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Laches in UDRP case (3)

Laches in UDRP case (3)

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Published by: LEX-57 the lex engine on Dec 21, 2010
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISIONHRB Royalty, Inc. v. Asif VadariaCase No. D2007-16581.The Parties
The Complainant is HRB Royalty, Inc., Nassau, Bahamas, represented by BerkowitzOliver Williams Shaw & Eisenbrandt LLP, Kansas City, Missouri, United States of America.The Respondent is Asif Vadaria, Chicago, Illinois, United States of America.
2.The Domain Name and Registrar
The disputed domain name <taxcutinc.com> (the “Domain Name”) is registered withDSTR Acquisition. I, LLC d/b/a 000Domains.com (the “Registrar”).
3.Procedural History
3.1The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on November 9, 2007. On November 12, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with thedomain name at issue. In a subsequent exchange of emails (which came to an endon November 22, 2007), the Registrar transmitted to the Center its verificationresponse confirming that the Respondent is listed as the registrant and providingthe contact details. In response to a notification by the Center that the Complaintwas administratively deficient in that it did not correctly identify the Respondent,the Complainant filed amendments to the Complaint on November 26, 2007 and November 28, 2007. The Center verified that the Complaint together with theamendments to the Complaint satisfied the formal requirements of the UniformDomain Name Dispute Resolution Policy (the “Policy”), the Rules for UniformDomain Name Dispute Resolution Policy (the “Rules”), and the WIPOSupplemental Rules for Uniform Domain Name Dispute Resolution Policy (the“Supplemental Rules”).
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3.2In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formallynotified the Respondent of the Complaint, and the proceedings commenced onDecember 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2007. The Response was filed with the Center onDecember 25, 2007.3.3The Center appointed Matthew S. Harris as the sole panelist in this matter onJanuary 11, 2008. The Panel finds that it was properly constituted. The Panelhas submitted the Statement of Acceptance and Declaration of Impartiality andIndependence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4.Factual Background
4.1The Complainant is “affiliated” with the H&R Block group of companies, whichcollectively make up the largest provider of individual income tax preparationservices in the United States and also provide tax services internationally. TheComplainant’s ultimate parent is listed on the New York Stock Exchange.4.2The Complainant, through its direct and indirect licensees, has used the “TaxCut” name since at least 1988 in connection with its products and services.4.3The Complainant and its affiliates own various registered trademarks. Thetrademarks that it relies upon in the context of these proceedings are:(i)US registered Trademark No 3,150,594 filed on March 9, 2005 in respect o“computer programs for use in the preparation of tax returns” in thefollowing form:The registration records the date of first use as November 30, 2001 and firstuse in commerce as November 30, 2004.(ii)US registered Trademark No 1,715,156 filed on March 12, 1991 in respectof “computer programs for use in the preparation of tax returns”. Thisregistration is for the words “tax cut” but the mark is subject to thedisclaimer “no claim is made to the exclusive right to use ‘tax’ apart fromthe mark as shown”The registration records the date of first use and first use in commerce as November 15, 1988.4.4The Respondent is an individual but apparently either trades under the name, othrough a business called, “Tax Cutters Inc”.4.5The Respondent registered the Domain Name on December 24, 1999.4.6As at the date of the Complaint and this decision the Domain Name is being usedfor a website that is branded with the name “Taxcutters, Inc”, and “Taxcutters,
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Inc” describes itself as “Computerized Accounting and Income Tax Specialists”.The “contact details” on the website identify the Respondent i.e. “Asif Vadaria(CPA)”.4.7The website is somewhat old fashioned in style but it also contains a link to“www.udomytax.com”. The website at the “www.udomytax.com”addressappears to be another website for “Taxcutters Inc” and the Respondent.However, this looks very different from the website operating from the Domain Name, being far more professional in style.4.8The Complainant through its attorneys sent cease and desist letters to theRespondent on August 9 and October 12, 2007. The Respondent did not respondto either of these letters.
5.Parties’ ContentionsA.Complainant
5.1The Complainant’s contentions are as follows:
Trademark rights
5.2The Complainant relies upon the registrations already described. It also contendsthat as a result of its use of “‘Tax Cut’ and related Marks” since at least as earlyas 1988, it has common law rights in the “Marks”.5.3It claims that the Domain Name comprises the TAX CUT mark with the genericaddition “inc”. As such it is said to be confusingly similar “if not essentiallyidentical” to the Complainant’s “Marks”. It relies in this respect on the decisionsin
American Online v. iDomainNames.com,
NAF Case No. FA 93766 and
Gorstew Limited & Unique Vacations, Inc v Berkshire Trust,
NAF Case No.FA008000095430.
 No rights or legitimate interests
5.4The Complainant contends that the Respondent has without authorisation“misappropriated a name that is a well-established identifier of the Complainant’sgoods and services for an improper competing commercial purpose” and this has been done “with the intent to mislead and divert consumers or to tarnish theMarks at issue”. As a consequence the Respondent is said to have no rights or legitimate interests in respect of the Domain Name.
 Bad faith registration and use
5.5The Complainant contends that given the similarity between the Domain Nameand the Complainant’s “Marks”, and the competing businesses of the parties, a presumption must be made that the Respondent was aware of the existence of theComplainant and its “Marks” at the time it registered the Domain Name.5.6This is said to be evidence:(i)that by means of the Domain Name the Respondent has intentionallyattempted to attract for commercial gain, Internet users to his website or 
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