WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Savills Plc v. A[ ] M[ ], Savills Usa, Savills UK and William Jones
Case No. D2015-1202
1. The Parties
The Complainant is Savills Plc of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Lane IP Limited, United Kingdom.
The Respondents are A[ ] M[ ] of Dover Plains, New York, United States of America, Savills Usa of New York, New York, United States of America, Savills UK of London, United Kingdom and William Jones of London, United Kingdom (collectively "the Respondent").
2. The Domain Names and Registrars
The disputed domain names <savills.agency>, <savillsbritain.com>, <savillsuk.com> and <savillsusa.com> (the "Domain Names") are registered with eNom and NameSilo, LLC (the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2015. On July 13, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On July 13, 2015, the Registrars transmitted by emails to the Center their verification responses 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2015. On July 24, 2015, one of the Respondents filed an email communication with the Center. The Center notified the Parties of the commencement of the Panel appointment process on August 14, 2015
The Center appointed Nicholas Smith as the sole panelist in this matter on August 28, 2015. 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.
On September 4, 2015 the Panel directed the Center to request a confirmation as to whether the Domain Name <savills.agency> remained registered to the Respondent. On September 8, 2015, the Complainant confirmed that the Domain Name <savills.agency> had been registered by the Complainant and was no longer in the control of the Respondent. The same day the Registrar eNom confirmed with the Center that the Domain Name <savills.agency> had been deleted and hence no longer remained registered with the Respondent.
On September 7, 2015, the Panel issued the following Panel Order:
"Under the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
The Panel notes that:
1) The Complaint as filed in this matter makes the following statement in respect of the domain names <savills.agency> and <savillsusa.com> the subject of the proceeding:
"Using an email address at this Domain Name, the Respondent has posed as the Complainant and using its trade mark(s), has requested money from an interested party in exchange to rent a property that unbeknown to the party has no rights or intention to provide, i.e. fraud. In protecting the interested party(- ies), we have not attached to this Complaint even a redacted version of the correspondence between the interested party(-ies) and the Respondent, i.e. evidence of the fraud; this can be provided to the Panel on its request."
2) The Panel is not prepared to make a finding as to the veracity of the statement above in the absence of any supporting evidence.
Therefore the Panel makes the following orders:
1) The Complainant has until September 10, 2015 to file any additional evidence that it sees fit to support the statement made at 1) above including copies of the correspondence referred to in respect of each of the domain names the subject of the proceeding. Such evidence may be redacted to remove all information identifying the parties who received the correspondence but an explanation must be provided as to how the correspondence came into possession of the Complainant. The additional evidence should be served on the Respondents using the e-mail addresses [ ]@hotmail.com; [ ]@outlook.com; and [ ]@hotmail.com.
2) The Respondents shall have an opportunity to provide any submission or any evidence in reply they may choose to make regarding the Complainant's additional evidence in response to this Panel Order, by September 15, 2015.
3) Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to [ ]@wipo.int for forwarding to the Panel.
4) The Panel will deliver its decision on or before September 18, 2015."
On September 8, 2015, the Complainant filed further evidence in response to the Panel Order. The Respondent did not file any further submissions or evidence.
4. Factual Background
The Complainant is a real estate services provider. The Complainant's predecessor in title was established in London in 1855. The Complainant has more than 600 offices worldwide and has existed in its present form since 1987.
The Complainant has held trade marks for the word mark SAVILLS (the "SAVILLS Mark") since at the 1980s. It currently holds registrations for the SAVILLS Mark in the European Union, United States and United Kingdom, each for services relating to real estate agency services in classes 35, 36 and 37, among others.
The Domain Name <savillsusa.com> was created on April 23, 2015. The Domain Name <savills.agency> was created on June 3, 2014. The Domain Name <savillsuk.com> was created on July 1, 2015. The Domain Name <savillsbritain.com> was created on July 7, 2015. None of the Domain Names redirect to an active website and there is no evidence that they have ever been used to redirect to a website.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are confusingly similar to the Complainant's SAVILLS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the SAVILLS Mark. It holds several registrations for the SAVILLS Mark around the world. The Complainant has also registered a number of domain names that incorporate the SAVILLS Mark, including <savills.com>, <savills.co.uk> and <savills.us>.
The Domain Names consist of the SAVILLS Mark in its entirety with the addition of the geographic terms "us", "uk" "britain" or the gTLD ".agency" and hence are identical or confusingly similar to the SAVILLS Mark.
The Respondent is not commonly known by the Domain Names nor does it have any trade marks that correspond to the Domain Names. The Complainant has not authorized or licensed the Respondent to use the Domain Names. It is inconceivable that the Respondent has not heard of the Complainant, given the global fame of the Complainant's brand.
The Domain Names do not resolve to an active website. Rather what has occurred is that each of the Domain Names have been registered using the name and address of an individual or business that has no connection with the Respondent, either an individual or the Complainant itself. In respect of <savills.agency> and <savillsusa.com>, the Respondent has used an e-mail address at each of the Domain Names to pose as the Complainant and has requested money from an interested party in exchange to rent a property that the Respondent has no rights or intention to provide. Such conduct amounts to registration and use of the <savills.agency>, and <savillsusa.com> Domain Names in bad faith. The Respondent does not appear to have taken any action from <savillsbritain.com>, <savillsuk.com> however given the scant registrant details and that those Domain Names were immediately registered following the successful suspension of the <savills.agency>, and <savillsusa.com> Domain Names by their respective Registrar, the purpose of the registration and use of the <savillsbritain.com>, <savillsuk.com> Domain Names was to facilitate fraudulent behavior.
The Center received an email communication from A[ ] M[ ], the named registrant of <savills.agency>. This communication denied any ownership of the <savills.agency> domain name. No other Response was received.
6. Discussion and Findings
A. Identity of the Proper Respondents
In this proceeding both the Complainant and one of the named Respondents have denied that the named Respondents are the owner of the Domain Names or have any connection with the Domain Names. Similar situations have arisen in Banca Intesa S.p.A. v. Hilary Ammann, WIPO Case No. D2006-0496 and AXA SA v. Michael A Watters, WIPO Case No. D2012-0376 in which the persons apparently in control of the disputed domain names used the then Respondents' respective names and addresses without their knowledge or authorization to register the disputed domain names.
While it is possible that the Domain Names were registered by a third party using the named Respondents' identities without their knowledge or authorization, the Rules state that the respondent in a UDRP proceeding is the holder of the domain name registration (against which a complaint is filed). In this proceeding, the holders of the Domain Names, according to the information transmitted by the Registrars on June 13, 2015, are the named Respondents and therefore, pursuant to the Rules and the Policy, the Panel refers to them as Respondents in the proceeding. The Panel acknowledges that each of the named Respondents may have been the victim of some form of scam or identity theft and may not be in control of the Domain Names, but makes no factual finding in that respect.
On September 8, 2015 the Complainant confirmed that the Domain Name <savills.agency> had been privately registered by the Complainant. As the Domain Name <savills.agency> is no longer registered to the named Respondent, pursuant to paragraph 17(b) of the Rules, the Panel issues an administrative order terminating the proceedings in respect of <savills.agency>.
C. Consolidation of Proceedings
The named registrant of <savillsuk.com>is Savills UK. The named registrant of <savillsbritain.com> is William Jones. The named registrant of <savillsusa.com> is Savills Usa. UDRP proceedings are normally brought against a single respondent. However, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), it is permissible to consolidate a proceeding against more than one named respondent if (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against William Jones, Savills UK and Savills Usa. Each of the Domain Names consists of a similar format (being the SAVILLS Mark and a geographical term). Each of the Domain Names was likely registered by a third party using the named Respondents' identities without their knowledge or authorization. There is a similarity in the conduct of the Respondents in respect of the Domain Names <savills.agency> (no longer party of the proceeding) and <savillsusa.com> that makes it more likely than not that the entity behind the registration of <savillsusa.com> was the owner of more than one domain name containing the SAVILLS Mark. Finally, the <savillsuk.com> and <savillsbritain.com> Domain Names were registered shortly after the <savills.agency> and <savillsusa.com> Domain Names had been suspended by their respective registrar. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all parties.
D. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the SAVILLS Mark, having registrations for the SAVILLS Mark as a trade mark throughout the world, including in the United States and United Kingdom, where the named Respondents are based.
UDRP WIPO panels have repeatedly held that the addition of a generic word or a geographical term to a recognized mark does not prevent a finding of confusing similarity between the domain name and the mark of the complainant. The Bank of Nova Scotia v. Whois Protection, WIPO Case No. D2007-0884. See also Valero Energy Corporation, Valero Marketing and Supply Company v. Navigation Catalyst Systems, Inc., WIPO Case No. D2011-1227.
The Domain Names consist of the SAVILLS Mark and a geographical term. The suffixes "britain", "usa" or "uk" do not operate to distinguish the Domain Names from the SAVILLS Mark in any significant way. The Panel finds that the Domain Names are identical or confusingly similar to the Complainant's SAVILLS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
E. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))".
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the SAVILLS Mark or a mark similar to the SAVILLS Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
F. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent's website or location or of a product or service on the Respondent's website or location.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the SAVILLS Mark at the time the Respondent registered the Domain Names. Following the registration of the <savills.agency> (no longer part of the proceeding) and <savillsusa.com> Domain Names, the Respondent used e-mail addresses connected to those Domain Names to pose as the Complainant and offer to lease properties (the business of the Complainant) that the Respondent had no connection to. As such the Respondent must have been aware of the Complainant's reputation in the real estate business. The registration of the Domain Names in awareness of the SAVILLS Mark and in the absence of rights or legitimate interests amounts to registration in bad faith. In addition, the only apparent purpose behind the conduct of the Respondent is to commit fraud upon customers who think that they are dealing with the Complainant.
While there is no evidence of similar conduct from the <savillsuk.com> and <savillsbritain.com> Domain Names, the Panel is prepared to infer, based on the conduct of the Respondent, including the apparent use of falsified identity details, the sending of fraudulent e-mails and the absence of (either from the Respondent or otherwise) any apparent legitimate reason for the registration and use of the Domain Names that these Domain Names either have been used or have been held pending use for similar purposes as the <savills.agency> and <savillsusa.com> Domain Names. It appears both from the Domain Names themselves and from the Respondent's conduct that the Respondent has intentionally attempted to attract Internet users by means of confusion with the SAVILLS Mark, and received or intended to receive revenue for that activity. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <savillsbritain.com>, <savillsuk.com> and <savillsusa.com> be transferred to the Complainant.
Date: September 16, 2015