WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Taylor Wimpey Holdings Limited, Taylor Wimpey PLC v. Domains By Proxy, LLC / Arun Sivarajan
Case No. D2018-2515
1. The Parties
The Complainant is Taylor Wimpey Holdings Limited of High Wycombe, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Taylor Wimpey PLC of High Wycombe, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Arun Sivarajan of Dublin, Ireland.
2. The Domain Name and Registrar
The disputed domain name <taylorwimpeyhomes.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 5, 2018, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 6, 2018.
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 November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 11, 2018. 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 assets, such as intellectual property-related registrations on behalf of the group of companies, the Second Complainant, Taylor Wimpey PLC, is the group’s main trading entity.
The First Complainant is the owner of European Union Trademark TAYLOR WIMPEY, Registration No. 5787271, registered on January 31, 2008, while the Second Complainant is a licensee of said trademark.
The Disputed Domain Name <taylorwimpeyhomes.com> was registered on January 11, 2018.
The Disputed Domain Name resolves to pay-per-click (“PPC”) advertising, which features advertising links made up of terms such as: Builder House, New Housing Developments, Houses Sale, A New home for Sale, etc. All of these links relate to the Complainant’s business.
5. Parties’ Contentions
The Complainants’ contentions can be summarized as follows:
Identical or confusingly similar
The Complainants alleges that the only difference between their trademark and the Disputed Domain Name is the addition of the generic term “homes”, which is closely associated with their respective group of businesses, as the Complainants are a major house builder.
Thus, the Complainants’ trademark is the dominant element of the Disputed Domain Name and the additional word “homes” does not distinguish the Disputed Domain Name from their trademark.
Consequently, the Disputed Domain Name is confusingly similar to their trademark.
Rights or legitimate interest
The Complainants contend that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
In addition, the Complainants have found no evidence that the Respondent has been commonly known by the names “TAYLOR WIMPEY” or “TAYLOR WIMPEY HOMES” prior to or after the registration of the Disputed Domain Name.
Moreover, the Respondent is not a licensee of the Complainants or any of its group companies and has not received any consent, permission or acquiescence from the Complainants to use their trademarks or name in association with the registration of the Disputed Domain Name.
Furthermore, the Complainants have found nothing to suggest that the Respondent owns any trademarks that incorporate or are similar or identical to “TAYLOR WIMPEY” or “TAYLOR WIMPEY HOMES”.
Finally, the Complainants’ noted that the Disputed Domain Name has not been used in connection with any legitimate noncommercial or fair use, as the website associated with the Disputed Domain Name resolves to PPC advertising.
Registration and use in bad faith
The Complainants state that given the fame and lengthy history if their trademark, it is inconceivable that the Respondent did not have the Complainants firmly in mind when registered the Disputed Domain Name.
Moreover, the Disputed Domain Name website resolves to PPC advertising, which redirects Internet users to unrelated third parties and competitors of the Complainants. This behaviour is indicative of registration and use in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainants must satisfy with respect to the Disputed Domain Name in this case:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
A. Preliminary Issue - Consolidation of Complainants
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. Moreover, the Disputed Domain Name is confusingly similar to the First Complainant’s registered rights and confusingly similar to the Second Complainant’s trading name
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1 states: 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.
In the present case, the Panel finds that the Complainants have established that they have a specific common grievance against the Respondent. The Respondent has not indicated that it would suffer any prejudice from consolidation of the complaints and no potential prejudice is apparent to the Panel. The Respondent has not otherwise contested the request for consolidation. Thus, the Panel considers that it is procedurally efficient to allow the Complainants to proceed with the single Complaint as filed and finds that such consolidation is fair and equitable to all of the Parties. With regard to the remedy sought by the Complainants, the Panel notes that, if the Complaint succeeds, the Complainants have specifically requested that the Disputed Domain Name be transferred to the First Complainant.
B. Identical or Confusingly Similar
The Panel finds that the Complainants have established trademark rights in TAYLOR WIMPEY as evidenced by the trademark registration submitted with the Complaint, as mentioned above.
The Panel finds that the Disputed Domain Name <taylorwimpeyhomes.com> is confusingly similar to the Complainant’s trademark TAYLOR WIMPEY. The TAYLOR WIMPEY trademark is clearly recognizable within the Disputed Domain Name. The Panel has no difficulty in finding that the Disputed Domain Name is confusingly similar to the trademark TAYLOR WIMPEY, as the addition of the descriptive term “homes” does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, 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 a 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 at issue.
There is no evidence that the Respondent is commonly known by the Disputed Domain Name.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use its trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not known by the Disputed Domain Name.
The Respondent has failed to show that it has acquired any trademark rights with respect of the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Panel is convinced that the Respondent was aware of the Complainant’s trademark at the time of the registration of the Disputed Domain Name. At the date of registration of the Disputed Domain Name, the Complainant’s trademarks were already actively and prominently used for various years.
The Disputed Domain Name was registered on January 11, 2018, while the earliest registration in the name of the Complainant for the trademark TAYLOR WIMPEY dates back to 2008. Thus, this Panel finds that the Respondent was aware of the Complainant’s and TAYLOR WIMPEY trademark when registering the Disputed Domain Name.
Moreover, the Respondent website associated with the Disputed Domain Name resolves to a parking page containing PPC links, which are related to the Complainants businesses. As such, the Panel finds that the Respondent uses the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the TAYLOR WIMPEY trademark as to the source, sponsorship, and affiliation of the Disputed Domain Name website. (Paragraph 4(b)(iv) of the Policy).
Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.
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 <taylorwimpeyhomes.com> be transferred to the First Complainant.
Pablo A. Palazzi
Date: December 18, 2018