A one member panel just rejected the Complaint brought by ezTaxReturn.com, LLC who owns a trademark on ezTaxReturn.com against the owner of the plural version of the domain name ezTaxReturns.com
Its a pretty long opinion especially since the panelist knocked the case out finding that the domain holder had letimate rights to the domain name and didn’t even get into the “bad faith” requirement.
Here are the relevant facts and findings:
“Complainant owns U.S. Trademark Registration No. 3910450 for the mark EZTAXRETURN.COM.
“Complainant contends that it owns common law rights to the EZTAXRETURN.COM mark since at least as early as 1999 and owns domain names that incorporate the trademark EZTAXRETURN.COM.”
“Complainant has continuously provided an online tax preparation and filing software program under the mark EZTAXRETURN.COM since 1999, through which it has successfully filed millions of U.S. state and federal tax returns.”
The <eztaxreturns.com> domain name was registered on December 29, 2001, several years after Complainant’s rights in the EZTAXRETURN.COM mark had been established in 1999.”
Respondent is known by the name EZTAXRETURNS.COM since it has used, and continues to use, its domain in connection with a bona fide offering of services as seen by the voluminous numbers of tax returns it has processed since 2001.
Respondent has been continuously engaged in the business of providing tax-preparation assistance through its mark EZTAXRETURNS.COM for years. The majority of Respondent’s domains are registered under I Domain Group to maintain privacy and reduce solicitations.
Respondent uses a private label processing agreement to complete online tax preparation for clients with CCH Incorporated; however, EZTAXRETURNS.COM is a separate entity that operates in tandem with CCH Incorporated.
Respondent does not receive click-through fees, does not redirect to a website with unrelated links, and did not attempt to circumvent any mark used by Complainant because at the time of registration, Complainant had been in the business a very short time, was not well known, and remains unknown.
“Complainant registered its domain on November 28, 1999 and Respondent registered its domain on December 29, 2001. It is patently absurd that two years of operating establishes “long and continuous use” of a mark or that Complainant’s mark was “well known” throughout the United States by December 29, 2001. More importantly, Complainant has completely failed to offer any evidence.”
“IRS documents obtained through Freedom of Information Act (“FOIA”) requests show that Complainant’s business has consistently performed less than ½ of 1% (<.005%) of all tax returns prepared and filed online by consumers in 2009-2011. Out of all tax returns filed, Complainant has an even smaller market share of just over 1/10th of 1% (.001%). This is evidence that Complainant was not, and is not, known throughout the country.”
“Complainant has not once attempted to contact Respondent regarding its use of the mark EZTAXRETURNS.COM since it registered that domain in 2001 until July 2012, approximately eleven years later.”
“Complainant denies Respondent’s previous allegations and contends that EZTAXRETURNS.COM is a click-through site or redirect to a competing site that provides the services. ”
“Respondent counters argue this allegation by stating that there are numerous opportunities to interact with <eztaxreturns.com> staff to assist in tax preparation but offers no evidence to substantiate such allegation. ”
“According the Respondent’s Response Annex 5, which is a printout of the website at the <eztaxreturns.com> domain name, the mark EZTAXRETURNS.COM is displayed at the top of the page. Complainant argues that Respondent added the EZTAXRETURNS.COM mark only after it was served of these proceedings. However, there is no evidence in the file that shows that the site did not bear the mark at the time these proceedings were initiated, since the printout provided by Complainant in the Complaint’s Annex 3 lacks a date and appears to be a scanned copy of a printout in which the date was erased or not scanned.”
“Based on this evidence, the Panel finds that it is plausible that Respondent is partnering with CCH Inc. for providing its services.”
“The UDRP ¶ 4(c)(i) states that the use (by Respondent) 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, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests to the disputed domain name for purposes of Paragraph 4 (a) (ii).”
“Based on the submitted evidence, the Panel finds that these activities constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).”
“As noted above, Respondent also maintains that the terms “ez” and “tax returns” are common and generic/descriptive, and therefore, that Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel accepts that the terms “ez” and “tax returns” have a particular descriptive meaning, particularly for people and entities looking for tax preparation and filing services.”
“On this basis, the Panel finds that Respondent is involved in the “tax preparation” area and has established sufficient rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii). ”
“Having concluded that Respondent has rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), the Panel is entitled to find that Respondent did not register or use the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii).”