1.1 The Complainants are Taylor Wimpey Holdings Limited of High Wycombe, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), and Taylor Wimpey PLC of High Wycombe, United Kingdom, represented by Demys Limited, United Kingdom.
1.2 The Respondent is Tom Huntley of Devizes, United Kingdom. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on November 6, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 6, 2018.
3.2 The Center verified that the Complaint, together with the amended 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2018.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 10, 2018. 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
4.1 The Complainants are both companies incorporated in England and Wales and form part of the Taylor Wimpey group of companies. Taylor Wimpey PLC is the group’s main trading entity and Taylor Wimpey Holdings Limited holds assets including registered intellectual property used by the group.
4.2 Taylor Wimpey is one of the largest British based house building companies and is well-known under the Taylor Wimpey name in the United Kingdom. Its revenues in 2017 were approximately GBP 4 billion with an operating profit of in excess of GBP 840 million.
4.3 Taylor Wimpey Holdings Limited is the owner of European Union Trade Mark number 5787271 for the word mark TAYLOR WIMPEY. The mark is registered in classes 19, 36, 37, 42, and 44 and has a registration date of January 31, 2008. Taylor Wimpey PLC is a licensee of that mark.
4.4 The Respondent would appear to be an individual based in the United Kingdom.
4.5 The Domain Name was registered on January 15, 2015. It has been used since registration to display a web page with pay-per-click (“PPC”) advertising links using terms such as:
Build New Townhouse Sale
New Build Townhouses for Sale
New Housing Developments
Development Home New
New Home Developments
A New Home for Sale
Any Homes for Sale
New Builds
Builder House Sale
Houses for Sale by Builder
New Homes
4.6 As at the time of this decision the Domain Name displays a parking page of the Registrar. 5. Parties’ Contentions A. Complainant
5.1 The Complainants describe their business and mark and how the Domain Name has been used. The Complainants contends that this is a case where procedurally it is appropriate for each of them to be a complainant in these proceedings.
5.2 The Complainants confess that they know very little about the Respondent but contend that their agent has attempted to contact the Respondent though a contact form which it is claimed under paragraph 2.5 of ICANN’s Temporary Specification for generic Top-Level Domain (“gTLD”) Registration, must have been forwarded to the Respondent. There has been no response in this respect.
5.3 The Complainants contend that the addition of the words “my” and “home” in the Domain Name do not detract from the overall significance of its TAYLOR WIMPEY mark in the Domain Name and that the “.com” element should be ignored. As a consequence they claim that the Domain Name is confusingly similar to that trade mark.
5.4 The Complainants further contend that the Respondent has no rights or legitimate interests in the Domain Name, asserting that none of the examples of rights or legitimate interests set out in the Policy apply in this case. They further cite section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in support of the contention that the PPC use made of the Domain Name in this case does not provide such rights or legitimate interests.
5.5 The Complainants also rely on the following passage in the decision in The Great Eastern Life Assurance Company Limited v. Unasi Inc,WIPO Case No. D2005-1218:
“By operation of a common sense evidentiary principle, the Panel finds that the Respondent’ failure to counter the allegations of the cease and desist letter amounts to adoptive admission of the allegations”
5.6 The Complainants also contend that the PPC use made of the Domain Name in this case demonstrates bad faith registration and use, even if the content was generated automatically. In this respect they refer to section 3.5 of the WIPO Overview. B. Respondent
5.7 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainants to make out their case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainants must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will address each of the requirements in turn. Before it does so, it is convenient to record that the Panel accepts that in light of their respective interests in the registered trade mark relied upon and in the Taylor Wimpey business as a whole, and for the reasons set out in section 4.11.1 of the WIPO Overview 3.0, it is legitimate for both Taylor Wimpey PLC and Taylor Wimpey Holdings Limited to be named as Complainants in these proceedings. The Panel notes that this was also considered to be appropriate in Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974, and Taylor Wimpey Holdings Limited and Taylor Wimpey PLC v. Annette Johnson, Tangerineuk,WIPO Case No. D2016-2116. A. Identical or Confusingly Similar
6.5 The Panel accepts that both Complainants have an interest in the registered trade mark relied upon. Further, that mark takes the form of a word mark for TAYLOR WIMPEY and that the Domain Name can only be sensibly understood as that mark combined with the ordinary English words “my” and “home” and the “.com” gTLD. Given this, the relevant mark is clearly recognisable in the Domain Name and this is sufficient to demonstrate confusing similarity for the purposes of the Policy (as to which see the second paragraph of section 1.7 of the WIPO Overview 3.0). In these circumstances, the Complainants have made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 It is not entirely clear why the Respondent has registered the Domain Name although, for the reasons set out later on in this decision in the context of an assessment of bad faith, the Panel concludes that it is more likely than not that the Domain Name was registered to take some unfair advantage of the Complainants. There is no legitimate interest in holding a Domain Name for such a purpose. There is also no suggestion that the Respondent has some independent right in the terms incorporated into the Domain Name and the nature of the Domain Name is such that it is inherently unlikely that any such right would exist.
6.7 Further, there is the PPC use made of the Domain Name. The Panel accepts that this has involved the display of links that compete with or capitalise on the reputation and goodwill of the Complainant’s mark. As is recorded in section 2.9 of the WIPO Overview 3.0, use of a domain name for such a purpose is not a bona fide offering of goods and services. Indeed, the Panel would go further and suggest that such use prima facie constitutes evidence that no rights or legitimate interests exist (as to which see, for example, Premier Farnell Corp. v. BlueH, Bluehost Inc / Newark del Peru S.A.,WIPO Case No. D2010-2111).
6.8 Given this, the Complainants have demonstrated that the Respondent has no rights or legitimate interests in the Domain Name for the purposes of the Policy. In these circumstances, the Complainants have made out the requirements of paragraph 4(a)(ii) of the Policy.
6.9 The Panel would add that in coming to that conclusion it has not been particularly persuaded by the Complainants argument, based upon the decision in The Great Eastern Life Assurance Company Limited v. Unasi Inc,WIPO Case No. D2005-1218, that the Respondent’s failure to counter the allegations in a cease and desist letter “amounts to adoptive admission of the allegations”. The Panel is not convinced that the failure to respond to a cease and desist letter necessarily amounts to any form of admission. Such failure may well be a factor, and at times it may be an important factor, that a panel will take into account in reaching its conclusions in any particular case. But ultimately it is just one of a number of potential factors that a panel will consider. In the present case it is consistent with the Complainants contentions and the Panel’s findings, that the Respondent did not respond to the letter (or for that matter file a Response in these proceedings), but the Panel does not consider it to be determinative. C. Registered and Used in Bad Faith
6.10 It is not entirely clear why the Respondent has registered the Domain Name and held it since registration in January 2015. No use appears to have been made of the Domain Name other than to park it at a PPC page with automated links.
6.11 Prima facie that PPC use falls within the scope of the example of circumstances indicating bad faith set out at paragraph 4(b)(iv) of the Policy. Further, the Panel accepts even if the Respondent played no active part in the choice of those links and has not personally benefited from any revenue generated from such links paragraph 4(b)(iv) applies (as to which see for example, Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267, and section 3.5 of the WIPO Overview 3.0).
6.12 However, regardless of whether this is a case that falls within the scope of paragraph 4(b)(iv), the examples of circumstances indicating bad faith set out in paragraph 4(b) are non-exhaustive. If the Domain Name has been registered and held with the intention of taking some unfair commercial advantage of a complainants marks, this is sufficient for a finding of bad faith registration and use (see, for example, M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
6.13 Here there can be no doubt that the Domain Name was registered with the knowledge of the Complainants’ business. Not only is this probable given the extent of that business and the location of the Respondent, but it is obvious from the Domain Name itself which can only be sensible understood as making a deliberate reference to the homes that the Complainants are engaged in building. Further, it is difficult to conceive of any use of the Domain Name that would be considered legitimate under the Policy. In the absence of any argument or evidence from the Respondent to the contrary that is enough.
6.14 In these circumstances, the Complainants have made out the requirements of paragraph 4(a)(i) of the Policy. 7. Decision
7.1 The Complainants have requested that the Domain Name be transferred into the name of the First Complainant, Taylor Wimpey Holdings Limited, and the Panel agrees that this is appropriate.
7.2 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Taylor Wimpey Holdings Limited.
Matthew S. Harris
Sole Panelist
Date: December 12, 2018
Full & Egal Universal Law Academy