taxanalyst.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tax Analysts v. eCorp

Case No. D2007-0040

1. The Parties

The Complainant is Tax Analysts, Falls Church, Virginia, United States of America, represented by Sourcing Law Group, PLC, United States of America.

The Respondent is eCorp, Indianapolis, Indiana, United States of America, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <taxanalyst.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2007. On January 12, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On January 18, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. 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, and the proceedings commenced on February 16, 2007. Subsequently, a request for extension to file a response was submitted by the Respondent. In view of the parties’ submissions, the Center granted a brief extension and set, the due date for Response to March 15, 2007. The Response was filed with the Center on March 15, 2007.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 28, 2007. 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.

The Respondent submitted a supplemental filing (“Petition to Strike Words from Response”) on March 28, 2007.

4. Factual Background

The Complainant Tax Analysts is a District of Columbia corporation with its principal place of business in Falls Church, Virginia. The Complainant provides information online, in newsletters and other publications, and in multimedia software products concerning United State federal and state tax laws, policies, regulations, treaties, and decisions, as well as selected international tax developments.

The Complainant obtained trademark registrations from the United States Patent and Trademark Office (USPTO) in 1990 and 2000 for design marks incorporating the words “Tax Analysts”, showing first use in commerce in 1981. These registrations expressly disclaimed any exclusive right to the words “Tax Analysts”. The Complainant has allowed these marks to expire.

The Complainant currently holds four other design marks incorporating the words “Tax Analysts” or “Tax Analysts Tax Information Worldwide”, registered by USPTO in 2000, 2002, 2003, and 2004, respectively. Each of these registrations includes a “distinctiveness limitation statement” as to the words “Tax Analysts”.

Subsequently, the Complainant obtained the following United States Trademark Registrations for TAXANALYSTS (with no space between the words) as a standard character mark:

The Complainant operates a website at “www.taxanalysts.com”, using a domain name that corresponds exactly to the registered TAXANALYSTS mark.

The Respondent eCorp appears to be an Indiana corporation. The business entities database operated by the Indiana Secretary of State lists a company registered as ECORP.COM, Inc. at the same postal address given for “eCorp”, the named Respondent and registrant of the Domain Name. The Response is supported by the Declaration of Chad Folkening, “president of eCorp”.

The Respondent characterizes itself as a “web-based sales and marketing firm specializing in Internet retail sales” since 1996. The Respondent has developed numerous “directory” websites, such as “www.handyman.com”, “www.searchnet.com”, and “www.talentsearch.com”. These websites are typically labeled “The eCorp Network” or “An eCorp Company”. They display sponsored advertising links relevant to the domain name. In each case, according to the Respondent, it has selected domain names “based on their descriptive nature”. The Respondent’s website at “www.ecorp.com” advertises that the Respondent has “a platform of over 11,000 domain names”.

The Respondent registered the Domain Name at issue here on December 12, 1999. The Domain Name resolves to a directory website labeled “TaxAnalyst.com” and “an eCorp Venture”. The website displays links to third-party sources of tax advice and tax filing services, as well as to providers of telecommunications and financial services.

5. Parties’ Contentions

A. Complainant

The Complainant claims TAX ANALYSTS and TAXANALYSTS as marks grounding the Policy Complaint. The Complainant argues that the Domain Name is confusingly similar to both marks and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent registered and used the Domain Name in a bad-faith effort to mislead Internet users for commercial gain.

B. Respondent

The Respondent argues that the claimed marks are descriptive and denies prior knowledge of the Complainant or its marks. The Respondent observes that the Domain Name was registered before the Complainant obtained a registered standard character mark and denies that the Complainant had a protectible common law mark before the Domain Name was registered. The Respondent asserts a legitimate interest in using a descriptive, possibly generic, term to advertise third-party products and services.

The Respondent refers to the seven-year delay in filing the Complaint as evidence that the Complainant recognized the weakness of its claims, mentioning the doctrine of laches. The Respondent also seeks a finding of Reverse Domain Name Hijacking.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Supplemental Filing

The Respondent submitted a supplemental filing, “Petition to Strike Words from Response”, acknowledging that the Response as filed mischaracterized the Complainant’s recital of facts concerning its expired design marks. The Panel accepts this supplemental filing and considers the Response only in its corrected form.

B. Laches

The Respondent acknowledges that the doctrine of laches “is not a defense normally recognized under the Policy” but argues that “the extreme length of time Complainant waited to file this action is evidence that Complainant did not believe its claims were truly warranted”.

The parties are both located in the United States, where courts recognize the doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, the Panel concludes that the equitable defense of laches does not properly apply to this Policy proceeding. The remedies under the Policy are injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of communications, goods, or services. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4^th ed. 2005) §31:10, p. 31-35 and cases cited therein (in common law, the defense of laches bars the recovery of damages incurred before the filing of a lawsuit; this does not apply to injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace).

The Panel also finds it unnecessary to speculate as to the reasons why the Complainant failed to bring a Policy Complaint until seven years after the Domain Name was registered. The Complaint will be evaluated on its merits.

C. Identical or Confusingly Similar

The Complainant has not demonstrated that it holds a registered TAX ANALYSTS trademark. The registered design marks incorporating those words disclaim exclusivity as to the words “Tax Analysts”. The Complainant also has not adduced evidence that the claimed mark has acquired sufficient distinctiveness to be protected as a common law mark, and the disclaimers in the design registrations suggest otherwise.

The Complainant’s TAXANALYSTS standard character mark, by contrast, is registered. It differs from the Domain Name by one letter (the plural “s”). For purposes of this element of the Complaint, it is not relevant that the mark was registered – and first used in commerce – only after the Domain Name was registered.

As the Respondent points out, the words “tax analyst” that comprise the Domain Name are descriptive and used by numerous third parties to describe their tax-related services. This is reflected in the results of Internet search engine queries supplied as exhibits to the Response. It may by alleged , therefore, that the Domain Name is in fact not confusingly similar to the TAXANALYSTS mark. However, the test of confusing similarity under the UDRP is an “objective test”, a comparison between the domain name and the trademark. Here, the only textual difference is the omission of the letter “s” in the disputed domain name.

The Panel finds that the Complainant has established the first element of the Policy.

D. Rights or Legitimate Interests

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(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 Respondent contends that using descriptive or generic terms for a website with sponsored advertising links is a legitimate commercial use, implicitly invoking paragraph 4(c)(i) of the Policy. The Complainant argues, to the contrary, that “directory” uses of domain names are typical of “typosquatters”, especially where the domain names are “common misspellings of others’ trademarks”.

But there is little to suggest typosquatting in this proceeding. The Domain Name consists of two common, correctly spelled English words. The Complainant’s TAXANALYSTS mark is neither arbitrary nor highly distinctive. The otherwise distinctively omitted space between the two words in the mark is unexceptional in the context of a domain name, since the technical standards of the domain name system do not permit the use of spaces. Examples of the Respondent’s other websites, provided by the Complainant as well as the Respondent, do not obviously employ third-party trademarks or misspelled variations of distinctive trademarks as domain names.

Several Policy decisions have concluded that the use of descriptive domain names for paid advertising links or directory pages can be a legitimate commercial activity. See, e.g., Sweeps Vaccum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 (legitimate use of the domain name to describe “the types of businesses . . . listed on the directory page”); KIS v. Anything.com Ltd., WIPO Case No. D2000-0770 (evidence suggests that the name was chosen because of its intrinsic value, not because it corresponds to a trademark). The Panel agrees with the conclusion reached in Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241: “the use of a generic domain name to provide information about the genus satisfies the requirements of paragraph 4(c)(i) of the Policy”.

Unless there is persuasive evidence that the Domain Name was selected opportunistically to create confusion and exploit the Complainant’s mark, the Panel would conclude that the Respondent has a legitimate interest in using the Domain Name, comprised as it is of descriptive English words, for advertising or other commercial purposes. Thus, the determination of legitimacy in this case is intertwined with the question of bad faith, which is better addressed below in connection with the third element of the Policy.

E. Registered and Used in Bad Faith

The Complaint must establish that “the Domain Name has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). The Complainant implicitly relies on paragraph 4(b)(iv) of the Policy, which describes one example of bad-faith registration and use:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant infers, without any direct evidence, that the Respondent both registered and used the Domain Name to create a likelihood of confusion among Internet users familiar with the Complainant’s marks and thereby divert them to the Respondent’s website for commercial gain.

The Respondent’s president Chad Folkening categorically denies such intent in his Declaration:

“We did not register the Disputed Domain with Complainant’s mark in mind. We had no knowledge of Complainant’s alleged trademark when it [sic] registered the Disputed Domain.”

This assertion is plausible, because (a) the Domain Name consists of two common English words and (b) the Respondent registered the Domain Name in 1999, some three and a half years before the Complainant claims first use of the TAXANALYSTS mark and at a time when the Complainant held only design marks that expressly disclaimed exclusive rights to the descriptive words “tax analysts”.

Absent evidence that the Complainant owned, or would shortly own, a TAX ANALYSTS or TAXANALYSTS trademark in 1999, and that the Respondent was more likely than not aware of that fact, it is impossible to conclude that the Domain Name was registered in bad faith. See Diknah, S.L. v. WebQuest.com Inc., WIPO Case No. D2005-0573, and Builder’s Best, Inc. v. Yoshiki Okad, WIPO Case No. D2004-0748 (in order to find bad faith, “there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark”).

The Panel notes that the Respondent eCorp and its president Chad Folkening have been the subject of several Policy complaints, which is perhaps not surprising for a company with an inventory of thousands of domain names. In several of these cases, the panels found bad faith and ordered the Respondent to transfer the domain names at issue. See Artnews, L.L.C v. Ecorp.com, Nat. Arb. Forum Claim No. FA0007000095231; WFBQ-FM/WRZX-FM, WNDE-AM v. ecorp.com a/k/a ecorp, Nat. Arb. Forum Claim Number: FA0203000105852; Home Director Inc .v. HomeDirector, WIPO Case No. D2000-0111; Europay International S.A. v. EuroCard.org / Chad Folkening / Eurocard.com, Inc., WIPO Case No. D2000-0173; and The Southern Company v. Chad Doms a/k/a Chad Folkening, WIPO Case No. D2000-0184. It appears in each of these cases that the complainant’s marks were established by the time the domain names were registered.

In other Policy proceedings against the Respondent, bad faith was not found and the complaint was denied. See EPLAN Software & Service GmbH & Co K.G. (formerly known as Wiechers & Partner Datentecknik GmbH & Co K.G.) v. Chad Folkening, ECORP.com, Inc E-PLAN, and ECAST, WIPO Case No. D2000-0806; ECAST, INC. v. ECORP.COM, eResolution Case Number AF-0308; Audiopoint, Inc. v. eCorp a/k/a Chad Folkening, WIPO Case No. D2001-0509.

Thus, there is an ambivalent history of large-scale domain registrations, some of them giving rise to claims by trademark owners. In this case, however, the undisputed facts concerning the timing of domain registration and the acquisition of trademark rights preclude a conclusion that the Respondent targeted the Complainant’s mark. See, e.g., Robert Tas, Active Athlete Media, Inc. v. NYEC, WIPO Case No. D2006-0485 (despite the respondent’s history of bad-faith domain registrations, the panel denied a complaint based on a mark acquired years after the registration of the domain name at issue). The current proceeding has much in common with an earlier Policy proceeding involving the same Respondent, Audiopoint, Inc. v. eCorp a/k/a Chad Folkening, WIPO Case No. D2001-0509. There, the complaint was denied because it appeared the Respondent could have had no knowledge of a mark that was not yet protectible even under common law at the time that the Respondent registered the disputed domain name. The same is true here.

The Panel concludes that the Complainant has failed to establish the third element of the Complaint.

F. Reverse Domain Name Hijacking

The Respondent requests a finding of reverse domain name hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

Paragraph 15(e) of the Rules provides as follows:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

As the Rules do not provide for monetary remedies or specific relief in such a case, a finding of reverse domain name hijacking is of dubious value to the Respondent.

In any event, the Complainant holds registered marks that are nearly identical to the Domain Name and has used the name “Tax Analyst” in its business since 1981. The Complaint was advanced with colorable (if ultimately unpersuasive) claims, and there is no indication that the Complaint was brought to harass the Respondent as a competitor. While the Complainant has failed to establish all of the elements of a Policy complaint, the Panel does not conclude that the Complainant initiated this proceeding in bad faith. The Panel therefore declines to characterize the Complaint as an instance of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist

Dated: April 10, 2007