Decisión del Panel Administrativo nº D2021-2446 of WIPO Arbitration and Mediation Center, October 15, 2021 (case Negotiation Technologies, LLC v. Matthew McDermott, South Jersey Tax Services)
| Resolution Date | October 15, 2021 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
The Complainant is Negotiation Technologies, LLC, United States of America, represented by Shutts & Bowen LLP, United States of America.
The Respondent is Matthew McDermott, South Jersey Tax Services, United States of America, self-represented.
The disputed domain name [pitbulltaxrelief.com] is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2021. On July 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2021, the Registrar 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 “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2021. The Response was filed with the Center on August 9, 2021.
The Center appointed David H. Bernstein as the sole panelist in this matter on September 16, 2021. 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.
Pursuant to Paragraph 12 of the Rules, on September 20, 2021, the Panel issued Procedural Order No. 1 in which the Panel granted the Complainant’s request for leave to file a supplemental submission so that the Complainant could reply to the following elements of the Respondent’s Response, which the Complainant could not have anticipated in its Complaint: (1) the Respondent’s assertion that it has used the PIT BULL TAX RELIEF brand since 2009, and (2) the fact that the Respondent filed a new service mark application with the United States Patent and Trademark Office (“USPTO”) for PIT BULL TAX RELIEF after the filing of the Complaint. The Panel also requested that the Complainant clarify the history of the Respondent’s license of the Complainant’s software. Pursuant to Paragraph 10(b) of the Rules, the Panel permitted the Respondent to file a supplemental submission so that it could address the same issues, in response to the Complainant’s supplemental submission. Pursuant to Paragraph 10(c) of the Rules, the Panel set the new expected date of decision to October 18, 2021. On October 5, 2021, in response to the Respondent’s request, the Panel granted a two-day extension for submission of the Respondent’s supplemental submission.
The Complainant is a Florida based limited liability company that provides web-based software for tax resolution planning, tax preparation, and other services to tax professionals under the trademark PITBULLTAX. The Complainant applied to register the PITBULLTAX trademark with the USPTO in 2010; the USPTO issued the registration in 2011, and that registration is now incontestable.
The Respondent is a New Jersey based accounting firm that provides tax planning, tax preparation, and financial advisory services. The Respondent registered the disputed domain name, [pitbulltaxrelief.com], on November 26, 2020. The Respondent advertises his tax services on this website. The Respondent filed a trademark application for PIT BULL TAX RELIEF on August 5, 2021.
The Complainant asserts that its mark, PITBULLTAX, has been in use since 2010 and that it was registered with the USPTO in 2011. The Complainant contends that the disputed domain name incorporates the Complainant’s PITBULLTAX trademark in its entirety, and that the addition of the word “relief” at the end of the disputed domain name does not negate, and in fact creates, a confusing similarity between the Complainant’s mark and the disputed domain name.
The Complainant contends that the Respondent has no legitimate rights or interests in the disputed...
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