ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Taylor Wimpey PLC and Taylor Wimpey Holdings Limited v. Musa Abdul Case No. D2024-0073 1. The Parties The Complainants are Taylor Wimpey PLC and Taylor Wimpey Holdings Limited, United Kingdom, represented by Marks and Clerk LLP, United Kingdom. The Respondent is Musa Abdul, United Kingdom. 2. The Domain Name and Registrar The disputed domain name (‘the Domain Name’) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2024. On January 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 10, 2024, 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 (Redacted for privacy, Privacy service provided by Withheld for Privacy ehf). The Center sent an email communication to the Complainants on January 12, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 17, 2024. 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 the Respondent of the Complaint, and the proceedings commenced on January 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2024.
page 2 The Center appointed Dawn Osborne as the sole panelist in this matter on February 16, 2024. 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 Taylor Wimpey PLC is one of the largest British based housebuilding companies; it is listed on the London stock exchange and is a constituent of the FTSE 100 index. It has been trading under the brand name “Taylor Wimpey” since it was founded in 2007, through the merger of George Wimpey and Taylor Woodrow. It sells over 10,000 homes a year and has operations in the UK and Spain and it has a revenue of around GBP 3.98bn. The Complainants’ TAYLOR WIMPEY trade mark is widespread and that the trade mark is well-known in the property sector. The Complainants’ group of companies operate a website at “www.taylorwimpey.co.uk” , the homepage of which clearly displays the TAYLOR WIMPEY brand name. The domain name is also owned by Taylor Wimpey Holdings Limited and redirects to . The Complainants have a large social media presence, with over 176,000 “followers” on Facebook, 38,400 “followers” on Twitter, and over 83,800 “followers” on Instagram. Taylor Wimpey Holdings Limited, is owned by Taylor Wimpey PLC, and is the Registered Proprietor of UK trade mark registration no. UK00905787271 covering classes 19, 36, 37, 42, and 44 for buildings and related services. The trade mark was filed on March 26, 2007 and registered on January 31, 2008. The Domain Name was registered on May 11, 2023 and points to competing pay per click links. The Respondent appears to be connected with companies that were competitors of the Complainants and has provided false contact details to the WhoIs database. 5. Parties’ Contentions A. Complainants The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, the Complainants contend that: The Domain Name shares a high degree of similarity to TAYLOR WIMPEY for which the Complainants have registered trade marks and generated goodwill amongst the relevant consumers as a result of their long-standing use of the brand name TAYLOR WIMPEY and their advertising and marketing efforts, including their social media presence. The addition of the letter ‘s’ in the Domain Name constitutes a classic case of typo-squatting, where the letter “S” is an adjacent keyboard letter sitting just under the “W” in WIMPEY and so could easily be mistyped by users; the difference between the Domain Name and the Complainants’ registered marks is so minor that it does not detract from the clear use of the distinctive “TAYLOR WIMPEY” brand name. The Domain Name is, therefore, confusingly similar to a trade mark in which the Complainants have rights. The Complainants have found no evidence to suggest that the Respondent is commonly known by the name Taylorswimpey , nor that he has trade mark applications or registrations for Taylorswimpey, nor that he is using the mark already in connection with a bona fide offering of goods or services. The Complainants strongly believe that the Respondent has no legitimate interests in the Domain Name.
page 3 The Domain Name is not comprised of generic words in common usage. In fact, to the best of the Complainants’ knowledge, the Complainants, and associated companies, are the only parties in the world using the combination of TAYLOR and WIMPEY. Bearing in mind the recognition of the TAYLOR WIMPEY brand and the use of this trade mark since 2007, there is no realistic reason for the registration or use of the Domain Name other than to take advantage of the Complainants’ rights. The closeness of the Domain Name to the Complainants’ TAYLOR WIMPEY trade mark creates the false impression that the Domain Name is owned by or is affiliated with the Complainants, when this is not the case. The Complainants have not authorized the use or registration of this Domain Name by the Respondent. The Domain Name is not being used in relation to a bona fide offering of goods and services, and the Respondent is not making legitimate or fair use of the Domain Name. The Domain Name is being used in relation to a pay-per-click site. The use of domain names to generate revenue by pay-per-click links does not constitute a bona fide use of the domain name, especially where the links are to competitors of the Complainants. The links are to the websites for property developers, letting agents and holiday letting agents, and so it is clear that the links compete with or capitalize on the reputation and goodwill of the Complainants’ mark or otherwise mislead Internet users. There is no evidence that the Respondent has taken steps to suppress PPC advertising related to the Complainants’ trade mark (such as through “negative keywords”) or taken any other mitigating steps against targeting the Complainants. According to Companies House, the Respondent is a Director of the competing UK active companies: ‘Imperial Real Estate Group Limited’, ‘Imperial Real Estate Holdings Limited, ‘Room For One More Property Management Ltd’ and a number of other dissolved companies all operating in the real estate sector. None of the companies connected with the Respondent were named ‘TAYLORSWIMPEY’ nor had any obvious legitimate connection with the name. The Respondent has provided false address and phone number contact details in registering the Domain Name. Where the Respondent provides false contact information this has been held to be further evidence that the use of that Domain Name should not be considered “fair”. The Complainants submit that the Domain Name was registered and is being used in bad faith for the following reasons: 1. Typosquatting - According to section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos (...) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. Here the Domain Name is a classic typo-squatting Domain Name with the letter “s” added between the two words making up the Complainants’ trademark TAYLOR WIMPEY. With “s” sitting just below the letter “w” on a standard computer keyboard, the Complainants believe that users could easily mistype the Complainants’ domain name and be directed to the Respondent’s website instead of that of the Complainants. The simple typo could also go unnoticed if an email is received from the Domain Name, and the Complainants are legitimately concerned that the Domain Name could be used for a phishing scam. 2. The Respondent’s Knowledge - Given that TAYLOR WIMPEY is not a dictionary term and the combination of these two elements is recognised as indicating the Complainants’ brand, it is unrealistic to assume that the Respondent could have registered the Domain Name without knowing about the Complainant or for any reason other than to target the Complainant and their business. The Respondent is a director of various businesses in the field of real estate and, therefore, clearly operates in the same sectors as the Complainant in the UK. This further increases the probability that the Respondent was aware of the
page 4 Complainants’ well-known brand TAYLOR WIMPEY at the time of registering the Domain Name and sought to take advantage of the brand’s reputation. 3. False WhoIs details - The Respondent provided inaccurate address and contact number details to the Registrar. There does not appear to be a “Fakkon Roove Road” at the postcode provided. Instead, the postcode corresponds to “Brushfield Street”. There is no road called “Fakkon Roove Road” in London or anywhere else in the UK. Additionally, the phone number provided to the Registrar is seven digits long following the international filing prefix +44, and does not appear to contain an area code. The number provided cannot be a UK mobile number owing to UK mobile numbers being 10-11 digits in length. The purposeful submission of incorrect contact information further supports the claim that the Domain Name was registered and is being used in bad faith; the Respondent did not want to be easily contacted regarding the use of the Domain Name. 4. Competing Pay-Per-Click links - The use of the Domain Name for a pay- per-click site with links to competitors of the Complainant and others in the property field is a clear indication that the Respondent’s use of the Domain Name is in bad faith. The use of a highly similar typo variation of the Complainants’ TAYLOR WIMPEY trade mark in the Domain Name will drive traffic to the website of the Respondent who could generate revenue from the pay-per-click links on the website. 5. E-mail set up - The Domain Name is configured with MX records and SPF and is, therefore, capable of email communication. Given the fact that the Domain Name is a typo of the Complainants’ trade mark TAYLOR WIMPEY, anyone receiving an email originating from the Domain Name could be misled into believing that this was sent by the Complainant. There is a real concern here that the Domain Name could be used for a phishing scam. 6. No response – The Complainants’ authorized representatives contacted the Respondent on November 20, 2023 through the privacy protected email address listed in the WhoIs details to state their rights in TAYLOR WIMPEY and to request the transfer of the Domain Name. The Respondent failed to respond. It is clear to the Complainants that the use and registration of the Domain Name is an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, creating a likelihood of confusion with the Complainants’ TAYLOR WIMPEY trade mark as to the source, sponsorship, affiliation or endorsement of the website or of a product or service on the website. It also cannot be ruled out that the Domain Name was registered with the primary purpose of disrupting the business of a competitor. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings Preliminary Issue: Multiple Complainants In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview 3.0, section 4.11.1. Taylor Wimpey PLC trades using the TAYLOR WIMPEY mark and Taylor Wimpey Holdings Limited owns the UK registration for the TAYLOR WIMPEY mark. As such the Panel finds that both companies have a specific common grievance against the Respondent who has engaged in common conduct that has affected them in a similar fashion, and it would be equitable and procedurally efficient to permit the consolidation.
page 5 A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainants’ trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainants have shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the mark is recognizable within the Domain Name merely adding an extra letter ‘s’. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7 and section 1.9. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. The nature of the Domain Name creates the false impression that the Domain Name is owned by or is affiliated with the Complainants, when this is not the case and is confusing. The Complainants have not authorized the use or registration of this Domain Name by the Respondent and the Respondent is not commonly known by the Domain Name. WIPO Overview 3.0, section 2.5.1 The use of the Domain Name is commercial so is not legitimate commercial fair use. The Domain Name has been used to generate revenue by competing pay-per- click links which does not constitute a bona fide use of the Domain Name. The Respondent appears to be associated with a competitor of the Complainants and to have provided false contact information to the WhoIs database for the Domain Name, also indicating that the registration is not legitimate. WIPO Overview 3.0, section 2.5. The Panel finds the second element of the Policy has been established.
page 6 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has used the Domain Name for competing pay per click links and has provided false contact details to the WhoIs database. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity here impersonation/passing off by the means of typosquatting and bait and switch by means of competing pay per click links constitutes bad faith. The fact that the Respondent is associated with competitors of the Complainants and has provided false contact details to the WhoIs database also indicated bad faith. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Domain Name constitutes bad faith under the Policy. WIPO Overview 3.0, section 3. The Panel finds that the Complainants have established the third 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 Domain Name be transferred to Taylor Wimpey Holdings Limited. /Dawn Osborne/ Dawn Osborne Sole Panelist Date: February 16, 2024
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