HRB Royalty, Inc. v. Phayze Inc. Case No. D2003-1043
1. The Parties The Complainant is HRB Royalty, Inc., Kansas City, Missouri, United States of America, represented by Piper Rudnick, United States of America.
The Respondent is Phayze Inc., of Paris, France.
2. The Domain Names and Registrar The disputed domain names, and , are registered with IDR Internet Domain Registry Ltd.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2003. On December 31, 2003, the Center transmitted by email to IDR Internet Domain Registry Ltd a request for registrar verification in connection with the domain names at issue. On January 5, 2004, IDR Internet Domain Registry Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint by e-mail and courier, and the proceedings commenced on January 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2004.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 4, 2004. 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 owns trade mark registrations in at least the United States for “H & R BLOCK AND DESIGN” in connection with tax and financial planning services. The US registrations are Nos 2533014, 2533036, 2533035 and 2533034. The original applications on which the registrations were based were filed in June and July 2001.
The Complainant licenses these trade marks to various operating subsidiaries of the group parent H & R Block Inc.
Although the trade mark registrations have been secured relatively recently, the Complaint asserts that the group business in providing tax services dates from January 1956, and that the trade marks have been in use since then.
The Complainant’s group has registered the domain name . Whois records show that it was first registered as early as March 6, 1996. The Annual Report available at the website shows that the group had revenues in 1999, of US$1.6 billion rising to US$3.8 billion in 2003. It also has operations or licensees operating outside the United States of America in Canada, the United Kingdom, Germany, Italy, Japan, Korea, Australia, the Philippines, Panama, Puerto Rico, Guam, British Virgin Islands and Micronesia.
The Respondent registered both the disputed domain names on March 28, 2002. Prior to being contacted by the Complainant’s lawyers, the domain names resolved to a website at “hanky-panky-college.com.” A print out from that website at that time confirms that that website was a vehicle for the display of hardcore pornography. Since the Complainant attempted to contact the Respondent, the domain names now redirect to websites at “amaturevideos.nl/hanky-panky-class.html”. At the time the Complaint was filed, this “suggestively” named website was temporarily inactive and now resolves to some sort of Internet search site.
The Respondent has previously been the subject of UDRP complaints: Ameriquest Mortgage Company v. Phayze Inc. WIPO Case No. D2002-0861, Ultimate Electronics Inc. v. Phayze, Inc., WIPO Case No. D2002-0851, Voicestream Wireless Corporationv. Phayze 1 Phayze 2; Phayze Inc., WIPO Case No. D2002-0636 and Netstock Inc. v. Music Wave, WIPO Case No. D2002-0441.
5. Discussion and Findings As noted above, there has been no Response. The Center’s attempts to provide the Respondent with a copy of the Complaint by fax and courier have been unsuccessful. The address details used by the Center, however, have been confirmed as correct by the Registrar, IDR Internet Domains Registry Ltd. Consequently, I am satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention and the Respondent has had an adequate opportunity to put his, her or its case in rebuttal of the Complaint.
Paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as paragraph 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:-
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
I consider each of these in turn below.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights.
At the least, the Complainant has demonstrated ownership of the registered trademarks set out in section 4 above.
The question of resemblance for the purposes of the Policy requires a comparison of the disputed domain names to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001 0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c).
Here, the disputed domain names differ from the registered trade marks first in that they do not include the device element of a green square. The literal element of the registered trademarks, however, is H & R BLOCK. That is clearly a significant and distinctive feature of the registered trademarks.
The disputed domain names differ from this literal component in minor typographical matters only. The ampersand and three spaces are omitted; as is the “K” or the “C” in the first and second disputed domain names, respectively. Such differences are far too minor in the context of these registered trade marks to escape confusing similarity: see e.g. the decisions cited in Microsoft Corporation v. Damian Macafee, WIPO Case No. D2004-0027.
Likewise, the addition of the generic gTLD “.com” does not affect the likelihood of confusion. See for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252; Williams-Sonoma d/b/a Pottery Barn v. John Zuccarini, WIPO Case No. D2002-0582.
Accordingly, I find that the two disputed domain names are confusingly similar to the Complainant’s registered trade marks.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three illustrations of rights or legitimate interests for the purposes of the Policy. They are:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The examples given in paragraph 4(c) are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.
It is notoriously difficult for a complainant to prove a negative of the sort required by paragraph 4(a)(ii) of the Policy. Consequently, Panels have required a complainant to establish at the least a prima facie case under this heading and, if that is made out, an evidential onus shifts to the respondent to rebut the presumption of no rights or legitimate interests.
Here, the prima facie case is easily made out. The Complainant has not licensed its trademark rights to the Respondent. The disputed domain names have no obvious connection with the Respondent. The use of the disputed domain names to divert traffic to pornographic sites is not a legitimate or bona fide use in this context. Much of any traffic diverted would no doubt be traffic from the United States where the Complainant has clearly demonstrated registered trademark rights or other countries where it has established offices. Indeed, although the Respondent has provided an address in France, the websites which the disputed domain names resolved to when active were in English. Moreover, the Respondent’s history indicates a business model predicated on exploiting the trademarks and tradenames of others.
Taking all these matters into consideration, I am satisfied that the Complainant has sufficiently established that the Respondent does not have rights or legitimate interests in the disputed domain names.
On the evidence before me, the Respondent has clearly engaged in what is sometimes referred to as “typosquatting”. Conduct of that sort has repeatedly been held to breach the Policy particularly paragraph 4(b)(iv) – an intentional attempt to attract internet users to the Respondent’s website or other online locations for commercial gain by creating a likelihood of confusion with the Complainant’s trademark rights. A recent example is Microsoft Corporation v. Damian Macafee, WIPO Case No. D2004-0027. Such a conclusion is all the more easily reached in this case where the Respondent appears to have engaged in a pattern of such conduct. As in that case, I am also entitled to draw adverse inferences against the Respondent from its failure to file a Response.
Accordingly, I am clearly satisfied on the evidence in this dispute that the Respondent has registered and used both disputed domain names in bad faith within the terms of the Policy.
7. Decision For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and , be transferred to the Complainant.