ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Taylor Wimpey PLC and Taylor Wimpey Holdings Limited v. Dorothy Mosley Case No. D2024-2123 1. The Parties The Complainants are Taylor Wimpey PLC, United Kingdom (“UK”), and Taylor Wimpey Holdings Limited, UK, represented by Demys Limited, UK. The Respondent is Dorothy Mosley, United States of America (“United States” or “US”). 2. The Domain Name and Registrar The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2024. On May 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2024, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainants on May 28, 2024, 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 May 29, 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 May 31, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2024.
page 2 The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on July 2, 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 The Complainants are two entities within a group of related companies that operate under the name “Taylor Wimpey”. Taylor Wimpey PLC (the “First Complainant”) is a public limited company operating in the UK since 1935 and the main trading entity of the group. Taylor Wimpey Holdings Limited (the “Second Complainant”) is a limited company operating in the UK since December 1945. The Complainants are among the largest homebuilders in the UK, having built over 10,000 homes in 2023. They operate through 22 regional businesses in the UK, employing 4,500 people, with a small operation in Spain. In 2023, the Complainants achieved revenue of GBP 3,514.5 million (approximately USD 4,478.3 million) and an operating profit of GBP 470.2 million (approximately USD 599.1 million). The Second Complainant is the owner of the trademark TAYLOR WIMPEY in many jurisdictions, including, UK Intellectual Property Office (UKIPO) Reg. No. 905787271 for classes 19, 36, 37, 42, and 44, registered on January 31, 2008; European Union Intellectual Property Office (EUIPO) Reg. No. 005787271 for classes 19, 36, 37, 42, and 44, registered on January 31, 2008; and Intellectual Property Office of Brunei Darussalam (BruIPO) Reg. No. 45944 for class 36, registered on December 21, 2016. In fact, the Complainants claim to be very well known in the UK and around the world. To illustrate this, the Complainants provided evidence of the number of followers on Facebook (178,000), LinkedIn (117,000) and on Instagram (87,500) as shown in annex 5 to the Complaint. The Complainants claim to own the domain name which is used for corporate emails and as their official website. Finally, the disputed domain name was registered on April 15, 2024, and it currently resolves to an inactive website (DNS failure) with active MX servers (as evidenced by the Complainants in Annex 7). 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 disputed domain name. Notably, the Complainants claim that the disputed domain name is confusingly similar to its trademark TAYLOR WIMPEY, on which the Complainants have prior rights. The Complainants argue that the Respondent has no rights or legitimate interests in respect of the disputed domain name, nor is he related in any way to the Complainants. Neither license nor authorization has been granted to the Respondent to make any use of the Complainants’ trademark TAYLOR WIMPEY or apply for registration of the disputed domain name. More specifically, the Complainants allege that the Respondent is passively holding the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
page 3 B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Consolidation of Complainants The Complainants have brought a single consolidated Complaint against the Respondent. Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states the following with respect to a single complaint brought by multiple complainants: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes.[…] 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.” There is sufficient evidence to support a consolidation of Complainants. The Complainants are part of the same group of companies and share a common legal interest and grievance: the Respondent has engaged in conduct that has affected the Complainants’ rights in a similar fashion. Because of the similarity of the issues raised concerning the disputed domain name, consolidation of the Complainants would be equitable and procedurally efficient. 6.2. Substantive matter According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainants must prove each of the following, namely that: (i) the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interest in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. 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 Complainant’s 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 Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The typosquatting practice of deleting the letter “i” and adding the letter “l” for the word “wimpey” does not prevent this Panel to conclude that the disputed domain name is confusingly similar to the Complainants’ trademark under WIPO Overview 3.0, section 1.9. Moreover, the “.com” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and is generally disregarded under the first element of the confusing similarity test, as set forth in section 1.11.1 of WIPO Overview 3.0.
page 4 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 disputed 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 disputed domain name such as those enumerated in the Policy or otherwise. The Complainants claimed not to have authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark TAYLOR WIMPEY nor is there any other evidence in the case file suggesting that the Respondent has or could have rights or legitimate interests in the disputed domain name. Additionally, the Respondent is passively holding the disputed domain name, therefore, this Panel considers that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. The Panel finds the second element of the Policy has been established. 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 such connection, the Complainants submitted evidence to support that the trademark TAYLOR WIMPEY is widely known and was registered and used many years before the Respondent registered the disputed domain name. Thus, when registering the disputed domain name, the Respondent most likely knew of and has targeted the Complainants’ trademark TAYLOR WIMPEY to generate confusion among the Internet users. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainants’ trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.
page 5 Besides, the Complainants proved that MX records have been set up for the disputed domain name, which suggests the Respondent is able to send emails under the disputed domain name that is confusingly similar to the Complainants’ mark, such as phishing emails. This may be a further indication of the Respondent's bad faith in both registering and utilizing the disputed domain name. 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 disputed domain name be transferred to the Second Complainant. /Gustavo Patricio Giay/ Gustavo Patricio Giay Sole Panelist Date: July 16, 2024
Full & Egal Universal Law Academy