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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intuit Inc. v. Salvia Corporation
Case No. D2008-1253
1. The Parties
1.1 The Complainant is Intuit Inc., of Mountain View, California, United States of America, represented by Fenwick & West, LLP, United States of America.
1.2 The Respondent is Salvia Corporation, Riga, of Latvia, represented by Anatoly Ostrovsky.
2. The Domain Name and Registrar
2.1 The disputed domain name <intiut.com> (the вЂњDomain NameвЂќ) is registered with DSTR Acquisition VII, LLC trading as Dotregistrar.com (the вЂњRegistrarвЂќ).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the вЂњCenterвЂќ) on August 15, 2008. On August 15, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 15, 2008, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вЂњPolicyвЂќ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњRulesвЂќ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњSupplemental RulesвЂќ).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced August 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2008. The Response was filed with the Center September 7, 2008.
3.3 On October 1, 2008 the Complainant filed a supplemental submission in reply to the RespondentвЂ™s Response (the вЂњReplyвЂќ).
3.4 The Center appointed Matthew S. Harris, Michelle Brownlee and Jeffrey M. Samuels as panelists in this matter on October 3, 2008. The Panel finds that it was properly constituted. Each member of 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.
3.5 On October 6, 2008 the Respondent filed a supplemental response answering the ComplainantвЂ™s Reply (the вЂњSupplemental ResponseвЂќ).
4. Factual Background
4.1 The Complainant is a company incorporated under the laws of the United States of America and is engaged in the provision of business and financial management software. Its products include Quicken, Quickbooks and Turbotax. It has been named by Fortune Magazine in the last three years as the most admired software company in the United States of America.
4.2 The Complainant has used the term вЂњIntuitвЂќ in relation to its products and services since 1984 and is the owner of in excess of twenty US trade mark registrations that comprise or incorporate the term вЂњIntuitвЂќ. They include US registered trade mark no.1,821,148 in international class 9 for the word вЂњIntuitвЂќ.
4.3 The Complainant is also the owner of over 300 domain names that either comprise or incorporate the term вЂњIntuitвЂќ in various TLDs and ccTLDs.
4.4 The exact status of the Respondent is unclear but it appears to be an entity based in Latvia.
4.5 The Domain Name was registered on May 3, 1999.
4.6 Since at least August 2008 the Domain Name has displayed a web page that bears all the hallmarks of having been generated by a domain name parking service. The page has the title вЂњIntiut.comвЂќ under which is displayed the subtitle вЂњWhat you need, when you need itвЂќ. Beneath this are links to numerous вЂњRelated SearchesвЂќ including вЂњQuickbooksвЂќ, вЂњQuickenвЂќ, вЂњBusiness SoftwareвЂќ and вЂњProperty Management SoftwareвЂќ. At the bottom of the page is a search box. No indication is given on this page as to who might be operating this page.
4.7 By the time that the Respondent put in its Response, the format of the web page operating from the Domain Name changed slightly in that a number of the вЂњRelated SearchesвЂќ appear to have been replaced with вЂњSponsored ListingsвЂќ comprising links to various commercial entities. This remains the case at the time of this Decision. For example, an Internet user in the United Kingdom is offered links to вЂњwww.cleveraccounts.comвЂќ and вЂњwww.accountacnystore.co.ukвЂќ.
5. PartiesвЂ™ Contentions
5.1 The Complainant contends that the Domain Name is confusingly similar to its INTUIT mark. It contends that this is a case of typosquatting with the fourth and fifth letter of the word вЂњIntuitвЂќ being transposed to create the Domain Name.
5.2 On the question of rights and interests, the Complainant asserts that the Respondent has no legitimate relationship to the Complainant giving rise to any licence, permission or authorisation to use the Domain Name. It claims that the Respondent вЂњis not commonly known by the Intuit or Intuit.com names, and owns no relevant trade mark applications or registrations for themвЂќ. Instead it claims that the Respondent has вЂњsimply parked the [Domain Name], offering links to third party websites that offer financial and accounting software and services directly competing with [the] ComplainantвЂ™s INTUIT-branded products and servicesвЂќ.
5.3 So far as bad faith registration and use is concerned, the Complainant refers to paragraph 4(b) of the Policy which is said to set out a list of examples of bad faith registration. The RespondentвЂ™s domain name parking activities are said вЂњto fall squarelyвЂќ within Paragraph 4(b)(iv) of the Policy.
5.4 The Complainant further claims that the fact that the Domain Name comprises a misspelling of the ComplainantвЂ™s INTUIT mark evidences that the Respondent is using the Domain Name to intentionally divert Internet users who mistype the ComplainantвЂ™s domain name when trying to access the ComplainantвЂ™s official web site at вЂњwww.intuit.comвЂќ.
5.5 Lastly, the Complainant refers to four other cases in which the Respondent was said to be involved and which are said to demonstrate the RespondentвЂ™s pattern of registering and using in bad faith other personsвЂ™ trade marks. These cases are: Cirrus System, LLC v. Salvia Corporation,
WIPO Case No. D2008-0695; neckermann.de GmbH v. Salvia Corporation,
WIPO Case No. D2007-1052; Caixa DВґEstalvis I Pensions de Barcelona (вЂњLa CaixaвЂќ) v. Salvia Corporation,
WIPO Case No. D2006-0504; and Louis Vuitton Malletier S.A. v. Salvia Corporation, NAF Case No. FA600968.
5.6 The Respondent claims that вЂњintuitвЂќ is a verb that means вЂњto understand or work out by intuitionвЂќ. Therefore, it claims that the generic or descriptive nature of the term means that the Complainant is not entitled to prohibit its use by virtue of its trade mark rights. The same limitation on trade mark rights is said to apply to misspellings of generic or descriptive terms.
5.7 The Respondent admits that it uses the Domain Name to display pay-per click advertisements, but вЂњas at the date of this ResponseвЂќ this is said to be to entities that sell genuine products of the Complainant. The presence of these links is said to вЂњstrongly suggest an existence of a legitimate relationship between [the] Complainant and [the] Respondent where [the] Respondent maintains and pays for a website in exchange for a commission from [the] Complainant and its affiliates that use the website for advertising purposesвЂќ.
5.8 Further, the Respondent claims that it has obtained a licence from a third party to use a Latvian trade mark in respect of the term вЂњInt iutвЂќ. Exhibited are copies of a Latvian trade mark certificate, which on its face evidences the existence of a trade mark for the term вЂњInt iutвЂќ registered in 2005. There is also exhibited a document dated September 3, 2008 that is signed by вЂњKuznecovs DвЂќ the вЂњCEOвЂќ of вЂњSia BounsвЂќ that purports to confirm the grant to the Respondent of вЂњa non-exclusive and non-transferable license to use the trade mark вЂњINT IUTвЂќ in connection with registration and use of domain names incorporating the aforesaid trademark in its entiretyвЂќ.
5.9 On the issue of bad faith registration and use, the Respondent refers to the fact that the Domain Name was registered nine years ago.
5.10 It also states that вЂњ[e]ven if the Panel holds that the [D]omain [N]ame was registered in bad faith, it should be noted that other Panels [have] made clear that an infringing domain name, must be both registered and used in bad faithвЂќ. The Domain Name is said to be used to advertise the ComplainantвЂ™s goods and services and the Respondent asserts that to hold that this is use in bad faith would вЂњstand trademark law o[n] its headвЂќ. The Respondent then refers in this respect to various US trade mark law cases.
5.11 Next, the Respondent contends that вЂњ[g]iven the complexity of the present case and the relationship between [the] Complainant and [the] RespondentвЂќ this is not an appropriate case to decide under the UDRP. Various cases under the Policy are said to support that proposition. They include: Food Express Inc. v. Harwell Enterprises, FA 96812; Commercial Publishing Co., Inc v. EarthComm, Inc., FA 95013; Latent Technology Group Inc. v. Bryan Fritchie, FA 95285; Document Technologies Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270; Inter-Continental Hotels Corporation v. Khalid Ali Soussi,
WIPO Case No. D2000-0252; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises Inc.,
WIPO Case No. D2000-0047.
5.12 Lastly, the Respondent asserts that the Panel should вЂњseriously considerвЂќ whether the Complaint was brought in bad faith. It claims that there have been misrepresentations of fact regarding the вЂњadvertisements of third partiesвЂќ and this is said to be either the вЂњproduct of sloppy research or a deliberate hiding of material facts in order to wrongly acquire the contested domain name in a case where [the] Complainant had the foreknowledge of its limited trademark rightsвЂќ.
C. The Parties supplemental submissions
5.13 Given the PanelвЂ™s comments below as to the admissibility of these additional submissions it is not necessary to set out in any detail the parties contentions in these documents
6. Discussion and Findings
6.1 Under the Policy the Complainant must satisfy the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will consider each of these requirements in turn. However, before doing so it is first convenient to address the question of the admissibility of the partiesвЂ™ supplemental filings in these proceedings.
A. PartiesвЂ™ supplemental filings
6.3 Absent exceptional circumstances a supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers,
WIPO Case No. D2003-0780, the panel stated as follows:
вЂњAs is by now well-established, the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore,
WIPO Case No. D2000-0938 (November 3, 2000). Although supplemental submissions may be accepted to address new legal developments, see, e.g., Pet Warehouse v. Pets.Com, Inc.,
WIPO Case No. D2000-0105 (April 13, 2000), or to rebut unexpected factual assertions, see, e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise,
WIPO Case No. D2001-0237 (June 11, 2001), they should be allowed sparingly.вЂќ
6.4 The Panel is not convinced that it would be appropriate to consider the further submissions of the parties in these proceedings. There are aspects of the ComplainantвЂ™s case that perhaps could not have been reasonably anticipated by the Complainant (for example, the reference to the RespondentвЂ™s alleged trade mark licence) but these are not addressed in any detail in the Reply. For the most part the parties submissions comprise further elaboration and restatement (albeit sometimes in a more elegant fashion) of arguments already put in the Complaint and Response. The Panel does not consider it necessary to consider these submissions for the purposes of this Decision and having reviewed their contents is not convinced that if even if they are taken into account, they would make any difference to the outcome of this case.
B. Identical or Confusingly Similar
6.5 The Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights. When one discounts the вЂњ.comвЂќ TLD the only difference between the Domain Name and those trade marks of the Complainant that comprise the word вЂњIntuitвЂќ is the juxtaposition of the fourth and fifth letters in those words. That juxtaposition does not change the overall impression imparted by the Domain Name sufficiently to prevent the Domain Name from being confusingly similar to these trade marks.
6.6 The Respondent does not deny the similarity between the ComplainantвЂ™s marks and the Domain Name. It seems to accept that the term вЂњIntiutвЂќ would be perceived as a misspelling of the word вЂњIntuitвЂќ. Instead, it claims that because the word вЂњintuitвЂќ has a generic or descriptive meaning the Complainant somehow cannot rely on itвЂ™s INTUIT marks in these proceedings. The Respondent seems to be arguing either that the trade mark is invalid or that it is not possible to rely on a trade mark that has a potential generic meaning in proceedings under the Policy.
6.7 The RespondentвЂ™s argument here is misconceived. The Panel accepts that the word вЂњintuitвЂќ has a potential generic trade mark or descriptive meaning. That is true of many trade marks. The word вЂњappleвЂќ, for example, is a famous trade mark used by two quite separate entities in respect of computers and music, as well as being an ordinary English word for a type of fruit.
6.8 In a case of trade mark infringement the extent to which a mark has a potential generic meaning may well be highly relevant. It may raise questions as to the validity of the underlying mark relied upon. It may also raise questions as to whether the activity about which complaint is made constitutes infringement. However, the Policy operates in a different way. First, a panel will rarely entertain arguments to the effect that a trade mark that is relied upon is in some manner invalid (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). The proper forum in relation to that argument is not proceedings under the Policy but proceedings in the relevant trade mark registry or national court. Second, whilst there may be occasions where the generic elements of a domain name will be taken into consideration for the purposes of an assessment of confusing similarity, essentially the assessment undertaken is merely a comparison of the relevant domain name and marks. In contrast to trade mark law, there is at this stage no consideration of how the mark is being used (see paragraph 1.2 of the WIPO Overview, supra). Further, even though trade marks are inherently territorial in scope, there is no need consider where the Respondent is conducting its activities (see paragraph 1.1 of the WIPO Overview, supra).
6.9 That is not to say that these factors are of no relevance to proceedings under the Policy. The alleged generic nature of a term used in a domain name may be highly relevant to the assessment of rights and interests and bad faith (an issue to which this Decision will return in greater detail). However, they are not relevant to the necessary assessment under paragraph 4(i)(a) of the Policy.
6.10 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.11 To the extent, the Respondent argues that it has rights or legitimate interests in the Domain Name because of the generic or descriptive nature of вЂњintiut,вЂќ the Panel disagrees. There is no evidence that such term, as used by the Respondent, identifies or is descriptive of any product or service. The only activity in which the Respondent appears to have been engaged is the operation of a website from the Domain Name. As has already been described, these web sites show the classic hallmarks of a parking site and the Respondent admits that the Domain Name is being used with a view to earning a share of the вЂњclick-through revenueвЂќ generated by the Domain Name parking page in question.
6.12 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainantвЂ™s rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview, supra). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,
WIPO Case No. D2007-0267).
6.13 Essentially, therefore, in a domain name parking case the assessment often boils down to the questions: did the Respondent register the Domain Name with the ComplainantвЂ™s mark in mind and has it deliberately used it to take advantage of the reputation of that mark? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little. For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that in this case the answer to both questions is yes.
6.14 There are however, several assertions by the Respondent that also need to be addressed. First, there is the RespondentвЂ™s assertion that it has an interest in the Domain Name because it is used to sell and promote the ComplainantвЂ™s products. The assertion here is reminiscent of the question of whether a reseller can have a right or legitimate interest in a domain name that incorporates the trade mark of the product that the reseller sells. This is a controversial question and it is an issue that is addressed in paragraph 2.3 of the WIPO Overview, supra. There are at least two views on this issue and the view that is most favourable to domain name owners is recorded as the вЂњmajority viewвЂќ. This states that the legitimacy of this practice depends upon the Respondent being able to fulfil certain conditions that were initially set out in the decision of Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903. These conditions include the actual offering of goods and services at issue, the use of the site to sell only the trade marked goods and the site accurately disclosing the registrantвЂ™s relationship with the trade mark owner.
6.15 However, the Panel does not believe that the Respondent can rely upon any such вЂњresellerвЂќ right. Participating in a domain name parking service does not give a domain name owner the status of a reseller of products, even if the domain name owner ensures that the only links that are displayed are to genuine products of the trade mark owner or its resellers. It is also questionable that a reseller right can apply where the reseller uses not the relevant mark but a distorted version of the mark.
6.16 Further, the Respondent cannot in any case satisfy the Oki Data conditions. The Panel is unconvinced that the links on the RespondentвЂ™s site are limited to the ComplainantвЂ™s products1. The Respondent asserts вЂњ[a]t the date of this Response, the domain name <intiut.com> displays pay-per-click advertisements of Complainant for various products of ComplainantвЂќ. The fact that this statement is limited to вЂњthe date of this ResponseвЂќ is curious. It suggests that this may not be so in the past or the future. The Respondent also does not declare that the Domain Name is being used only for links to this product. Indeed, if the current usage of the Domain Name is any guide, the Domain Name has been and is being used for links to products that compete with the Complainant. Further, the RespondentвЂ™s web site also does not properly disclose the RespondentвЂ™s relationship with the Complainant. It does not even disclose the identity of the entity responsible for the site.
6.17 Second, there is the RespondentвЂ™s assertion that its links to the ComplainantвЂ™s own website mean that it has some form of relationship with the Complainant that gives it a right or legitimate interest. The Panel respectfully disagrees with this assertion. It may well be the case that the Complainant has subscribed to some form of advertising programme that involves making payments whether direct or indirect to a domain name parking service provider. However, it does not follow from this that any domain name owner that uses that domain name parking service has necessarily been authorised by the Complainant to use the ComplainantвЂ™s marks. If the Respondent had brought forward evidence to the effect that the Complainant had somehow directly requested or encouraged the Respondent to register and use a domain name that is similar to its mark for this purpose, matters might be somewhat different. But no such evidence is before the Panel.
6.18 Third, there is the RespondentвЂ™s claim that it is the beneficiary of a licence in the Latvian INT IUT mark. This claim, and the evidence that is said to support it, strikes the Panel as artificial and contrived. The trade mark in question was registered in 2005, several years after the Domain Name was registered. Next the вЂњNoticeвЂќ that is said to evidence the licence is very odd. It is dated September 3, 2008 and given that this post-dates the commencement of these proceedings, it appears to be a document that was prepared for the purposes of these proceedings. It refers to a licence dated June 28, 2007, but a copy of that licence is not provided. Further, the licence to which this notice refers is somewhat strange. It is limited to the use of the mark вЂњin connection with the registration and use of domain namesвЂќ. This is presumably intended to cover the registration and use of the Domain Name. But there is a difference between engaging in the business of dealing in domain names under a certain name, and registering a domain name that incorporates that name. The Respondent appears to be engaged in the latter activity, not the former.
6.19 In short, even if the RespondentвЂ™s actions fall within the scope of this licence (which is doubtful) the licence seems to be little more than an afterthought to justify the RespondentвЂ™s domain name registration and use. This does not provide rights for the purpose of the Policy (see BECA Inc. v. CanAm Health Source, Inc.,
WIPO Case No. D2004-0298 and the various cases referred to therein).
6.20 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.21 The Respondent admits that the Domain Name has been used in connection with a domain name parking service. It is now well-known how these sorts of page operate. A domain name owner вЂњparksвЂќ the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This вЂњclick-through revenueвЂќ is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA, supra).
6.22 In this case the material appended to the Complaint suggests that back in August 2008 the links to the sponsored searches were all indirect. Either sponsored links were produced when the Internet user undertook a search in the search box provided on the page or chose one of the вЂњRelated SearchesвЂќ that were displayed. It would appear that the site subsequently changed so that a number of the sponsored links were directly displayed.
6.23 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, the Complainant is correct to assert that it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of internet users being drawn to that page (see for example Express Scripts, Inc. v Windgather Investments Ltd, supra).
6.24 There is little doubt that the Respondent in this case has engaged in this activity in full knowledge of the ComplainantвЂ™s INTUIT mark and with a view to using the similarity between the Domain Name and the mark to draw Internet users to its web page. Indeed it is inherent in the RespondentвЂ™s argument that it was entitled to engage in these activities in the case. It claims that the Domain Name incorporates a misspelling of an ordinary English word, but there is no suggestion either in the Response or in any of the evidence before the Panel that the Respondent is using the Domain Name to take advantage of its generic meaning. It is the trade mark meaning of the word вЂњintuitвЂќ that interests the Respondent.
6.25 This is, however, not quite the end of the matter. The Respondent rightly claims that the Complainant must both show bad faith registration and use. The Complainant is also not quite correct when it asserts that paragraph 4(b) of the Policy gives examples of bad faith registration and use. Instead, it lists circumstances which if found to be present shall be evidence of registration and use in bad faith. Therefore, it may not always be sufficient to show merely that the circumstances of paragraph 4(b)(iv) apply. In many cases it is possible to infer from the fact that the circumstances of paragraph 4(b)(iv) apply that it was with this use in mind that the Domain Name was registered. However, this is far more difficult in a case such as this where the Domain Name was registered nine years ago.
6.26 There is also noticeable lack of evidence before the Panel as to the position in 1999 when the Domain Name was registered. The Complainant does not put in evidence of the degree of the fame of its products at that date. It claims that it had been using the INTUIT mark since 1984 but there is no description of the size of the business conducted under that name in 1999, nor is there any attempt to address the question why an entity that prima facie appears to be located in Latvia would have been aware of the Complainant at that time. Further, the Complainant puts before the Panel no evidence as to how the Domain Name was used prior to August 2008.
6.27 It may be that 1999 is not the correct date for this assessment. If the Respondent acquired its interest in the Domain Name at a later date, then it is at this later date that the question of bad faith registration is to be assessed. However, once again there is nothing before the Panel to suggest that any later date should apply.
6.28 Nevertheless, the Panel concludes on balance that it was with the ComplainantвЂ™s mark in mind that the Domain Name was registered. The Complainant clearly and unambiguously asserts this in the Complaint and the Respondent although filing a very detailed response does not seek to deny this claim2. Indeed, again the thrust of the RespondentвЂ™s case is not that its registration and use of the Domain Name was unconnected with the Complainant but that it was entitled to register and use the domain name in connection with advertising the ComplainantвЂ™s own goods.
6.29 There is another factor that is also supportive of a finding of bad faith registration in this case. That is the fact that the Respondent has been held in four other cases to have engaged in abusive registrations. Significantly, in one of these cases (i.e. Louis Vuitton Malletier S.A. v. Salvia Corporation, supra) the Respondent was held to have registered domain names that involved misspelling of the complainantвЂ™s marks.
6.30 The RespondentвЂ™s arguments as to why the Complainant should not succeed under the heading of bad faith are unconvincing. There is reference to various US trade mark law cases. Why a purportedly Latvian entity would want to make reference to US trade mark law is to say the least curious. However, leaving this to one side, the Panel has not found those cases to be of much assistance. As the panel stated in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza,
WIPO Case No. D2003-0372:
вЂњtrademark infringement and abusive registration within the meaning of para 4(a) of the Policy are not the same thingвЂќ and вЂњthe fact that a particular set of facts may constitute trademark infringement has of itself no bearing on whether it is an abusive registrationвЂќ.
6.31 Further, the Panel rejects the contention that because of the alleged complexity of this case the Panel should decline to consider the case and leave the matter for the courts. The Panel is not convinced that there is any real complexity in this case at all. The one issue that the Respondent has sought to characterise as particularly complex is the вЂњrelationship between the Complainant and RespondentвЂќ. However, as the Panel has already explained under the heading of legitimate rights and interests, it rejects the RespondentвЂ™s assertion that this case involves complex contractual issues.
6.32 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
E. Reverse Domain Name Hijacking
6.33 In light of this finding the Panel rejects the RespondentвЂ™s suggestion that this is a case of reverse domain name hijacking. It also expressly rejects the RespondentвЂ™s claim that the ComplainantвЂ™s lawyers either as a result of negligence or design have sought to misrepresent the nature of the RespondentвЂ™s web site.
7.1 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 <intiut.com> be transferred to the Complainant.
Matthew S. Harris
Jeffrey M. Samuels
Dated: October 15, 2008
1 Whilst it is for a complainant to prove its case, it is for a respondent to show that the Oki Data conditions apply. See Owens Corning v. NA,
WIPO Case No. D2007-1143, which has been cited with approval in various decisions including Dell Inc. v. Radvar Computers LLC,
WIPO Case No. D2007-1420; Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi,
WIPO Case No. D2007-1918; Philip Morris Products S.A. v. Keyword Marketing, Inc., WIPO, Case No. D2008-0031, Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com.,
WIPO Case No. D2008-0186; Deutsche Post AG v. Yonghua Zhang,
WIPO Case No. D2008-0326.
2 It denies that it registered the Domain Name with a view to sale to the Complainant but does not claim that it was unaware at the time of registration of the use by the Complainant of the INTUIT mark.