Complainant is The South African Revenue Service, South Africa, represented by Adams & Adams Attorneys, South Africa.
Respondent is 尹军 (Yin Jun), 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 October 29, 2020. On October 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 30, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On November 12, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On November 12, 2020, Complainant confirmed its request that English be the language of the proceeding. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on November 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 18, 2020. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 5, 2021. 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 is The South African Revenue Service, an administrative state entity established under the Complainant also owns several South African SARS and SARS E FILING trademarks, including: - South African trademark number 2011/29912 for SARS, registered on August 29, 2014; Complainant has also received widespread exposure for its SARS name and trademark through social media means. Respondent registered the Domain Name on June 4, 2020, and it resolves to a parked page which features sponsored links related to accounting software, file taxes, client portal for accountants, etc. and an advertisement that that Domain Name “may be for sale for USD 1000.00”. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for the SARS and SARS E FILING marks and owns domain names incorporating the SARS and SARS E FILING marks. Complainant contends that Respondent registered and is using the Domain Name, which incorporates Complainant’s SARS and SARS E FILING mark in its entirety, to confuse Internet users looking for bona fide and well-known SARS and SARS E FILING products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. Complainant submits in its communication to the Center on November 12, 2020 and in the Complaint that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement is in Chinese. Complainant indicates that its head office is located in South Africa, where English is one of South Africa’s official languages, that all communication with Complainant is in English, and that Complainant’s official website is also in English. Complainant contents that English is the dominant language of business and international communications, and requests that the proceeding be in English. In exercising its discretion to use a language other than that of the outstanding subject registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a response. The Panel also notes that the Domain Name was registered in characters using the Roman alphabet, and the Domain Name resolves to a website that is entirely in English. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate all case relevant documents into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the SARS and SARS E FILING marks, which have been registered since at least as early as 2013, well before Respondent registered the Domain Name on June 4, 2020 as noted above. Complainant has also submitted evidence, which supports that SARS and SARS E FILING is a widely known trademark and a distinctive identifier of Complainant’s products. Complainant has therefore proven that it has the requisite rights in the marks SARS and SARS E FILING. With Complainant’s rights in the SARS and SARS E FILING marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.co”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is identical or confusingly similar to Complainant’s SARS E FILING and SARS trademarks. Each of these marks is completely incorporated in the Domain Name. See WIPO Overview 3.0, section 1.7. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a 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. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the SARS and SARS E FILING marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the SARS and SARS E FILING trademarks or to seek registration of any domain name incorporating the trademarks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to a website displaying third party sponsored links related to accounting software, file taxes, client portal for accountants, etc. and an advertisement that that Domain Name “may be for sale for USD 1000.00”. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Panel finds that Complainant provided ample evidence to show that registration and use of the SARS and SARS E FILING marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide. Indeed, Complainant’s main functions include the collection of revenue and facilitation of local and international trade on behalf of the South African government. Complainant provides advisory services and assistance to taxpayers in South Africa through its branch offices, call centers as well as online through its website at “www.sars.gov.za”. Complainant also offers an electronic tax filing service, which is offered and promoted under the trademark SARS E FILING, and operated from a website located at “www.sarsefiling.co.za”. Therefore, Respondent was likely aware of the SARS and SARS E FILING marks when he registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s widely-known SARS and SARS E FILING trademarks in its entirety, suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the SARS and SARS E FILING marks, in an effort to opportunistically capitalize on the registration and use of the Domain Name. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well‑known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks. As discussed above, the Domain Name resolves to a website which features sponsored links related to accounting software, file taxes, client portal for accountants, etc. and an advertisement that that Domain Name “may be for sale for USD 1000.00”. Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of his website. Furthermore, such use by Respondent interferes with Complainant’s functions and activities, and may result in disrupting Complainant’s businesses. In addition to the circumstances referred to above, Respondent’s failure to file a response is further indicative of Respondent’s bad faith. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Kimberley Chen Nobles
South African Revenue Service Act 34 of 1997. Complainant is commonly known by its abbreviated name, SARS. Its main functions include the collection of revenue and facilitation of local and international trade on behalf of the South African government. Complainant provides advisory services and assistance to taxpayers in South Africa through its branch offices, call centers as well as online through its website at “www.sars.gov.za”. Complainant also offers an electronic tax filing service, which is offered and promoted under the trademark SARS E FILING, and operated from a website located at “www.sarsefiling.co.za”.
- South African trademark number 2011/29913 for SARS, registered on August 29, 2014;
- South African trademark number 2011/29914 for SARS, registered on August 29, 2014;
- South African trademark number 2011/29915 for SARS, registered on August 29, 2014;
- South African trademark number 2011/29916 for SARS, registered on August 29, 2014;
- South African trademark number 2010/20222 for SARS E FILING (figurative mark), registered on June 3, 2013;
- South African trademark number 2010/20223 for SARS E FILING (figurative mark), registered on June 3, 2013;
- South African trademark number 2010/20224 for SARS E FILING (figurative mark), registered on June 3, 2013;
- South African trademark number 2010/20225 for SARS E FILING (figurative mark), registered on June 3, 2013.
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Sole Panelist
Date: February 2, 2021
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