The Complainant is South African Revenue Service, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is 凌兴旺 (Xing Wang Ling), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2020, 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. On July 17, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 20, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on July 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2020. The Center appointed Matthew Kennedy as the sole panelist in this matter on August 28, 2020. 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 The Complainant is the South African Revenue Service (“SARS”), an autonomous statutory body established under the South African Revenue Services Act 34 of 1997 and responsible for administering the South African tax system and customs service. The Complainant provides advisory services and assistance to taxpayers in South Africa through its branch offices, call centers, and website at “www.sars.gov.za”. These services range from the provision of information, reports and statistics to guidance and assistance with the submission of tax returns. It also offers and promotes a free electronic filing service for taxpayers under the mark SARS E-FILING at “www.sarsefiling.co.za”. The Complainant is the proprietor of the following South African trademark registrations for SARS: South African trademark registration number Class of goods or services 2011/29912 9 2011/29913 16 2011/29914 35 2011/29915 36 2011/29916 42 Those trademark registrations were all registered on August 29, 2014 and remain current. The Complainant has been using the SARS mark as part of its name since October 1, 1997. The Complainant’s Facebook profile provides information, addresses customers’ concerns and queries, and is used as a platform to create awareness regarding the Complainant’s payment facilities and services. The Respondent is an individual resident in China. The disputed domain name was registered on January 22, 2020. It does not resolve to any active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s SARS trademark. The dominant portion of the disputed domain name is identical to that trademark. The domain extension “.app” does not serve to distinguish the disputed domain name from the Complainant’s well-known trademark. The Complainant markets and advertises its services under the SARS mark in various ways, including television and radio advertisements as well as online, through its websites and social media networks. As a result of extensive and widespread use of the SARS trademark, the Complainant has acquired a substantial goodwill and reputation, and common law rights, in its trademark. The SARS trademark has, through use, become exclusively associated with the Complainant. The Complainant’s rights in its SARS name and trademark have also been recognized and affirmed by statute. SARS has acquired a substantial reputation and qualifies as a well-known mark within the terms of Article 6bis of the Paris Convention for the Protection of Industrial Property. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent’s use of the SARS trademark, as part of a domain name or otherwise. There is no relationship or association between the Complainant and the Respondent, whether by license or otherwise. The Respondent is not associated with the Complainant in any way. There is no evidence that the Respondent has been commonly known by the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Respondent was undoubtedly aware of the Complainant’s rights in the SARS mark when the disputed domain name was registered. This is evident from the fact that the disputed domain name incorporates the SARS mark. The SARS mark has acquired a substantial reputation. The Complainant’s reputation could be damaged by unlawful competition or passing off, or another party representing that it is, or is associated with, the Complainant. The registration of the disputed domain name has the effect of barring the Complainant from registering or using the identical domain name, which amounts to an unfair disruption of the Complainant’s business. The disputed domain name creates the impression that the Respondent and the Complainant are somehow associated or connected due to the similarity between the disputed domain name and the Complainant’s trademark. The Respondent registered the disputed domain name with the intention of benefitting from the extensive reputation the Complainant has established in its well-known mark SARS. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the use of the Complainant’s mark as to the source of the Respondent’s website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main argument is that the Complainant cannot understand Chinese and that all official communication in respect of the Complainant is in English. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in English. The Center sent emails regarding the language of the proceeding and notice of the Complaint to the Respondent’s contact addresses in both Chinese and English, and the Written Notice was delivered to the Respondent’s address by courier. Nevertheless, the Respondent has not expressed any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the SARS trademark. The disputed domain name wholly incorporates the SARS trademark as its only distinctive element. The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.app”), which is a technical requirement of domain name registration. A gTLD suffix is disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is rare, and is not the case here. Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first and third circumstances above, the disputed domain name does not resolve to any active website; rather, it is passively held. The Panel finds that the Respondent’s use of the disputed domain name is not on its face done in connection with a bona fide offering of goods or services as envisaged by the first circumstance of paragraph 4(c) of the Policy, nor is it a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy. As regards the second circumstance above, the name of the Respondent is “凌兴旺 (Xing Wang Ling)”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy. Although the operative part of the disputed domain name has a dictionary meaning (discussed in Section 6.2C below), there is no evidence of any demonstrable preparations to use the disputed domain name in connection with that meaning. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because he did not file any response to the Complainant’s contentions. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. A finding in a complainant’s favour on this element normally requires a finding that the respondent targeted a complainant’s mark. The Panel recalls that the burden of proof of all elements in paragraph 4(a) of the Policy is borne by the Complainant. The Respondent’s default is not necessarily an admission that the Complainant’s claims are true. Where a good faith defense is apparent, the Panel may find – despite the Respondent’s default – that the Complainant has failed to prove its case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3; and Altamira Asset Management, S.A. v. Luis G. Mota, WIPO Case No. D2017-1298. The Complainant provides evidence of registrations of its SARS trademark in South Africa in 2014, prior to the registration of the disputed domain name. The disputed domain name is identical to that trademark. However, the trademark consists of a four-letter acronym and that acronym also has a dictionary meaning (discussed below). Therefore, the Panel does not consider that the identity between the disputed domain name and the trademark by itself implies that the Respondent must have been aware of and targeted the Complainant’s mark at the time that he registered the disputed domain name. The Complainant provides very limited evidence of use of its mark. The Panel is prepared to accept that the Complainant has been using its mark since 1997. However, the evidence on the record consists of two homepages for the Complainant’s own websites and two pages from its Facebook account. The information on these webpages is addressed to South African taxpayers, tax practitioners, and prospective employees. The Complainant does not allege that the Respondent is such a person. While the Internet is a global medium, the Complainant offers no explanation as to why anyone else would visit these webpages and thus be aware of the Complainant and its mark. There is no evidence on the record of use of the Complainant’s trademark anywhere besides the Complainant’s own websites and Facebook account, and in South African legislation. There is no evidence of other parties using SARS to refer to the Complainant such as, say, the results of an Internet search for the term “SARS”. Nor is there evidence regarding the Respondent’s conduct from which certain inferences could be drawn such as, say, other domain names that he might have registered. Accordingly, based on the record of this proceeding, the Panel cannot find that the Respondent necessarily knew or should have known of the Complainant’s mark at any time prior to receiving notice of this dispute. The Complainant refers to prior decisions under the Policy, including Encyclopaedia Britannica, Inc. v. LaPorte Holdings,WIPO Case No. D2005-0866, for the proposition that “the registration and use of domain names ‘so obviously connected with such a well-known product… by someone with no connection with the product suggests opportunistic bad faith’”. The Panel considers this proposition inapposite in the present proceeding because the Complainant has not established from the evidence that its trademark or product is particularly known. The Complainant alleges that the registration of the disputed domain name has the effect of barring the Complainant from registering or using the identical domain name, which amounts to an unfair disruption of the Complainant’s business. There is no evidence that the Respondent has engaged in a pattern of such conduct, as required by paragraph 4(b)(ii) of the Policy, nor any evidence of disruption of business, as required by paragraph 4(b)(iii) of the Policy. The Panel considers that an alternative explanation for the registration of the disputed domain name is apparent but has somewhat surprisingly not been addressed by the Complainant, namely that SARS has a widely-known dictionary meaning.1 For example, the Online Dictionary contains the following definition: “SARS Moreover, the Panel considers it a matter of public record that a novel coronavirus outbreak was reported in China, where the Respondent is resident, shortly before the disputed domain name was registered in January 2020. The Complaint makes no reference to SARS as an illness, nor offers any reason as to why the Respondent’s choice to register the disputed domain name may not have been made based on its pathological meaning as opposed to with an intent to target the Complainant’s mark. Accordingly, the Panel does not consider that the Complainant has discharged its onus of showing that the Respondent registered the disputed domain name based on its trademark value. Therefore, the Panel is unable to find that the disputed domain name was registered and is being used in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the Policy. The Panel notes that not all domain name registrations nowadays require use in the sense of putting up content to demonstrate bad faith; indeed, many cases are decided based on the “passive holding” doctrine, or likewise where there is evidence of use of a domain name for an email-based scheme (e.g., phishing or fraud) but no website content. Mindful of the possibility that the disputed domain name may still yet be put to an infringing or bad faith use, the Panel notes that changed circumstances (whether website use of otherwise) which may point to an intention to capitalize on the Complainant’s mark may support grounds for a refiling. 7. Decision For the foregoing reasons, the Complaint is denied. Matthew Kennedy 1 The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has searched for a dictionary definition, which is a matter of public record, because it considers such information useful to assessing the case merits and reaching a decision. See WIPO Overview 3.0, section 3.8. 2 Available at: “https://www.dictionary.com/browse/sars”.
(noun Pathology)
Severe Acute Respiratory Syndrome: an acute respiratory illness caused by a coronavirus, characterized by fever, coughing, breathing difficulty, and usually pneumonia.” 2
Sole Panelist
Date: September 4, 2020
Full & Egal Universal Law Academy