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WIPO Arbitration and Mediation Center
HRB Royalty, Inc. v. Pro-Life Domains Inc.
Case No. D2003-1021
1. The Parties
The Complainant is HRB Royalty, Inc., a Delaware Corporation with a principal place of business in Nassau, Bahamas, represented by Piper Rudnick LLP, United States of America.
The Respondent is Pro-Life Domains Inc. of Bronx, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wwwhrblock.com> ("the Domain Name") is registered with Intercosmos Media Group, Inc., d/b/a DirectNIC.com ("Intercosmos").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2003. That same day, the Center transmitted by e-mail to Intercosmos a request for registrar verification in connection with the Domain Name. Also on December 23, 2003, Intercosmos transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 December 31, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 20, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on January 22, 2004.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 23, 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
Complainant H&R Block owns trademarks, service marks, trade dress and trade names related to "H&R Block" for tax return preparation and financial planning services (the "H&R Block Marks"). Those rights include numerous registrations issued by the U.S. Patent and Trademark Office, many of which have become incontestable. Since as early as January 1956 (well over 45 years), H&R Block has prominently used the H&R Block Marks in connection with its tax preparation and financial planning services. Complainant spends millions of dollars to advertise its services under the H&R Block Marks in the United States and worldwide, for example by way of newspapers, magazines, television, radio, trade publications, the Internet, signage and counters. Thus, the H&R Block Marks have become well known to the trade and public for H&R Block’s tax preparation and financial planning services. Respondent has never been authorized to use the H&R Block marks.
H&R Block operates its website at "www.hrblock.com". Consumers can access information about H&R Block and its products and services, and even file a tax return on-line via the website. The H&R Block Website is a vital and integral part of H&R Block’s worldwide tax preparation business.
Respondent uses the Domain Name to redirect Internet users to "www.abortionismurder.com", a site showing a photograph of an aborted fetus and anti-abortion information. The website also offers for sale anti-abortion videos and CDs.
Through correspondence, H&R Block informed Respondent about its rights in the H&R Block Marks and its infringing activities, and attempted to resolve this matter. Respondent failed to respond to H&R Block’s letters.
5. Parties’ Contentions
Complainant contends that the Domain Name is identical or confusingly similar to H&R Block’s Marks, Respondent has no rights or legitimate interests in the Domain Name, and Respondent registered and is using the Domain Name in bad faith.
Respondent failed to reply to Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw
adverse inferences regarding those facts. Mary-Lynn Mondich and American
Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,
WIPO Case No. D2000-0004. Insofar as Respondent
has defaulted, it is therefore appropriate to accept the facts asserted by Complainant
and to draw adverse inferences of fact against Respondent. Nonetheless, Paragraph
4(a) of the Policy requires that the Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
(i) the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
It is uncontested that H&R Block has established worldwide rights in its
famous H&R Block Marks and name. The Domain Name is nearly identical and
surely confusingly similar to "H&R Block" as well as Complainant’s
domain name <www.hrblock.com>. Respondent has made insignificant alterations
to the core mark "H&R Block" by removing the ampersand in "H&R
Block" and the period between "www" and "block" to
An ampersand is not a valid character in a domain name and its absence is not
sufficient to prevent the Domain Name from being confusingly similar to Complainant’s
marks. AT&T Corp. v. WorldclassMedia.com, WIPO
Case No. D2000-0553. Furthermore, "www" is the well-known acronym
for "world wide web" and thus it has no distinguishing capacity in
a domain name context. Deutsche Telekom AG v. Luis Javier Collazos, WIPO
Case No. D2003-0371).
The use of "www" at the beginning of a domain name causes confusion
whenever a very common and well-known typing error occurs, such as the typist
omits the period (".") which would normally separate a domain name
from the "www" field. Id.
The Panel therefore holds that Complainant has established element (i) above.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests
in the disputed domain name. It is undisputed that Complainant has not licensed
or otherwise permitted Respondent to use the H&R Block Marks in any manner
including as a domain name. Respondent’s only use of the Domain Name is an infringing
one -- to link to the "www.abortionismurder.com" website. The Chase
Manhattan Corporation et al. v. John Whitely, WIPO
Case No. D2000-0346 ("An infringing use of Complainant’s trademark
can not give rise to a legitimate right or interest on the part of Respondent.").
Where, as here, the Complainant has raised a prime facie presumption
of the Respondent’s lack of such right or interest, and Respondent has failed
to rebut that presumption, the Panel is satisfied that the Complainant has carried
its burden of proving that Respondent has no legitimate interest in the Domain
Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered
as evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly
related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
(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."
These criteria are not exclusive and the panel may conclude that the Respondent
acted in bad faith where other circumstances reveal the bad faith nature of
the registration and use of the disputed domain name.
Respondent is an habitual typosquatter and cybersquatter who uses domain names
comprised of confusingly similar and well-known marks to link to websites including
anti-abortion websites. See, e.g., Fox News Network, L.L.C. v. Pro-Life Domains,
Inc., WIPO Case No. D2003-0335; State
of Wisconsin v. Pro-Life Domains, Inc., WIPO Case
No. D2003-0432. On the particular anti-abortion website at issue, Respondent
furnishes anti-abortion information and materials and sells CD’s and videotapes
relating to the topic. It is undisputed that Respondent, once again, registered
and used a domain name, one almost identical to Complainant’s world famous mark,
for the sole purpose of intentionally diverting Internet users from H&R
Block’s website to Respondent’s anti-abortion website for commercial gain. This
constitutes bad faith registration and use of the Domain Name under Paragraph
4(b)(iv) above. Indeed, Respondent’s typosquatting, alone, is a recognized indicator
of bad faith. See National Association of Professional Baseball Leagues
v. John Zuccarini, WIPO Case No. D2002-1011
("Typosquatting is inherently parasitic and of itself evidence of bad faith.").
It is hardly coincidental that Respondent registered a domain name comprising
a common alteration of H&R Block’s famous marks in order to divert internet
traffic from H&R Block’s site to its anti-abortion site. Thus, pursuant
to Paragraph 4(b)(ii), Respondent has also acted in bad faith by seeking to
prevent Complainant from reflecting its trademark in a corresponding domain
The Panel therefore holds that the Complainant has established element (iii)
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 name <wwwhrblock.com>
be transferred to the Complainant.
Harrie R. Samaras
Date: March 8, 2004