WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Savills Plc v. Jason Fudge, Merranti
Case No. DCO2015-0039
1. The Parties
The Complainant is Savills Plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Lane IP Limited, United Kingdom.
The Respondent is Jason Fudge, Merranti of Lingfield, Surrey, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <savills.co> (the “Disputed Domain Name”) is registered with Webfusion Ltd trading as 123-reg (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2015. On December 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 7, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 14, 2015.
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 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2016.
The Center appointed Michael D. Cover as the sole panelist in this matter on January 12, 2016. 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.
On January 28, 2016, the Center notified the parties that the Center had granted an extension until February 1, 2016 for the Panel to render its Decision.
4. Factual Background
The Disputed Domain Name was registered on July 20, 2010.
The Complainant operates a worldwide property services business under the trademark SAVILLS and has annual revenues in excess of GBP 1 billion.
The Complainant is the proprietor of (European) Community, United Kingdom and United States of America (“United States”) and other trademark registrations for the trademark SAVILLS in a range of Classes, covering inter alia real estate services. The first registration dates back to October 9, 2001.
The Complainant operates and office in, inter alia, Colombia.
The Complainant’s representative contacted the Respondent in September 2015 and the response was received from Jason Fudge, who provided certain further contact information, including an address of Merranti Group in London, United Kingdom and another address in East Grinstead, United Kingdom.
5. Parties’ Contentions
The Complainant submits that its trademark SAVILLS is well-known and that any use of that trademark by an unauthorized third party will lead to confusion. The Complainant attaches to the Complaint as Annex 10 a range of articles which, it says demonstrates that its trademark is well-known and that its activities under its trademark are regularly reported. It submits that the Disputed Domain Name is identical or confusingly similar to its trademark in which the Complainant has rights.
The Complainant states that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant points out that the Respondent is not the proprietor of any trademark for SAVILLS and that no evidence has been uncovered that the Respondent is known as or referred to as SAVILLS. The Complainant states that it is not affiliated with the Respondent and has not endorsed or sponsored the Respondent’s use of the Disputed Domain Name. The Complainant also states that the Complainant and the Respondent operate in the same or similar fields and communicated over business undertakings in 2012 and 2013 and that the Respondent offered the Disputed Domain Name to the Complainant potentially for a consideration.
The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith. In particular, it submits that the Respondent is using the Disputed Domain Name to promote the Respondent’s business development services, including in the areas of property (real estate). It says that the Respondent is thereby using the Disputed Domain Name illegitimately for commercial gain and that the Respondent mentions the Complainant on its website at “www.merranti.com”.
The Complainant also says that the Respondent is seeking to profit from the sale of the Disputed Domain Name and that the Disputed Domain Name is advertised for sale on at least two domain name sales platforms, Afternic and Sedo for USD 12,500 and GBP 5,000 respectively. The Complainant also notes that in September 2015 the Respondent communicated to the Complainant’s representative that the Disputed Domain Name was purchased for use in an adult entertainment project and the Complainant is concerned about the resulting tarnishing of the trademark SAVILLS and the business conducted under that trademark.
The Complainant accordingly requests that the Panel order that the Disputed Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant is required to demonstrate, on the balance of probabilities, that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In this instance, the Disputed Domain Name is identical to the Complainant’s well-known trademark SAVILLS. The Complainant has registered rights in its trademark SAVILLS and it is also a reasonable inference that this trademark is well-known, including in Colombia, where the Complainant has a branch. It is a reasonable inference that business carried out under the SAVILLS trademark in a number of jurisdictions has been substantial.
The Disputed Domain Name incorporates the Complainant’s trademark SAVILLS in its entirety. The Panel finds that the addition of the non-distinctive country code Top-Level Domain (“ccTLD”) “.co”, which is a generic element, does not alter the fact that the Complainant’s trademark is the dominant element of the Disputed Domain Name.
The Panel therefore finds that the first of the three elements of the Policy is proved.
B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has established that the Respondent has not been authorized or licensed to use the Complainant’s trademark in the Disputed Domain Name.
There is no evidence to suggest that the Respondent has, before notice of the dispute, made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. There is also no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Name or that the Respondent has been making legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain misleadingly to divert consumers or tarnish the Complainant’s trademark. The evidence in fact points in the other direction, with the Disputed Domain Name being used for a website relating to a business which purportedly competes with that of the Complainant.
C. Registered and Used in Bad Faith
The Panel also accepts that the Respondent has registered and is using the Disputed Domain Name in bad faith. It is a reasonable inference that the Complainant’s trademark is well-known in a number of jurisdictions and that this was known to the Respondent when registering the Disputed Domain Name. The Panel finds that, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship or affiliation of that website, which provides services that compete with those provided under the Complainant’s trademark.
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 <savills.co> be transferred to the Complainant.
Michael D. Cover
Date: January 30, 2016