WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
South African Revenue Service v. WhoisGuard, Inc. / Steven Martin
Case No. D2020-1792
1. The Parties
The Complainant is South African Revenue Service, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is WhoisGuard, Inc. / Steven Martin, South Africa.
2. The Domain Name and Registrar
The disputed domain name <sars-gov.xyz> (the “Domain Name”) is registered with NameCheap, Inc. (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 the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2020, 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 July 16, 2020.
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 July 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2020.
The Center appointed Jeremy Speres as the sole panelist in this matter on September 4, 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
The Complainant is the South African Revenue Service, being the official government revenue service of South Africa. Its main functions are the collection of revenue and facilitation of local and international trade.
The Complainant has used the acronym of its name, “SARS”, extensively in South Africa since October 1, 1997 when it was established in terms of domestic legislation. The Complainant owns South African trade mark registration no.s 2011/29912 to 2011/2991216 for SARS (word) in classes 9, 16, 35, 36, and 42, registered on August 29, 2014. The Complainant maintains websites at “www.sars.gov.za” and “www.sarsefiling.co.za”.
The Domain Name was registered on November 4, 2011, and did not resolve as at the drafting of this decision.
5. Parties’ Contentions
The Complainant contends as follows. The Domain Name is confusingly similar to the Complainant’s well-known trade mark because its dominant part is SARS, which is identical to the Complainant’s mark, and the inclusion of “gov” only adds to the similarity given the Complainant’s governmental role.
The Respondent lacks rights or legitimate interests because the Domain Name is not authorised, is likely to lead to confusion and is intended to mislead taxpayers. Further, the domestic legislation establishing the Complainant prohibits any person adopting a name signifying a connection with the Complainant.
The Domain Name was registered and used in bad faith because: given the repute of the Complainant’s mark and the inclusion of “gov”, the Respondent was likely aware of the Complainant’s rights; and any use of the Domain Name would take unfair advantage of, or be detrimental to, the Complainant’s trade mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name, “sars-gov” minus the Top-Level Domain, is confusingly similar to the Complainant’s registered trade mark SARS. It is well-established that where the domain incorporates the entirety of the trade mark which is recognisable within the domain, the addition of other terms would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case, confusing similarity is compounded by the facts that the SARS mark is the dominant element of, and is an independent, distinctive element within the Domain Name (separated with the hyphen), and the term “gov” does not prevent a finding of confusing similarity.
The Complainant claims a reputation and common law rights in the SARS mark in South Africa and puts forward tax collection figures for 2017 and screenshots from its Facebook page (dated the same day as registration of the Domain Name) in support. Additionally, UDRP panelists may take judicial notice of the repute of a trade mark within their personal knowledge where it cannot reasonably be contested (see section 4.8 of the WIPO Overview 3.0; Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300). The Panel, having been a resident of South Africa for many years prior to registration of the Domain Name, is acutely familiar with the Complainant and its SARS mark and takes judicial notice of its repute from before registration of the Domain Name.
The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of proof shifts to the respondent (see section 2.1 of the WIPO Overview 3.0). Here, the Complainant has made out a prima facie case which the Respondent has failed to rebut.
There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. According to the Complaint, the Domain Name did not resolve to an active website at the time the Complainant was made aware of it and at the filing of the Complaint. UDRP Panels may undertake limited factual research into matters of public record (WIPO Overview 3.0 at paragraph 4.8). The Panel has searched the Internet Archive, which contains no evidence of use of the Domain Name that might otherwise confer rights or legitimate interests upon the Respondent. Additionally, the Panel has performed a DNS lookup and found that the Domain Name does not have any configured DNS records. The Panel does note that both of these items of evidence should have been provided by the Complainant.
The Complainant cites a provision of the South African Revenue Service Act 34 of 1997 providing that: “no person may apply to any […] undertaking a name or description signifying or implying some connection between [them] and SARS.” The provision cited by the Complainant was however repealed in 2014 and replaced with one more helpful, and directly relevant, to the Complainant’s case. Specifically, section 30(1)(e) of that Act, which is publically available, now provides that no person may “register or use a domain name which incorporates […] ‘SARS’”. The provision carries a criminal penalty. Panels have categorically held that illegality can never confer rights or legitimate interests (section 2.13 of the WIPO Overview 3.0); while the UDRP operates on its own terms, the inclusion of the term “gov” in the Domain Name arguably would trigger this statutory provision.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s SARS mark was undoubtedly very well-known in the Respondent’s home territory of South Africa prior to the Domain Name’s registration. Even if the Respondent was not from South Africa, the inclusion of “gov” in the Domain Name removes any doubt the Respondent was aware of the Complainant and targeted it. The inclusion of “gov” in the Domain Name compounds the likelihood of confusion given the Complainant’s governmental role. It is thus highly likely that the Respondent had the Complainant’s trade mark in mind when registering the Domain Name, and that it sought to take advantage of the confusion that would be sure to follow from use of the Domain Name, in terms of paragraph 4(b)(iv) of the Policy.
Although the Domain Name has not been used, under the doctrine of passive holding non-use does not prevent a finding of bad faith (Section 3.3 the WIPO Overview 3.0). All of the factors relevant to passive holding listed in section 3.3 of the WIPO Overview 3.0 point to the appropriateness of its application here.
The Panel notes that the facts of this case are remarkably similar to those in another case decided under the Policy, also involving the trade mark of a well-known national taxation authority, a domain suffixed with “gov” and passive holding of the domain (The Commissioners for HM Revenue and Customs v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Affin Affin, Affin Connect, WIPO Case No. D2019-1371). That Panel had no difficulty finding bad faith use and registration.
Registration and use of the Domain Name was specifically prohibited under South African law at the time of registration, which applies to the Respondent as a South African resident. Illegality of a domain name is manifestly considered evidence of bad faith (Section 3.1.4 of the WIPO Overview 3.0).
Under Rule 14(b), the Panel may draw inferences from the Respondent’s default where a particular conclusion is prima facie obvious, where an explanation is called for but is not forthcoming, or where no other plausible conclusion is apparent (section 4.3 of the WIPO Overview 3.0); see also Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171.
The Complainant has satisfied 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 Name, <sars-gov.xyz> be transferred to the Complainant.
Date: September 16, 2020