Freetausa.com, Freetaxuas.com

The timeline behind freetausa.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Taxhawk, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin Claim Number: FA1210001465277 PARTIES Complainant is Taxhawk, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <freetausa.com> and <freetaxuas.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. David A. Einhorn appointed as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2012; the National Arbitration Forum received payment on October 1, 2012. On October 3, 2012, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <freetausa.com> and <freetaxuas.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On October 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@freetausa.com, postmaster@freetaxuas.com. Also on October 4, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On November 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant’s Allegations a) Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the <freetausa.com> and <freetaxuas.com> domain names. a. Complainant has rights in the FREETAXUSA mark. The mark is used in connection with temporary use of online non-downloadable software for tax calculation, preparation, filing, and payment processing. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the FREETAXUSA mark (Reg. No. 3,805,696 filed May 27, 2009, registered June 22, 2010 and claiming a first use in Commerce date of January 5, 2003). b. Complainant also has common law rights in the FREETAXUSA mark predating Respondent’s registration of the <freetausa.com> and <freetaxuas.com> domain names. In the period December 31, 2004 throughout May 31, 2005 alone, Complainant conducted an advertising campaign for its products under this mark of $100,000 per day, and ran twelve (12) ad campaigns prior to this time. c. The <freetausa.com> and <freetaxuas.com> domain names are confusingly similar to the FREETAXUSA mark. Respondent merely misspells the mark to create the disputed domain names. b) Policy ¶ 4(a)(ii): Respondent’s lack of rights in the <freetausa.com> and <freetaxuas.com> domain names. a. Respondent is not commonly known by the disputed domain names. The WHOIS record for the domain names suggests that Respondent is known as something other than the trademark associated with Complainant. Complainant has not licensed, authorized, or permitted Respondent to use the FREETAXUSA mark. b. The <freetausa.com> and <freetaxuas.com> domain names resolve to websites where Respondent displays links that compete with the goods and services Complainant offers, as well as a link to Complainant’s website. This use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. c) Policy ¶ 4(a)(iii): Respondent’s bad faith registration and use of the <freetausa.com> and <freetaxuas.com> domain names. a. Respondent is a serial cybersqatter and has developed a pattern of bad faith registration and use of domain names. b. Respondent’s registration and use of the <freetausa.com> and <freetaxuas.com> domain names is disruptive to Complainant’s business. The disputed domain names’ display of competing goods and services diverts potential customers away from Complainant to third-party websites. c. The <freetausa.com> and <freetaxuas.com> domain names resolve to websites where Respondent provides links to Complainant and third parties who offer goods and services in competition with Respondent. For each misdirected Internet user, Respondent receives revenue. Respondent is using the disputed domain names to take advantage of Complainant’s FREETAXUSA mark to create a wrongful competitive advantage. d. Respondent has engaged in typosquatting. In the <freetausa.com> domain name, the only change made to the FREETAXUSA mark is the deletion of a single letter, and in the <freetaxuas.com> domain name, the only change made to the FREETAXUSA mark are the transposition of two letters. B. Respondent Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <freetausa.com> domain name on April 17, 2007 and the <freetaxuas.com> domain name on January 27, 2007. FINDINGS AND DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Identical and/or Confusingly Similar Complainant contends that it has rights in the FREETAXUSA mark which it uses to provide temporary use of online non-downloadable software for tax calculation, preparation, filing, and payment processing. Complainant provides the Panel with evidence of its ownership of the USPTO registration for the FREETAXUSA mark (Reg. No. 3,805,696 filed May 27, 2009; registered June 22, 2010). Panels have found that, regardless of the location of the parties, the registration of a mark with a trademark authority is evidence of having rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant has common law rights in the FREETAXUSA mark. Complainant asserts that it first used the FREETAXUSA mark in commerce on January 5, 2003. Complainant also provides evidence of an extensive advertising campaign under the FREETAXUSA mark in the period December 3, 2004 through May 31, 2005. Complainant provides the Panel with a variety of media sources with references to and promotions of Complainant’s business dating back to January 17, 2003. The continuous and ongoing use of a mark establishes secondary meaning, thus providing complainant with common law rights in the mark preceding the registration of the disputed domain names. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing and secondary meaning was established). Complainant contends that Respondent’s <freetausa.com> and <freetaxuas.com> domain names are confusingly similar to the FREETAXUSA mark. Complainant asserts that Respondent merely creates minor misspellings of the mark to create the disputed domain names. Panels have found that the minor misspelling of a mark does not differentiate the disputed domain name from the mark within it. See, e.g., Assurant, Inc. v. Milan Kovac, FA1463515 (Nat. Arb. Forum Nov. 8, 2012).Therefore, the Panel finds that the <freetausa.com> and <freetaxuas.com> domain names are confusingly similar to the FREETAXUSA mark pursuant to Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant contends that Respondent is not commonly known by the disputed domain names. Complainant asserts that the WHOIS record for the domain names suggests that Respondent is known as something other than the trademark associated with Complainant. The Panel notes that the WHOIS record for the <freetausa.com> and <freetaxuas.com> domain names list “Private Registrations Aktien Gesellschaft / Domain Admin” as the domain name registrant. Complainant states that it has not licensed, authorized, or permitted Respondent to use the FREETAXUSA mark. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel held that the WHOIS information as well as information relating to the possible authorization to use a mark is helpful evidence when determining if a respondent is known by a disputed domain name. Therefore, the Panel holds that Respondent is not commonly known by the <freetausa.com> and <freetaxuas.com> domain names pursuant to Policy ¶ 4(c)(ii). Complainant next alleges that Respondent’s lack of rights and legitimate interests is evidenced by Respondent’s use of the disputed domain names. Complainant asserts that the <freetausa.com> and <freetaxuas.com> domain names resolve to websites where Respondent displays links that compete with the goods and services Complainant offers, as well as a link to Complainant’s website. The Panel notes that these links are listed under headings such as “Federal Taxes 2011 (Free)” and “State Tax Notes.” The Panel therefore finds that Respondent’s use of the <freetausa.com> and <freetaxuas.com> domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Thus, Complainant has also satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant has submitted evidence that Respondent, Private Registrations Aktien Gesellschaft / Domain Admin, has been the respondent in multiple previous UDRP proceedings that resulted in the disputed domain names being transferred to the respective complainants. Complainant thus argues that Respondent is a serial cybersquatter. See UnitedHealth Grp. Inc. v. Private Registrations Aktien Gesellschaft c/o Domain Admin, FA 1277666 (Nat. Arb. Forum Sept. 24, 2009); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Private Registrations Aktien Gesellschaft c/o Domain Admin, FA 1306652 (Nat. Arb. Forum Mar. 23, 2010). The Panel finds that multiple adverse UDRP proceedings constitute evidence of Respondent’s serial cybersquatting and bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Complainant further asserts that Respondent’s registration and use of the <freetausa.com> and <freetaxuas.com> domain names is disruptive to Complainant’s business. Complainant notes that the disputed domain names’ display of competing goods and services diverts potential customers away from Complainant to third-party websites. The panel in Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), held that the display of competing links was disruptive to a complainant’s business. Similarly, this Panel holds that Respondent’s registration and use of the <freetausa.com> and <freetaxuas.com> domain names indicate Respondent’s bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent’s bad faith is evident under Policy ¶ 4(b)(iv) as well. Complainant informs the Panel that the <freetausa.com> and <freetaxuas.com> domain names resolve to websites where Respondent provides links to Complainant and third parties who offer goods and services in competition with Respondent. According to Complainant, for each misdirected Internet user, Respondent receives revenue. Complainant argues that Respondent is using the disputed domain names to take advantage of Complainant’s FREETAXUSA mark to create a wrongful competitive advantage. The Panel agrees, and finds that Respondent registered and uses the <freetausa.com> and <freetaxuas.com> domain names in a bad faith attempt to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv). See Red Hat, supra (Finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Complainant lastly alleges that Respondent has engaged in typosquatting. Complainant notes that in the <freetausa.com> domain name, the only change made to the FREETAXUSA mark is the deletion of a single letter. Similarly, Complainant states that in the <freetaxuas.com> domain name, the only change made to the FREETAXUSA mark is the transposition of two letters. The Panel agrees, and finds that Respondent typosquatted the FREETAXUSA mark and that Respondent’s registration and use of the <freetausa.com> and <freetaxuas.com> domain names demonstrates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Thus, Complainant has also satisfied Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <freetausa.com> and <freetaxuas.com> domain names be TRANSFERRED from Respondent to Complainant. David A. Einhorn, Panelist Dated: December 10, 2012 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.