ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The complainant is Etax Corporation of 727 Thornwood Drive, Odenton, Maryland 21113, United States of America. The respondent is Dr. Van R Whiting, trading as NABR and as IPE Advisory Services, both of 77790 Regents Road, Suite 113/194, San Diego, California 92122, United States of America. The contested domain names are etax.com and etax.net. In each case the administrative and billing contact is Dr. Whiting. The registrar in each case is Network Solutions Inc., of Herndon, Virginia, United States of America.
2. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of eResolution.
The electronic version of the complaint form was filed on-line through eResolution's website on August 28, 2000. The hardcopy of the complaint form and annexes were received on August 31, 2000. Payment was received on August 31, 2000. Upon receiving all the required information, eResolution's clerk proceeded to confirm the identity of the registrar for the contested domain names; verify the registrar's Whois database and confirm all the essential contact information for the respondent; ascertain whether the contested domain names resolved to active web pages and determine whether the complaint was administratively compliant.
This inquiry led the clerk of eResolution to conclude that the registrar is Network Solutions Inc.; the Whois database contains all the required contact information; etax.com resolves to an inactive web page while etax.net resolves to an active web page and the complaint is administratively compliant.
On August 30, 2000, an email was sent to the registrar by eResolution Clerk's Office to obtain confirmation and a copy of the registration agreement. This information was received on September 6, 2000.
The clerk sent to the respondent a copy of the complaint and the required cover sheet in accordance with paragraph 2 (a) of the Rules. The clerk's office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the complaint to the respondent on September 7, 2000. This date is the official commencement date of the administrative proceeding.
The respondent submitted an electronic version of the response on September 27, 2000 and a signed version on September 28, 2000. The clerk's office informed the respondent that the response was one day late. By email of September 29, 2000 the respondent asked that the response be received as an indulgence, stating that, having received notification of the complaint on September 7, 2000 with the information that there was a 20-day period to respond, the respondent calculated the due date to be September 27, 2000.
On September 28, 2000, the clerk's office contacted Mr. Alan Limbury, and requested that he act as panelist in this case; Mr. Limbury accepted and filed the necessary declaration of independence and impartiality and the clerk's office forwarded to him a user name, allowing him to access the complaint form, the response form and the evidence through eResolution's automated docket management system.
On September 28, 2000, the parties were notified that Mr. Limbury had been appointed and that, save exceptional circumstances, a decision was to be handed down on October 11, 2000.
The panel admitted the response on the ground that it had been filed electronically within 20 days of the commencement of the administrative proceeding, so that no indulgence was necessary. On October 6, 2000, the complainant submitted a reply. On October 7, 2000 the panel indicated he would accept the reply under Rule 10(b) and invited the respondent to comment on the reply. The respondent submitted its rebutter on October 10, 2000.
Each party sought an undertaking from the panelist that he would treat as confidential parts of their earlier communications with each other and the panelist agreed not to disclose those parts in the decision and otherwise to treat the information as confidential. Each party received copies of communications in full in accordance with Rule 2(h)(iii).
The panel extended the time for making the decision to 16 October 2000.
3. Factual Background
The complainant was incorporated on September 8, 1995. The certificate of incorporation shows the complainant's name as "E-TAX CORPORATION" although since then the complainant appears on occasion to have omitted the hyphen when using its corporate name. It is engaged in online and offline tax preparation and electronic filing services. It asserts common law trademark rights in the word ETAX, which it claims to have used since incorporation in connection with the services it provides, and which its predecessor is said to have used in connection with services of that kind since December 1994. A 1995 flyer for E-TAX Corporation is headed "E-TAX Fully Computerized Professional Income Tax Service Supervised by a CPA".
On June 14, 1996 another party made application to register ETAX as a service mark with the United States Trade Mark Office in class 36 in respect of "electronic tax payment services, namely electronic tax payment processing services", citing December 31, 1995 as the date of first use in commerce. After having been published for opposition on March 3, 1998, that application was granted and the mark was registered in the name of a company called Dabco Computer Services, Inc. ("Dabco") on May 26, 1998, with the registration number 2,159,918.
On May 1, 2000 the complainant applied to register ETAX as a service mark with the United States Trade Mark Office in class 35 in respect of "preparation of income tax returns for others; electronic filing of tax returns and online preparation of tax returns for others", citing December 31, 1994 as the date of first use in commerce. That application has not yet been determined.
The complainant owns the domain names etaxonline.com and etaxcorp.com, which it uses in connection with its business.
On 22 and 28 May, 1997 respectively the respondent, Dr. Whiting, registered the domain names etax.net and etax.com in the names of IPE and NABR respectively, as part of a plan to create a network of interlinked websites involving many other domain names. NABR stood for Network Alliance for Business and Research. By January 1998, together with a business partner, Mr Hillhouse, the plan had developed into a "reverse portal" strategy designed to "pull users into the network through many addresses, rather than pushing users through a single address"; a company, Global Convergence, Inc. had been incorporated and a network of websites had been planned, including etax.com , indicating as a revenue source "Website content and service partner revenue sharing".
In May 1999 the respondent engaged a Mr. Berne Smith to consult on a design strategy that would bring together various web sites with a unifying visual and conceptual framework and to help develop a corporate identity for Global Convergence, Inc. The various web sites under consideration were organized into eight groups, one of which, One Money, included the etax.com domain.
The respondent's plan involved storing, processing and transmitting personal and business data over the Internet, utilizing a proprietary navigation system and a network of interlinked domain addresses to sell the goods and services of others. This entailed approaching providers of services seeking a business relationship for the marketing of their services.
Pursuant to the plan, in April 1998 Dr. Whiting contacted Mr. Harak Gala, President and a major stockholder of the complainant, to discuss combining the complainant's services with the marketing and traffic to be generated via the respondent's network of sites, including etax.com and etax.net. Since that first contact in April 1998, there have been discussions and correspondence between the parties, which continued until August 26, 2000, two days before the initiation of this administrative proceeding.
During the course of their discussions, the parties were aware that the parent of Dabco, CashTax, Inc. asserted a claim to the etax domains and that Dabco had registered the trade mark ETAX in class 36. CashTax, Inc. sought to buy the contested domains from the respondent in 1999 and 2000. When the respondent refused to sell, CashTax, Inc. commenced an administrative proceeding under the Policy against the respondent but withdrew its complaint after the response was filed.
In November 1999 the respondent put a proposal to the complainant for an agreement whereby the respondent would assign the contested domain names to the complainant and have an option to purchase or to sell to a third party the domain names and trademark rights of and to "etax" and the related domains, for at least $US 250,000 payable to Mr. Gala, the purchase to include the right to pursue "legal rights to the etax trademark".
In December 1999, the complainant indicated a willingness to give the respondent "enough authority to bundle your Assets with Etax Corporation's name and negotiate sell of the complete package to a third party". Any package was to include whatever trademark related common law rights the complainant had but the complainant did not represent that it owned such rights.
By June 2000 the respondent had attracted the interest of at least one third party in such a proposal. A letter of intent dated 14 June 2000 was drawn up by the respondent and agreed (with handwritten amendments) by Mr. Gala on behalf of the complainant. That document is confidential. It was in keeping with the idea of packaging assets of both parties for sale to a third party. The respondent was to continue to have an interest in the business.
The sale did not proceed because the prospective buyer was unwilling to pay the price sought.
4. Parties' Contentions
A. The complainant
The complainant owns the service mark ETAX; the respondent has acknowledged the complainant's trademark rights in ETAX; the contested domain names are essentially identical to ETAX; many of the complainant's customers have been confused in mistakenly attempting to reach the complainant at the contested domain addresses.
The respondent has never been in the tax business; the contested domain names have never been used since registration in May 1997; the WebPages associated with them are "under construction" or inaccessible; the respondent has no trademark or service mark rights in ETAX as the registration of the contested domain names was after the first use in interstate commerce of the complainant's trademark and the respondent has acknowledged the complainant's trademark rights.
The respondent has registered the contested domain names and many other domain names in bad faith by offering to sell to the complainant the etax.com domain name in April 1998 for $40,000 or a considerable part of the complainant's stock; repeatedly acknowledging the complainant's rights in ETAX; increasing the asking price for the contested domain names, up to stock worth $1 million in exchange for the transfer of etax.com to the complainant; registering nearly 70 or so unrelated domain names, many of which are "under construction" since registration in 1997 or 1998; the respondent thus appears to be trafficking in domain names, including names which consist of others' trademarks; making no commercial or non-commercial fair use of the contested domain names; being aware of the complainant's trademark rights and registering other domain names for similar purposes.
There is no evidence the complainant has rights in the service mark ETAX. This is an unproven claim. The complainant has no registration for the mark.
The respondent has rights and legitimate interests in the contested domain names.
Those names were registered in good faith and before the respondent was aware of the complainant or its claim to trademark rights in ETAX.
5. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
a. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
b. the respondent has no rights or legitimate interests in respect of the domain name; and
c. the disputed domain name has been registered and is being used in bad faith.
Whether the complainant has trademark rights in the word ETAX
The Policy affords a remedy to a common law trademark owner, as it does to the owner of a registered mark.
Where a trader uses a descriptive name as a trademark, only slight differences will suffice to distinguish another trader and its business from the first trader and its business. The word "tax" is a common descriptive word of general application. The use of the prefix « e » with descriptive words has come to imbue those words with an electronic character, as in « ecommerce ». The prefix does not render descriptive words distinctive.
The word ETAX is apt to describe the services offered by the complainant. It must be doubted whether it is capable of distinguishing the complainant's services from similar services of others. Indeed the services of Dabco, which has managed to register the same mark in class 36, while not identical, are closely related to those of the complainant. This is not the forum to determine competing claims of first use in interstate commerce.
The evidence of the complainant of its use of the word ETAX as a service mark is not persuasive. The word is used in stylized form; as the corporate name or an abbreviation, "etax corp"; in a way which is descriptive of the electronic tax services being offered; or to identify the company, as in "E-TAX is a Service Bureau for Electronic Filing…" or "E-Tax welcomes you".
The panel accepts that: "where the domain name and trademark in question are generic…the rights/interests inquiry is more likely to favour the domain name owner" (Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Marketing Group Inc., eResolution case AF-0104). See also General Machine Products Co. v. Prime Domains (NAF case FA1000092531), Car Toys, Inc. v. Informa Unlimited Inc. (NAF case FA2000093682) and CRS Technology Corp. v. Condenet, Inc. (NAF case FA 000200009347).
It is noteworthy that during the negotiations between the parties, the complainant was unwilling to warrant ownership of the mark it now asserts it owns. The panel finds the respondent has not acknowledged that the complainant has trademark rights in ETAX. Rather, the respondent has acknowledged that the complainant asserts such rights. The respondent was willing to purchase whatever rights the complainant might have and sought the complainant's assistance in establishing them.
The panel finds the complainant has not established that it has trademark rights in the word ETAX.
This finding is sufficient to dispose of this complaint. However, it may be helpful to the parties if the panel's findings on the other issues are set out.
Strictly speaking, the trademark ETAX is not identical to the domain names etax.com or etax.net. However, as has been decided in many cases under the Policy, and under US trademark law, the two are "essentially" or "virtually" identical. See Brookfield Communications, Inc. v. West Coast Ent. Corp., 174 F.3d 1036, 1054 n. 7 (9th Cir. 1999), citing Public Serv. Co. v. Nexus Energy Software, Inc., 36 F. Supp. 2d 436 (D. Mass 1999), 1999 U.S. Dist. LEXIS 1994, No. 98-12589 (D. Mass. Feb. 24, 1999)(finding "energy-place.com" and "Energy Place" to be virtually identical); Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "post-it.com" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) ("In the context of Internet use, ['epix.com'] is the same mark as ['EPIX']"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997) (concluding that "planned-parenthood.com" and "Planned Parenthood" were essentially identical), aff'd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).
The complainant has established that the contested domain names are essentially identical to the word ETAX but has failed to establish that it has trademark rights in that word. Accordingly it has failed to establish this element.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant's rights or legitimate interests to a disputed domain name. Sub-paragraph 4(c)(i) provides that one circumstance demonstrating legitimacy is:
"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;"
Even perfunctory preparations have been held to suffice for this purpose: Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104; Lumena s-ka so.o. v. Express Ventures Ltd., FA00030000094375 and Royal Bank of Canada v. Xross, AF-0133.
The respondent's preparations to use the name etax.com , involving, as they did, extensive consultations with the respondent's business partner, the incorporation of a company, the engaging of a designer and the approach to and negotiations with Mr. Gala and with third parties who might be interested in the package (in which the respondent was to retain an interest) can hardly be described as perfunctory. They all took place before notice to the respondent of this dispute.
The complainant has failed to establish this element in relation to etax.com. As to etax.net, the evidence of preparations is much less clear. However, that name was one of many others forming part of the respondent's plan and the negotiations appear to have treated that name as part of the package. The complainant has failed to establish this element in relation to the name etax.net.
At the time of registration of the contested domain names, the respondent had not heard of the complainant or its claimed trademark ETAX. The respondent already had the idea of a « reverse portal » strategy, subsequently developed in conjunction with his business partner and his designer, over a long period, and including many other similarly descriptive domain names, one small selection of which being OneMoney.com, estock.com, OneStock.com, InvestmentLine.com and DollarLine.com.
There is no evidence of bad faith registration.
Although the respondent has not used the contested domain names, there are cases in which bad faith use has been found even though the name is not being used in the usual sense: Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (registrant actively concealing identity) and Barney's, Inc. v. BNY Bulletin Board D2000-0059 (negotiating to transfer the name). Here, the respondent's efforts to transfer the names were as part of a package of pooled assets, some of which were to be contributed by the complainant, and the respondent was to retain an interest in the acquirer, with a view to maximising legitimate business for the respondent from the use of the names.
The panel finds there are no circumstances in this case to warrant a finding of bad faith use.
The panel finds there is no evidence of any of the circumstances contemplated in sub-paragraphs 4(b)(i) to (iv) of the Policy, nor any other evidence of bad faith of any kind on the part of the respondent.
The complainant has failed to establish this element.
Reverse Domain Name Hijacking
By the time the complaint was filed, the complainant knew all the facts necessary to establish that the respondent had a legitimate interest in the contested domain names and to negate any suspicions that the respondent was a cybersquatter who had registered and was using or intending to use the disputed domain names in bad faith. The complainant did not treat the respondent as a cybersquatter. Indeed, had the price been acceptable to the proposed buyer, the complainant would have been pleased to join with the respondent in pooling their assets for sale as a package to a third party. It was only after the sale fell through that the complainant brought this proceeding, which, if successful, would have packaged the parties' assets in one pair of hands, as contemplated since 1999.
However, although the respondent had foreshadowed a claim to reverse domain name hijacking, it did not make this explicit until it filed its rebutter, by which time it was too late for the complainant to respond. For this reason the panel makes no finding of reverse domain name hijacking.
The complainant has failed to establish its entitlement to a remedy and accordingly the complaint is rejected.
October 15, 2000
(s) Alan L Limbury