WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The South African Revenue Service v. Super Privacy Service LTD c/o Dynadot / Jacob Harold

Case No. D2021-3972

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“U.S.”) / Jacob Harold, U.S.

2. The Domain Name and Registrar

The disputed domain name <sars-gov-za.com> (hereafter referred to as the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2021. On November 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 1, 2021, 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 December 2, 2021 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 December 7, 2021.

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 December 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default December 30, 2021.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 10, 2022. 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, the South African Revenue Service, is an administrative, autonomous organ of State, established in terms of 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 the South African government.

In exercising the abovementioned functions, the Complainant provides advisory services and assistance to taxpayers in South Africa through its branch offices, call centres as well as its website which can be found at “www.sars.gov.za”.

The Complainant owns various trademark registrations corresponding to or including the term “SARS”, including the following:

- SARS, South African word mark registered on August 29, 2014 under No. 2011/29912 in class 9;
- SARS, South African word mark registered on August 29, 2014 under No. 2011/29914 in class 35;
- SARS, South African word mark registered on August 29, 2014 under No. 2011/29915 in class 36.

The Disputed Domain Name has been registered on August 11, 2021 and appears to be inactive.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent is in no way affiliated with the Complainant and has not been authorized to use the Complainant’s mark as part of a domain name or otherwise. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the registration of the Disputed Domain Name has the effect that the Complainant is barred from registering or using the identical domain name which amounts to an unfair disruption of the Complainant’s business. The Complainant also claims that the Respondent registered and uses the Disputed Domain Name to intentionally attract internet users for commercial gain by creating confusion with the Complainant’s trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s SARS trademark have been registered in connection to the Complainant’s tax collecting and customs services.

The Disputed Domain Name incorporates the Complainant’s SARS word marks in their entirety, simply adding the terms “gov” and “za” and two hyphens between the three terms. Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Additionally, it is well established that the generic Top-Level Domain (“gTLD”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s SARS trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “Jacob Harold”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant.

Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s SARS trademark and adds the terms “gov” and “za”. The first one is the well-known abbreviation of the word “government”, and the second one is the two-letter abbreviation of the country South Africa. Both are descriptive and can obviously be linked to the Complainant as a South African governmental body. Moreover, the combination of the three terms correspond to the domain name <sars.gov.za> linked to the official website of the Complainant. Therefore, the Panel finds that the Disputed Domain Name carries a high risk of implied affiliation with the Complainant and cannot constitute fair use.

Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, including the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).

The Panel finds no signs of a legitimate noncommercial or fair use of the Disputed Domain Name, as it appears to be inactive.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. These include the following:

- the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

- by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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.

In the present case, the Panel finds that it is more likely than not that the Respondent was aware of the Complainant and its trademark rights when it registered the Disputed Domain Name:

- the Disputed Domain Name includes the Complainant’s trademark in its entirety;
- the second-level portion of the Disputed Domain Name is nearly identical to the domain name linked to the Complainant’s official website.

In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006‑0007).

The Panel observes that the Disputed Domain Name is inactive. The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by the respondent that would be legitimate and would not interfere with the complainant’s well-known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use (see section 3.3 of WIPO Overview 3.0).

In the present case, the Panel finds that the second-level portion of the Disputed Domain Name being nearly identical to the domain name linked to the Complainant’s official website makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent.

Moreover, the Complainant provides evidence showing that the Respondent’s contact information (e-mail address and telephone number) is linked to various other domain names, some of which include well-known third party brands (e.g. <hsbcdiscovery.com> or <bnpparibs.com>) and/or relate to fraudulent schemes and scams. In the Panel’s view, this is also an indication of the Respondent’s bad faith (see section 3.1.2 of the WIPO Overview 3.0, mentioning that a pattern of abuse has been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners).

By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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 Disputed Domain Name <sars-gov-za.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: January 24, 2022