain names confusingly similar to the relevant trademark); Sharman License Holdings, Limited v. IcedIt.com, WIPO Decision No. D2004-0713 (finding the circumstances of “typosquatting” to constitute confusing similarity); Ross-Simons, Inc. v. Domain.Contact, WIPO Decision No. D2003-0994 (finding that disputed domain names are confusingly similar to the trademarks which they misspell); Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No.. D2000-1259 (holding that the deliberate introduction of errors or changes does not render the Respondent’s domain name less confusingly similar to the core trademark held by the Complainant).
For these reasons, the Respondent’s disputed Domain Name must be found confusingly similar to the Complainant’s TURBOTAX trademark.
The Respondent has no rights or legitimate interests in respect of the disputed Domain Name.
Paragraph 4(a)(ii) of the Policy requires that a respondent has no rights or legitimate interests in the disputed Domain Name. The Respondent has no rights or legitimate interest in the disputed Domain Name as it has no legitimate relationship to the Complainant giving rise to any license, permission, or authorization for registration or use of the disputed Domain Name. Also, the Respondent is not commonly known by the disputed Domain Name and owns no trademark applications or registrations for “turbotax” or “tubortax”.
In addition, the Respondent is using the disputed Domain Name to profit off the Complainant’s intended Internet traffic through a monetization scheme. According to the Complainant, the 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 happens to currently redirect visitors to the Complainant’s Intuit TURBOTAX site and, through the advertising platform, the Respondent is collecting referral fees from the Complainant. However, the Complainant has no control over the advertising platform such that the Respondent may decide to withdraw from any advertising platform or arrangement and re-direct to another site, including those of the Complainant’s competitors.
The Respondent’s use of a confusingly similar domain name to profit off the 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. Use of a confusingly similar domain name to redirect Internet traffic to the Complainant’s website in order to receive a commission is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The Respondent’s only plausible reason to register and use the disputed Domain Name is to take unfair advantage of the recognition associated with the Complainant’s TURBOTAX mark by selling Internet traffic and collecting referral fees. It is, therefore, apparent that the Respondent has no rights or legitimate interests in the disputed Domain Name.
The disputed Domain Name was registered and is being used in bad faith.
Paragraph 4(a)(iii) of the Policy requires that a respondent has registered and is using the disputed Domain Name in bad faith. Examples of bad faith registration and use set forth in the Policy include:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain registration to the complainant or a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain; or
(ii) the respondent registered the domain in order to prevent the complainant from reflecting the trademark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s trademark as to source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
Paragraph 4(b).Bad faith registration and use may be found where the respondent knew or should have known of the registration and use of the complainant’s trademark prior to registering the disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. The well-known status of the TURBOTAX mark makes it extremely unlikely that the Respondent created the disputed Domain Name independently. As previous UDRP panels have already found, “[s]uch is true in the present case in which the Respondent registered the Disputed Domain Name decades after the Complainant first registered and used the TURBOTAX Mark, and during which time the Complainant enjoyed a high degree of fame for its tax software. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its TURBOTAX Mark when registering the Disputed Domain Name.” Intuit Inc. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2019-1662.
See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed Domain Name).
The Respondent’s activities fall within Paragraph 4(b)(iv). The Respondent is engaged in a practice called “typosquatting.” This practice redirects Internet users who misspell the Complainant’s trademark for the Respondent’s commercial gain. UDRP Panels have consistently held that “typosquatting” is a bad faith use of a domain name pursuant to Policy ¶ 4(b)(iv). See AltaVista Company v. Stoneybrook aka Stonybrook Investments, WIPO Case No. D2000-0886 (awarding <wwwalavista.com>, among other misspellings of <altavista.com>, to the Complainant);
Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259 (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to the Complainant).In addition, the Respondent is using the disputed Domain Name to attract the Complainant’s customers and make a profit from every Internet user it redirects. The Respondent is using a domain name that is confusingly similar to the Complainant’s mark in order to cause confusion for the Respondent’s own commercial gain. Avid Dating Life Inc. v. WhoIs privacy service / Chen sizhu c/o Dynadot Privacy, WIPO Case No. D2012-1265 (finding bad faith registration and use of typo-variants that redirect traffic to the Complainant’s site and earn commission through the Complainant’s affiliate program).
The Respondent’s activities also arguably fall within Paragraph 4(b)(i) because, by selling the Internet traffic that hits the disputed Domain Name for a set period of time, the Respondent has registered the disputed Domain Name primarily for the purpose of renting the disputed Domain Name to the Complainant or, if the Complainant cannot or does not purchase the traffic, to the Complainant’s competitors.
The Respondent’s only plausible reason to register and use the disputed Domain Name that is a misspelling of the Complainant’s TURBOTAX trademark is to take unfair advantage of the recognition associated with the Complainant’s TURBOTAX mark and make a profit by redirecting consumers who make a typographical mistake. Therefore, there is no question that the 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 the Complainant’s TURBOTAX mark.
Given the above, it is clear that the Respondent has registered and is using the disputed Domain Name in bad faith.
B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.
6. Discussion and Findings
To qualify for cancellation or transfer of the disputed Domain Name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP decisions in which the respondents failed to file a response, the UDRP panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
A. Identical or Confusingly Similar
It is well established in previous UDRP decisions that, where the disputed Domain Name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed Domain Name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed Domain Name essentially incorporates the Complainant’s well-known and widely-used TURBOTAX trademark, with a slight misspelling as mentioned above, namely, the reversal of the lettering from “rbo” to “bor” to create the misspelled word “turbortax”, and this makes the disputed Domain Name confusingly similar to the Complainant’s well-known and widely-used TURBOTAX registered trademark.
This conduct constitutes so-called “typosquatting” in that it appears to have been included by the Respondent to cover cases, where persons wishing to connect with the Complainant and its products and services, inadvertently misspell the Complaint’s TURBOTAX mark. See Decathlon SAS v. Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited, WIPO Case No. D2015-0198; and Wikimedia Foundation, Inc. v. Domains by Proxy, LLC / Management Group, Nanci Nette, WIPO Case No. D2018-1453. See also Philip Morris USA Inc. v. Compsys Domain / Compsys Domain Solutions Private Limited, WIPO Case No. D2017-2395 and the previous UDRP cases cited therein.
Furthermore, the addition of the gTLD “.com” is irrelevant in determining whether the disputed Domain Name is confusingly similar to the Complainant’s well-known and widely-used TURBOTAX trademark, this being for Internet registration purposes only. See Blue Sky Software Corp. v. Digital Sierra Inc. and Abdullah Khan, WIPO Case No. D2000-0165.
In view of the above, the Panel finds that the disputed Domain Name is confusingly similar to the Complainant’s well-known and widely-used TURBOTAX trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in the same.
The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed Domain Name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:
– whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed Domain Name or a name corresponding to the disputed Domain Name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights;
– whether the Respondent is making a legitimate noncommercial or fair use of the disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed Domain Name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and widely-used TURBOTAX trademark. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and widely-used TURBOTAX trademark, which the Panel considers, as asserted above by the Complainant, would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services.
Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well-known and widely-used TURBOTAX mark and also the valuable goodwill that the Complainant has established in that trademark through the Complainant’s use without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed Domain Name in connection with any bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed Domain Name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed Domain Name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed Domain Name.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 respondent’s] website or location or of a product or service on [its] website or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed Domain Name confusingly similar to the Complainant’s well-known and widely-used TURBOTAX mark, is trading unfairly on the Complainant’s valuable goodwill established in such trademark.
The incorporation of a typographical variation of the Complainant’s well-known and widely-used TURBOTAX mark in the disputed Domain Name, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products and services marketed under its well-known and widely-used TURBOTAX registered trademark.
Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed Domain Name by chance; but, as noted above, appears to have been – or, at least, should have been – fully aware of the notoriety of the Complainant and its worldwide business activity, as well as its well-known and widely-used TURBOTAX registered trademark and its prior commercial use.
Furthermore, the anonymity of the Respondent through the use of a privacy services organization also suggests, in the view of the Panel, bad faith on the part of the Respondent.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent in the circumstances of this case. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account, and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in its contentions, as set out above, including the Respondent’s use of the disputed Domain Name to profit off the Complainant’s intended Internet traffic through the monetization scheme, involving the Respondent selling Internet traffic and collecting referral fees (as described above), and also based on the previous UDRP cases cited above, the Panel concludes that the Respondent has registered and is using the disputed Domain Name in bad faith.
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 <tubortax.com> be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Date: August 24, 2020
