Complainant is South African Revenue Service, South Africa, represented by Adams & Adams Attorneys, South Africa.
Respondent is Bede Chibueze Ezugwu, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2020. On July 9, 2020, 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 11, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 14, 2020. 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 6, 2020. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 18, 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 Complainant, the South African Revenue Service, is an administrative, autonomous governmental organ of South Africa, and is South Africa’s tax collecting authority. Complainant uses the acronym SARS as a short form identifier for the South African Revenue Service. Complainant owns and uses the domain names Respondent is an individual based in Nigeria. Respondent registered the disputed domain name on January 25, 2020. On May 12, 2020, Complainant’s representative sent a demand letter to the Registrar of the disputed domain name to obtain the contact details of Respondent and to request a transfer or cancellation of the disputed domain name. The registrar would not provide the contact details of Respondent and declined to cancel or transfer the disputed domain name. The disputed domain name does not currently resolve to an active website or web page. 5. Parties’ Contentions A. Complainant Complainant contends that it has common law rights in the SOUTH AFRICAN REVENUE SERVICE name and mark based on its use and promotion of the name and mark since the early 1990s as the governmental agency responsible for administering the South African tax system and customs service. Complainant maintains that not only do consumers and businesses exclusively associate the SOUTH AFRICAN REVENUE SERVICE name and mark with Complainant, but that pursuant to the South African Revenue Service Act of 1997 Complainant’s rights in the SOUTH AFRICAN REVENUE SERVICE name and mark has been recognized and affirmed by statute. Complainant argues that the disputed domain name is identical to Complainant’s SOUTH AFRICAN REVENUE SERVICE name and mark as it fully and solely consists of that name and mark and because consumers seeing the disputed domain name will be confused or deceived into believing that the disputed domain name is operated or endorsed by Complainant. Complainant contends that Respondent has no legitimate interests in the disputed domain name as Respondent (i) is not authorized to use the SOUTH AFRICAN REVENUE SERVICE name and mark, (ii) has no relationship or association with Complainant, (iii) is not commonly known by the name SOUTH AFRICAN REVENUE SERVICE, (iii) has passively held the disputed domain name since registering it, and (iv) likely registered the disputed domain name to take unfair advantage of the substantial goodwill and reputation that Complainant enjoys in its well-known SOUTH AFRICAN REVENUE SERVICE mark and name. Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith as Respondent was likely aware of Complainant’s rights in its SOUTH AFRICAN REVENUE SERVICE name and mark given the that the disputed domain name is identical to Complainant’s SOUTH AFRICAN REVENUE SERVICE mark. Complainant asserts that given the nature of the services Complainant offers under the SOUTH AFRICAN REVENUE SERVICE name and mark, the risk of harm by someone passing themselves off as being connected to Complainant is quite high. Complainant also maintains that because Respondent has no connection to Complainant there is an inference that Respondent has no real legitimate interests in the disputed domain name and opportunistically registered the disputed domain name in bad faith, In that regard, Complainant also argues that because the disputed domain name is identical to Complainant’s SOUTH AFRICA REVENUE SERVICE name and mark, use of the disputed domain name by Respondent would lead people and/or businesses into believing that the disputed domain name is connected to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name is registered and is being used in bad faith A. Identical or Confusingly Similar Complainant does not have an existing trademark registration for the mark SOUTH AFRICAN REVENUE SERVICE. Complainant argues that is has established common law or unregistered rights in the SOUTH AFRICAN REVENUE SERVICE name and mark. See section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In support of that contention, Complainant has provided evidence of its use of the SOUTH AFRICAN REVENUE SERVICE name and of the acronym SARS which is used to identify, and is understood to stand for, the SOUTH AFRICAN REVENUE SERVICE. Complainant has also provided evidence that pursuant to the South African Revenue Service Act of 1997 Complainant’s rights in the SOUTH AFRICAN REVENUE SERVICE name and mark have been recognized and affirmed by statute. Based on the totality of Complainant’s evidence, none of which is contested by Respondent, the Panel is satisfied that Complainant has established its rights in the SOUTH AFRICAN REVENUE SERVICE name and mark. With Complainant’s rights in the SOUTH AFRICAN REVENUE SERVICE name established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, the disputed domain names is essentially identical to Complainant’s SOUTH AFRICAN REVENUE SERVICE mark as fully incorporates the SOUTH AFRICAN REVENUE SERVICE mark in its entirety. The addition of letter “s” to the disputed domain name does not distinguish the disputed domain name from Complainant’s SOUTH AFRICAN REVENUE SERVICE mark that fully appears in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s SOUTH AFRICAN REVENUE SERVICE mark and in showing that the disputed domain name is identical to that trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Based on the evidence submitted in this proceeding, and Respondent’s failure to participate in this matter, it appears more likely than not that Respondent does not have legitimate interests in the disputed domain name. Respondent is known by the name Bede Chibueze Ezugwu, and not South African Revenue Service, and has no connection to Complainant or the SOUTH AFRICAN REVENUE SERVICE name and mark. Moreover, Respondent has made no use of the disputed domain name in almost nine months and has failed to contest any of Complainant’s allegations or to explain how and why Respondent registered the disputed domain name that copies the exact name and mark of a major governmental agency in South Africa whose name is statutorily recognized in South Africa. Such failures when viewed in conjunction with Complainant’s rights in the SOUTH AFRICAN REVENUE SERVICE name and mark suggests that Respondent lacks any legitimate purpose or basis for registering the disputed domain name and has done so as an opportunistic act for the benefit or profit of Respondent. Given that Complainant has established with sufficient evidence that it owns rights in the SOUTH AFRICAN REVENUE SERVICE name and mark, and given Respondent’s above noted actions and failure to respond, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith Given Respondent’s actions as noted above, Respondent’s lack of connection to Complainant or its SOUTH AFRICAN REVENUE SERVICE name and mark, and Respondent’s failure to appear in this matter, it is easy to infer that Respondent’s registration of the disputed domain name which fully copies Complainant’s SOUTH AFRICAN REVENUE SERVICE mark was done opportunistically and in bad faith. The fact that Respondent has held the disputed domain name for almost nine months without using it for an active website or page, is based in Nigeria and not South Africa, and has provided no reasonable explanation for registering a domain name that is identical to Complainant’s SOUTH AFRICAN REVENUE SERVICE name and mark for an important, and known, governmental agency in South Africa underscores that Respondent’s intent in registering and using the disputed domain name is more likely than not in bad faith, for the profit of Respondent or for some illegitimate purpose. Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Georges Nahitchevansky
Sole Panelist
Date: September 2, 2020
Full & Egal Universal Law Academy