WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The South African Revenue Service v. Registration Private, Domains by Proxy, LLC / Charl du Preez
Case No. D2020-2269
1. The Parties
The Complainant is The South African Revenue Service, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Registration Private, Domains by Proxy, LLC, United States of America “United States”) / Charl du Preez, United States.
2. The Domain Name and Registrar
The disputed domain name <sars-efiling.com> (“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 August 28, 2020. On August 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 1, 2020, 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 September 4, 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 September 7, 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 September 7, 2020. On September 8, 2020, the Center received an email communication from the Respondent. In accordance with the Rules, paragraph 5, the due date for the Response was September 27, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on September 28, 2020, it would proceed to appoint the Administrative Panel.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 27, 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 a South African administrative body established in 1997 as the tax collecting agency for the South African government. The Complainant is commonly known by its abbreviation “SARS” and offers its services (including assistance to taxpayers) from its website at “www.sars.gov.za”. The Complainant also offers an e-filing service, enabling taxpayers to submit tax returns and declarations online. The Complainant offers this service from its website at “www.sarsefiling.co.za” (“Complainant’s Website”).
The Complainant is the owner of numerous South African trademark registrations for marks consisting of the letters “SARS” (the “SARS Mark”) including trade marks 2011/29912 and 2011/29913 for goods in class 9 and 16, both registered on August 29, 2014.
The Domain Name <sars-efiling.com> was registered on November 21, 2018. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”) that contained text about the Complainant’s e-filing service including “SARS eFiling is the free, online service offered by the South African Revenue Service (SARS), as a process for the submission of returns and declarations and other tax related services, for more information visit the eFiling Services page.” The Respondent’s Website then lists a number of additional e-filing services that are available. At the bottom of the Respondent’s Website the Respondent provides a disclaimer, reproduced in its entirety below:
“Legal Disclaimer: We hereby categorically declare that sars-efling.com has no affiliation whatsoever with the South African Revenue Service, or their SARS e-Filing platform. We are situated in a different country, aimed at a different target market, not in their jurisdiction whatsoever. We do not show their logo or trademarks anywhere on our site, and we do not belong to them or profit from them.
We legally own this domain, and saying that sars-efiling is the same as SARS e-Filing, is like saying ni-ke is the same as NIKE. Putting random letter together with a different hyphen between them at any other space, is MORE than enough to fully differentiate from the name. In the same way s-arsefiling, sa-rsefiling, sar-sefiling, sarsef-iling and all the rest are also NOT trademark infringements on SARS e-Filing or SARS. There is also a category of diseases called SARS, so their name does NOT HOLD ANY INTERNATIONAL PROTECTION OR TRADEMARK. Can their attorneys stop wasting South Africans’ already bankrupt taxpayers money on stupid absurd claims, and start focusing on real issues.”
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s SARS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the SARS Mark, having registered the SARS Mark in South Africa. The Domain Name is confusingly similar to the SARS Mark since it wholly incorporates the SARS Mark and adds the descriptive term “-efiling” and the “.com” generic Top-Level Domain (“gTLD”).
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that was entirely created for the purpose of associating itself with the Complainant, with the disclaimer failing to negate the association.
The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that leads people or businesses to believe the Respondent is connected to the Complainant, the Respondent is disrupting the Complainant’s business and taking unfair advantage of the reputation of the Complainant’s SARS Mark. Such conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not formally reply to the Complainant’s contentions. The Respondent sent an informal reply to the Center on September 8, 2020, extracted in full below.
“Hi, this domain does not in any way infringe on any trademark or laws and regulations. This website and domain is based in the United States, and is focused on filing cases of the SARS virus that broke out in 2009. The SARS virus is public domain, and a common name in the United States for this virus, and there is no trademark or copyright on this common language name for the virus. The domain is legally owned and registered in the United States, so if you have any evidence of this so called trademark proof in the local jurisdiction of the United States, please provide that as soon as possible so we can inspect such a false claim?”
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the SARS Mark, having registrations for the SARS Mark as a trade mark in South Africa. The Panel notes that, contrary to the implication contained in the Respondent’s submissions, the requirement under this element is for a complainant to have trade mark rights, not to have them in the jurisdiction of the respondent.
The Domain Name consists of the SARS Mark along with the additional descriptive word/abbreviations “-efiling”, which describes the Complainant’s electronic filing service. The addition of a term to a complainant’s mark is insufficient to prevent a finding of confusing similarity; see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. Moreover, an individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site in some way connected to the Complainant. Noting the manner in which the Domain Name has been used, this was the intention of the Respondent, which supports a finding of confusing similarity. The Panel finds that the Domain Name is confusingly similar to the Complainant’s SARS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. 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 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 mark at issue.”
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 Name or to seek the registration of any domain name incorporating the SARS Mark or a mark similar to the SARS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.
The Panel takes a more negative characterization of the Respondent’s Website than that set out in the Complaint (and in the Respondent’s email, which makes the submission, unsupported by actual evidence, that the Domain Name is used in connection with reporting cases of Severe Acute Respiratory Syndrome). The Respondent’s Website, located at a domain name that is almost identical to the domain name used for the Complainant’s Website, contains a description of the e-filing service offered by the Complainant and other material connected to the Complainant and its e-filing service. It does so in a manner that does not make clear (other than through the disclaimer discussed below) that the Respondent’s Website is describing services offered by the Complainant, rather than being services offered through the Respondent’s Website. Indeed, the Panel considers that the manner in which the Respondent’s Website is set out operates to actively impersonate the Complainant, such that an individual visiting the Respondent’s Website would think that the Respondent’s Website was the official website of the Complainant or at least connected to the Complainant.
Further down the page on the Respondent’s Website, the Respondent indicates what additional SARS e-filing online services are offered. Again, it sets out those services in a way that an individual visiting the Respondent’s Website would get the impression that the Respondent’s Website was an official website of the Complainant offering those additional e-filing services. As a result of the operation of the Respondent’s Website, it is highly likely that a visitor may well either seek that the Respondent provide e-filing services in competition with the Complainant or provide the Respondent with personal information such as tax returns and other information, under the misapprehension that it is the Complainant. To put it another way, the Respondent’s Website purports to provide taxation services in South Africa under the Complainant’s SARS Mark. Such conduct does not, on its face, amount to the use of the Domain Name for a bona fide offering of goods or services.
The Panel notes the presence of the disclaimer on the Respondent’s Website. Section 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that where a respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting good faith. However, where overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In the present case, the existence of the disclaimer on the Respondent’s Website does not show evidence of good faith or rights or legitimate interests. Not only is the disclaimer at the bottom of the Respondent’s Website, below a significant amount of text that purports to associate the Respondent with the Complainant, but the content of the disclaimer is almost non-sensical. The Respondent’s Website purports to offer taxation services for the South African Revenue Service and yet the disclaimer asserts that the Respondent’s services are aimed at a different target market, in a different jurisdiction to that of the Complainant. The disclaimer notes that there are other uses for SARS (such as a reference to the abbreviation for Severe Acute Respiratory Syndrome) but such a statement is irrelevant given that the use of the Domain Name is to pass the Respondent off as the Complainant. When a domain name is being used to directly target a complainant and its customers, a respondent does not acquire rights or legitimate interests by identifying a legitimate way that the domain name could be (but was not) used.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. The Panel is not persuaded by the Respondent’s submissions and finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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 a domain name in bad faith (Policy, paragraph 4(b)):
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name 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 Name; or
(ii) the Respondent has registered the Domain Name 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 Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, 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 was aware of the Complainant at the time the Domain Name was registered in 2018. The Domain Name has been used to create a website from which the Respondent either purports to be the Complainant or purports to operate e-filing services in direct competition with the Complainant. The content of the Respondent’s Website, including the disclaimer, makes it abundantly clear that the Domain Name was registered in awareness of and with the intention to target the Complainant. The registration of the Domain Name in awareness of the Complainant and its rights in the SARS Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to operate a website where it purports to pass both itself and its services off as being from or connected with the Complainant. While the Respondent’s business model is not clear (in that it is not clear whether it is actually providing those services or whether it seeks to mislead visitors for the purpose of receiving confidential information), the Panel finds, on the balance of probability, that it has intentionally attempted to attract, for commercial gain, Internet users to its website or location by creating a likelihood of confusion with the Complainant and the Complainant’s SARS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location. The Panel finds that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name 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 Name <sars-efiling.com> be transferred to the Complainant.
Date: October 29, 2020