Westmore · UDRP DecisionTay1orwimpey.com
The Panel ordered transfer of <tay1orwimpey.com> to Taylor Wimpey Holdings Limited. It found the domain confusingly similar to the TAYLOR WIMPEY trademark because it replaced the letter “l” with the visually similar numeral “1.” The Complainants established a prima facie absence of rights or legitimate interests, which the nonresponding Respondent did not rebut. Bad faith was established from the deliberate typographical variation, passive holding, the absence of any plausible legitimate use, and evidence that the Respondent had registered variants of well-known third-party marks.
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The decision illustrates a straightforward letter-to-numeral typosquatting case in which passive holding did not prevent a bad-faith finding. The Panel combined the near-exact visual imitation, the absence of any plausible legitimate use, the Respondent’s default, and evidence of similar third-party mark variants. It also shows that related trademark-owning and trading entities may proceed jointly where the Panel finds consolidation fair and equitable.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Taylor Wimpey Holdings Limited and Taylor Wimpey PLC v. Annette Johnson, Tangerineuk Case No. D2016-2116 1. The Parties The Complainants are Taylor Wimpey Holdings Limited and Taylor Wimpey PLC of High Wycombe, the United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Demys Limited, UK. The Respondent is Annette Johnson, Tangerineuk of Dry Ridge, Kentucky, United States of America (“US”). 2. The Domain Name and Registrar The disputed domain name <tay1orwimpey.com> is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2016. On October 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2016, 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. 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 of the Complaint, and the proceedings commenced on October 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2016. The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on December 1, 2016. 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. While the First Complainant Taylor Wimpey Holdings Limited holds trademark registrations on behalf of the group of companies, the Second Complainant Taylor Wimpey PLC is the group’s main trading entity. The Complainants indicate that a license is in place to permit the Second Complainant to use and enforce rights held by the First Complainant. They explain that “for reasons of confidentiality” the license has not been exhibited. They further contend that they have a specific common grievance against the Respondent in that the Respondent has targeted both Complainants’ rights. The Complainants request consolidation of their respective complaints against the Respondent and claim that the Respondent will not be prejudiced by the complaint being brought jointly by both Complainants. In the circumstances, and absence of any objection on behalf of the Respondent, the Panel accepts the single consolidated Complaint against the Respondent, which it finds fair and equitable to all the parties ( WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition 2.0 , (“WIPO Overview 2.0”) paragraphs 4.16 and also paragraph 1.8 regarding the rights of a trademark licensee for the purpose of filing a UDRP case). The First Complainant is the owner of European Union Trademark Registration number 5787271 TAYLOR WIMPEY dated January 31, 2008 covering goods and services in classes 19, 36, 37, 42 and 44. The disputed domain name <tay1orwimpey.com> was registered on August 25, 2016, and does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainants contend the following: The Second Complainant was established in February 1935. It is one of the largest British based house building companies and is listed on the London Stock Exchange. The Complainants’ group reported revenues of GBP 3,139.8m and an operating profit of GBP 637.7m in 2015. The First Complainant’s trademark registration TAYLOR WIMPEY and the disputed domain name <tay1orwimpey.com> are confusingly similar. The Respondent has no rights or legitimate interests in the disputed domain name. By registering the disputed domain name the Respondent has engaged in “typosquatting”, which is sufficient to establish registration and use in bad faith. The Respondent is the registrant of a number of other domain names which appear to be typographical variants of well-known marks, which is highly indicative of bad faith, and lists certain examples. It is inconceivable that the Respondent registered the disputed domain name unaware of the Complainants and the TAYLOR WIMPEY name and trademark. The First Complainant notes that its registered rights in the trademark TAYLOR WIMPEY pre-date the disputed domain name (August 25, 2016) by over eight years. The First Complainant has not licensed or permitted the Respondent to use its TAYLOR WIMPEY mark and there is no evidence of 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. There is no evidence that suggests that the Respondent trades under the domain name or the name TAYLOR WIMPEY or is commonly known by any of them. Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the First Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be or transferred: (i) the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (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. On the basis of the evidence introduced by the Complainants, the Panel concludes as follows: A. Identical or Confusingly Similar The Panel considers that under the Policy the disputed domain name <tay1orwimpey.com> is confusingly similar to the trademark TAYLOR WIMPEY in which the First Complainant has rights, which have been licensed to the Second Complainant. The only difference between the trademark TAYLOR WIMPEY and the disputed domain name <tay1orwimpey.com> is the replacement of the letter “L” with the numeral “1” which is visually very similar to the capital letter “L” and almost identical to the small letter “l”. Following what has become the consensus view among UDRP panels ( WIPO Overview 2.0, paragraph 1.2 ) the Panel shall disregard the generic suffix “.com” under the confusing similarity test and concludes that the disputed domain name is confusingly similar with the trademark TAYLOR WIMPEY. Therefore, the Complainants have succeeded on this first element of the Policy. B. Rights or Legitimate Interests The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name. Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of production shifts to the respondent. The respondent must then come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the domain name in order to refute the prima facie case. The Panel finds that the Complainants have made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainants’ contentions and, therefore, has not made such showing. None of the circumstances provided in paragraph 4(c) of the Policy, nor any other to demonstrate legitimate interest in the disputed domain name have been proved by the Respondent. Based on the record, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name, and thus the Complainants have made the second prong. C. Registered and Used in Bad Faith In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith. The Policy in paragraph 4(b) sets out various circumstances, expressly “without limitation” which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith. The Complainants assert that the Respondent registered the disputed domain name in bad faith and its continuing passive holding of the disputed domain name constitutes bad faith, as mentioned in WIPO Overview 2.0 paragraph 3.2 . The Panel considers that the disputed domain name was registered as a typographical variant of the trademark TAYLOR WIMPEY. In other words, that the Respondent has incurred in what is known as “typosquatting”, which in itself may be considered sufficient to establish registration and use in bad faith. In line with what the Panel expressed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 , the Panel considers that taking into account the specific circumstances of this case, it is not possible to conceive any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainants’ rights under trademark law. Furthermore, from evidence submitted by the Complainants, it would seem that this is not the first time in which the Respondent has registered domain names which are variants of well-known third party marks. In view of the foregoing, and in absence of a plausible explanation from the Respondent to the contrary, the Panel finds that the disputed domain name was registered and used in bad faith. Therefore, the Complainants have also made out the third prong. 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 <tay1orwimpey.com> be transferred to the First Complainant i.e., Taylor Wimpey Holdings Limited. Miguel B. O'Farrell Sole Panelist Date: December 13, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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