WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Serco Group Plc v. Administrator Dom, Muscari Holding Limited / Carolina Rodrigues
Case No. D2018-0185
1. The Parties
The Complainant is Serco Group Plc of Hampshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Administrator Dom, Muscari Holding Limited of Limassol, Cyprus / Carolina Rodrigues of Belize City, Belize.
2. The Domain Name and Registrar
The disputed domain name <sercojobs.com> is registered with EuroDNS S.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2018. On January 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2018, 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. On February 14, 2018, in response to a request for clarification by the Center, the Registrar provided the updated contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 19, 2018.
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 February 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2018.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 16, 2018. 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 services provider, mainly operating in transport, justice and immigration, health, defence and citizen services. The Complainant has submitted evidence that it is the owner of numerous trademark registrations for the trademark SERCO. Examples of such trademark registrations are:
- SERCO, European Union (“EU”) Trademark with registration number 000201798 and registration date August 19, 1999 for goods and services in class 35, 36, 37, 38, 39, 40, 41 and 42.
- SERCO, Australian Trademark with registration number 892338, registration date October 17, 2001 for goods and services in class 36, 38, 39 and 40.
- SERCO, United States (“US”) Trademark with registration number 2932258, registration date March 15, 2005 for goods and services in class 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45.
- SERCO, Canadian Trademark with registration number TMA675423, registration date October 23, 2006 for goods and services in class 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
The disputed domain name <sercojobs.com> was registered on December 7, 2009 and resolves to a pay-per-click (“PPC”) website, where the disputed domain name is for sale..
5. Parties’ Contentions
A. Complainant
The Complainant, Serco Group Plc, is a services provider company, mainly operating in transport, justice and immigration, health, defense, and citizen services. Initially founded in 1929 under the name RCA Services Limited, a United Kingdom division of Radio Corporation of America, the Complainant became SERCO in 1987. As early as 1988, the Complainant was listed on the London Stock Exchange, and over the years, the Complainant rapidly expanded to now become a multinational company. The Complainant is listed on the FTSE250 Index, consisting of the 101st to the 350th largest companies on the London Stock Exchange. The Complainant has used SERCO in trade since 1978 and acquired registered trademark rights since 1992. The Complainant’s official website “www.serco.com” was registered on December 8, 1994.
The Complainant currently operates internationally across four main geographical areas; United Kingdom and Europe, North America, Asia Pacific and the Middle East, and employs over 50,000 people. The Complainant delivers services to governments and others who serve the public or protect vital national interests. In 2016, the Complainant had a total revenue of GBP 3 billion, with over 500 contracts worldwide. The Complainant experienced its highest revenue in the United Kingdom, with a revenue of GBP 678.6 million.
The Complainant submits that the disputed domain name <sercojobs.com> is confusingly similar to the Complainant’s trademark SERCO as the disputed domain name incorporates the trademark in its entirety with the addition of the word “jobs”. A prefix or suffix, such as the word “jobs”, is not sufficient to establish that the disputed domain name is not identical or confusingly similar, but further reinforces an association with the Complainant.
The Complainant submits that the Respondent lacks rights and legitimate interests in the disputed domain name <sercojobs.com>. The Respondent has never been commonly known by the domain name and has neither registered the term SERCO as a trademark or acquired common law rights by way of widespread use through the years. Mere ownership of the disputed domain name is not sufficient to show that the Respondent is commonly known by the disputed domain name.
The disputed domain name resolves to several random websites, which at times corresponds to a PPC page, which displays hyperlinks related to jobs advertising in relation with the Complainant’s trademark SERCO. On the PPC page, the disputed domain name is offered for sale, with a link to a domain aftermarket website. In addition, the disputed domain name also redirects to third-party websites, such casino-related or pornographic websites. Given that SERCO has no dictionary meaning as it was created by the Complainant, using the first letters of the words, “service” and “corporation”, the PPC links are solely related to the Complainant’s brand and reputation. This does not constitute an offering of goods and services in good faith.
There is no evidence that the Respondent is making a noncommercial or fair use of the disputed domain name. The website’s activity demonstrates that the Respondent intends to benefit from the goodwill and reputation of the Complainant by redirecting Internet users to a PPC page or third party websites. The PPC page also shows that the Respondent is making a commercial gain out of the disputed domain name, either directly or indirectly via the advertising links displayed on the webpage. The Respondent, by using the disputed domain name, intends to freeride on the reputation of the Complainant’s SERCO trademark. Furthermore, the fact that disputed domain name is offered for sale to the general public, further reinforces the assumption that the Respondent tries to commercially gain from the disputed domain name.
The Complainant argues that the SERCO trademark has been active for many years and predates the registration of <sercojobs.com> by 25 years for the Complainant’s earliest trademark. The SERCO trademark has acquired recognition on both national and international level. Therefore, it is more likely than not that the Respondent knew of the Complainant’s goodwill and reputation at the time of the registration of the disputed domain name.
The Respondent uses the common word “jobs” which can be directly associated with the Complainant’s trademark SERCO. Internet users looking for jobs offers from the Complainant are most likely to be confused with the disputed domain name <sercojobs.com>. Internet users will think that the disputed domain name is associated with the Complainant’s mark.
The Complainant reiterates that the Respondent has intentionally attempted to attract Internet users to its website, by creating confusion among users as it incorporates the Complainant’s mark, even though the Respondent is neither affiliated nor endorsed by the Complainant. The Respondent also generates revenue depending on the number of Internet users who click on these advertising links and hyperlinks on the main PPC page. When the disputed domain name redirects to third-party websites, the Respondent is most likely to receive some kind of compensation or revenue if Internet users navigate on the website or buy items once they are redirected to those sites.
The WhoIs history of the disputed domain name indicates that the Respondent, Carolina Rodrigues, has been using different aliases such as Muscari Holding Limited, Damian Miller and Sinclare in order to frustrate administrative proceedings. The Respondent’s current email address, […]@bizmail.com is associated with a portfolio of about 7,000 domain names, 1,563 of those domain names also contain the email address […]@junkemail.me or Muscari Holding Limited. The Respondent’s aliases have been involved in a number of domain name disputes. Consequently, the Complainant avers that the Respondent has engaged in an abusive pattern of conduct by registering domain names containing various well-known trademarks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark SERCO. The disputed domain name <sercojobs.com> incorporates the trademark SERCO in its entirety. Furthermore, the disputed domain name contains the addition of the descriptive term “jobs”. The ability for a descriptive term, such as “jobs”, to clearly distinguish the disputed domain name from the trademark SERCO, is limited.
Having the above in mind, the Panel concludes that the disputed domain name <sercojobs.com> is confusingly similar to the Complainant’s trademark SERCO and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or
(iii) that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark SERCO in connection with the disputed domain name <sercojobs.com> which is confusingly similar to the Complainant’s trademark. There is no evidence in the case indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute.
The Respondent has not submitted any evidence indicating that it is the owner of any trademark rights or that it is commonly known by the disputed domain name <sercojobs.com>. Furthermore, there is no evidence in the case file indicating that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name <sercojobs.com>. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
It has been argued by the Complainant that the SERCO trademark was created by using the first letters of the words “service” and “corporation”, that the term has no dictionary meaning and that the term solely relates to the Complainant’s services. Furthermore, the Complainant maintains that the oldest SERCO trademark predates the registration of the disputed domain name by 25 years. From the submitted trademark certificates, it is clear that the Complainant registered the SERCO trademark at least eight years prior to the disputed domain name. Given the submitted evidence and the circumstances in the case, the Panel finds it unlikely to believe that the Respondent would not have had the Complainant’s business in mind when registering and using the disputed domain name <sercojobs.com> and concludes that the Respondent knew or should have known of the existence of the Complainant’s trademark.
The addition of the descriptive term “jobs” to the SERCO trademark in the disputed domain name indicates that the Respondent has attempted to take advantage of the possible confusion between the disputed domain name and the Complainant’s trademark. Internet users seeking information regarding employment with the Complainant are likely to be misled into believing that disputed domain name belongs to or is in some way associated with the Complainant. Internet users visiting the website, to which the disputed domain name resolves, are exposed to PPC advertisements and redirected to various commercial third party websites. In addition, the Respondent is offering the disputed domain name for sale.
Thus, based upon the submitted material, the Panel finds that the disputed domain name <sercojobs.com> has intentionally been registered and used in an attempt 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, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the case file that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain name <sercojobs.com> has been registered and is being used in bad faith.
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 <sercojobs.com> be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: March 21, 2018
