WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

South African Revenue Service v. Feng Zhang, Zhang Feng

Case No. D2020-1789

1. The Parties

Complainant is South African Revenue Service, South Africa, represented by Adams & Adams Attorneys, South Africa.

Respondent is Feng Zhang, Zhang Feng, China.

2. The Domain Name and Registrar

The disputed domain name <sarstax.com> (the “Domain Name”) is registered with DropCatch.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2020. On July 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 9, 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.

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 of the Complaint, and the proceedings commenced on July 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 5, 2020.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 17, 2020. 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 organ of South African, established under the South African Revenue Service Act 34 of 1997. Its main functions are the collection of revenue and facilitating local and international trade on behalf of South African.

Complainant does this by seeking to ensure compliance with South African tax legislation. In addition, Complainant is responsible for providing a customs service. This is done by controlling the import and export of prohibited and restricted goods, enforcing customs and related trade laws, ensuring clearance of goods and facilitating the movement of travelers through South Africa's borders.

In exercising these functions, Complainant provides advisory services and assistance to taxpayers in South Africa through its branch offices and call centers and via its website, which can be found at “www.sars.gov.za”. These services range from the provision of information, reports and statistics, to guidance and assistance with the submission of tax returns.

One of the ways in which Complainant has managed to reach and ensure convenience of use and compliance by a large number of taxpayers is its electronic filing service, which is offered and promoted under the trademark SARS E-FILING. The SARS E-FILING service is a free service that offers taxpayers convenience by providing an online system to submit tax returns and declarations, change personal information, request tax clearance certificates, do VAT vendor searches, and calculate custom payments. The SARS E-FILING service is operated from a website, which can be found at “www.sarsefiling.co.za” and is available for use by individual taxpayers, small or large businesses, employers, and other organizations.

Complainant is also the proprietor of the SARS trademark and owns the following relevant registrations registered on August 29, 2014 in South Africa:

- SARS, registration No. 2011/29912 in class 9 in respect of "Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus";

- SARS, registration No. 2011/29913 in class 16 in respect of "Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material {except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks";

- SARS, registration No. 2011/29914 in class 35 in respect of "Advertising; business management; business administration; office functions; offering for sale and the sale of goods in the retail and wholesale trade; preparation of income tax returns, tax advice, assessment and consultancy";

- SARS registration No. 2011/29915 in class 36 in respect of "Insurance; financial affairs; monetary affairs; real estate affairs";

- SARS, registration No. 2011/29916 in class 42 in respect of "Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software";

Complainant has been using its SARS mark as part of its name since October 1, 1997, when the South African Revenue Service Act 34 of 1997 came into force. Complainant markets and advertises its services under the SARS trademark in various ways, including television and radio advertisements as well as online, through its websites and social media networks. Complainant's websites, at “www.sars.gov.za” and “www.sars efiing.co.za”, illustrate the use of the SARS trademark by Complainant. Complainant also achieves exposure for its SARS name and trademark through the social media network Facebook. Complainant's Facebook profile is used as a means of providing information, addressing consumer concerns and queries, and as a platform to create awareness regarding Complainant's tax payment facilities and services.

Tax statistics reveal that approximately ZAR 1,144.1 billion was collected by Complainant for the 2016-2017 fiscal year. There was an increase of ZAR 74.1 billion from the previous fiscal year. Tax revenue more than doubled over the past decade, growing from ZAR 572.8 billion in 2007-2008 to ZAR 1,144.1 billion in 2016-2017. Complainant's tax payment services and facilities are made available to all registered and prospective taxpayers and are promoted under the SARS mark.

Complainant's rights in its SARS name and trademark have been recognized by statute. Complainant was established by the South African Revenue Service Act 34 of 1997. Section 30 of this Act provides, in particular:

30(1): no person may apply to any company, body, firm, business or undertaking a name or description signifying or implying some connection between the company, body, firm, business or undertaking and SARS;

30(2): any person who contravenes subsection (1) is guilty of an offence and on conviction liable to a fine or to imprisonment not exceeding 10 years or to a fine and imprisonment.

The Domain Name was registered on November 30, 2018 and previously resolved to a Chinese page offering mobile lottery services. The Domain Name currently resolves to a blank page.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant states that it is commonly known by the abbreviation of its name, “SARS”. Complainant claims it has made extensive use of its SARS trademark for many years, and that because of the extensive and widespread use of the SARS mark in South Africa, Complainant has acquired substantial goodwill and reputation, as well as common law rights, in its mark. Complainant also submits that the SARS mark has acquired a substantial reputation and qualifies as a well-known trademark. The SARS mark has, through use, become exclusively associated with Complainant. Complainant's earliest trademark registrations date back to 2011, while Respondent registered the Domain Name only on November 30, 2018.

Complainant's claims that the dominant portion of the Domain Name <sarstax.com> is SARS, which is identical to Complainant's SARS mark. The addition of the word “tax” contributes to members of the public being deceived and/or confused into believing that the Domain Name is related to the primary service that Complainant offers. In addition, the generic Top-Level Domain (“gTLD”) “.com” does not serve adequately to distinguish the Domain Name from Complainant's well-known mark.

As a result, Complainant contends that Respondent is benefitting from the goodwill and reputation of Complainant. Respondent intentionally acquired the Domain Name to take unfair advantage of the substantial reputation and goodwill in Complainant's SARS trademark. Respondent appears to have acquired the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. The use and registration of the Domain Name will cause confusion and deception.

Complainant submits for the reasons above, the Domain Name is confusingly similar to the trademark SARS, in which Complainant has rights.

(ii) Rights or legitimate interests

Complainant asserts that the use of the SARS trademark or a name that is confusingly similar to that mark in a domain name would not be lawful without the authorization of Complainant. This is because Complainant is the registered proprietor of the SARS trademark. Complainant has not authorized Respondent’s use of the SARS trademark as part of a domain name or otherwise. Complainant confirms that there is no relationship or association between Complainant and Respondent, whether by license or otherwise. Respondent, accordingly, has no right to use Complainant's SARS trademark as part of the Domain Name.

Complainant had no knowledge of Respondent until Complainant learned of the Domain Name registered in Respondent’s name. Complainant has registered trademark rights, common law rights, as well as ownership of various domain names incorporating its SARS trademark, all of which pre-dated the registration of the Domain Name, as described above. There is no evidence that Respondent has been or is commonly known by the name “SARS” in South Africa or elsewhere, or that Respondent has acquired any trademark or service mark rights in this mark.

Once Complainant became aware that Respondent had registered the Domain Name, Complainant instructed its attorneys to address a letter to Respondent demanding that it cease to use the SARS mark, which is identical to Complainant’s SARS trademark, and that Respondent transfer the Domain Name to Complainant. Complainant received no response from Respondent. Complainant's attorneys sent a further email to Respondent on May 26, 2020, informing Respondent that they were taking Complainant's instructions to institute formal proceedings against Respondent. Complainant has to-date received no response from Respondent.

Complainant contends that Respondent would be benefitting from the goodwill and reputation that Complainant owns in its SARS name and well-known trademark. Complainant believes that Respondent’s intention in registering the Domain Name is to take unfair advantage of the substantial reputation and goodwill in Complainant's name and well-known mark. Complainant asserts that it has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. In fact, Respondent is making illegitimate and unfair use of the Domain Name for the sole purpose of commercial gain misleadingly to divert consumers of Complainant.

(iii) Registered and used in bad faith

Complainant claims that Respondent was undoubtedly aware of Complainant's rights in the SARS mark when the Domain Name was registered. This is evident from the fact that the Domain Name incorporates the SARS mark, which is identical to Complainant's registered mark. Further, the inclusion of the word “tax”, relating to Complainant's primary operations, reinforces that Respondent was aware of Complainant's rights in the SARS mark.

Complainant contends that the SARS mark has acquired a substantial reputation. Complainant's reputation could be damaged by means of unlawful competition or passing off under the common law by another party wrongly representing that it is, or is associated with, Complainant.

Complainant submits that Respondent has no rights or legitimate claim in respect of the Domain Name or the SARS mark. Complainant has established that Respondent does not have any association or connection with Complainant. Complainant states that this creates the inference that Respondent has no legitimate interests in the Domain Name and acted in bad faith. Respondent has no connection with Complainant's well-known mark; it is therefore submitted that Respondent acted in bad faith when registering the Domain Name.

Complainant further advances that the registration of the Domain Name has the effect that Complainant is barred from registering or using the identical domain name. Respondent is preventing Complainant from exercising its rights. Respondent’s conduct, therefore, amounts to an unfair disruption of Complainant's business. In addition, the use of the Domain Name would lead people and/or businesses to believe that the Domain Name is registered to, operated or authorized by, or otherwise connected to Complainant. The Domain Name, therefore, creates the impression that Respondent and Complainant are somehow associated or connected due to the similarity between the Domain Name and Complainant's SARS trademark. Complainant contends that this constitutes bad faith.

Complainant claims that due to extensive use, the SARS mark has acquired a substantial reputation and qualifies as a well-known mark. Respondent registered the Domain Name with the intention of benefitting from the extensive reputation Complainant has established in its SARS mark. This is evidence that Respondent is currently using the Domain Name as a means to capitalize from users intending to visit Complainant's website. The use of the Domain Name by Respondent is taking unfair advantage of, and is detrimental to, the distinctive character or repute of Complainant's well-known SARS trademark. As referred to above, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusing with the use of Complainant's mark as to the source of Respondent’s website.

For these reasons, Complainant submits that the Domain Name has been registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has established rights in its SARS trademark, based on its trademark registrations and use of the mark in South Africa, where the mark is well known. See Accenture Global Services Limited v. Domains By Proxy, LLC/Name Redacted, WIPO Case No. D2013-2099 (finding that complainant has rights in the mark ACCENTURE).

Further, the Panel determines that the Domain Name is confusingly similar to the SARS mark, as the Domain Name incorporates the mark in its entirety, while adding the word “tax” which does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also Accenture Global Services v. Name Redacted, WIPO Case No. D2018-1038 (panel found that “investments” was a generic designation in the disputed domain name <accentureinvestments.com> and that “the addition of such a generic designation does not serve sufficiently to distinguish the disputed domain name from the Complainant’s mark.)”

Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its SARS trademark; that Respondent is not associated with Respondent; that Respondent is not commonly known by the Domain Name; and that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services.

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its SARS mark, and intentionally targeted that mark, when it registered the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive SARS trademark in its entirety, along with the word “tax”. Given the reputation of the SARS trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark and the services that Complainant offers (i.e., tax-related services), the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its SARS mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered, as complainant demonstrated that its mark is well-known globally and is vested with significant goodwill); Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products, (…) its very use by someone with no connection with the products suggests opportunistic bad faith”).

WIPO Overview 3.0, section 3.3, states that “passive holding” or non-use of a domain name may support a finding of bad faith. In particular,

“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

Here, three out of four of these factors apply – the distinctiveness and reputation of the SARS mark has been established by Complainant. Respondent failed to respond to Complainant’s demand letter and follow-up email, and failed also to provide a Response in this case. (The veracity of the Respondent’s identity is unknown, and taken at face value.) Finally, it is completely implausible that Respondent could use the Domain Name <sarstax.com> in good faith.

In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied 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 Domain Name <sarstax.com> be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: September 8, 2020