WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

South African Revenue Services v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, Whois Foundation

Case No. D2020-1961

1. The Parties

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

The Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, Whois Foundation, Panama.

2. The Domain Name and Registrar

The disputed domain name <sarsefiling.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2020. On July 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 29, 2020, 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.

The Center verified that the 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 August 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2020. Due to an apparent issue with the notification, it appeared that the Center’s Notification email was not copied to the Respondent’s correct email address. On September 23, 2020, the Center granted the Respondent a five-day period to indicate whether it wishes to participate to this proceeding. The Respondent did not submit any response.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 2, 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.

The Panel issued Administrative Panel Procedural Order No. 1 on October 28, 2020, requesting further information and comments on the Complainant’s claims concerning common law trademark rights prior to its trademark registrations. After requesting and receiving extensions of time to file a reply, the Complainant submitted supplemental filings on November 6, 2020 and November 12, 2020, supplying additional information on this point as requested. The Respondent did not reply to the Procedural Order.

4. Factual Background

The Complainant is a South African statutory body established as an autonomous administrative organ of state by the South African Revenue Service Act 34 of 1997. It is commonly known by its abbreviation, SARS. Its principal functions are the collection of revenue and facilitating local and international trade on behalf of the South African government. The Complainant provides advisory and information services to individual and business taxpayers and employers in South Africa through its branch offices, call centers, and a website at “www.sars.gov.za.” These services include “e-filing” services for taxpayers to file tax returns and declarations with the Complainant, request tax clearance certificates, perform value-added tax (VAT) vendor searches, and calculate customs payments. E-filing is a free service that is promoted and offered under the Complainant’s SARS E FILING figurative mark.

The Complainant holds the following registered South African trademarks:

The Complainant applied for registration of the SARS E FILING figurative mark on September 10, 2010 and the SARS mark in standard characters on November 22, 2011. (The multiple filings are in different trademark classes.) The Complainant’s marks appear on its website and are promoted through print and other media.

In its supplemental filing, the Complainant recounts that it officially launched a “SARS E-Filing” online portal in September 2003 with the domain name <sarsefiling.co.za>, created on July 9, 2003. This is supported by domain name registration details and a screenshot from the Internet Archive’s Wayback Machine. The Complainant furnishes data for each year from 2003 through 2020 showing the number of individual and corporate taxpayers using the portal to file tax returns. Nearly 275,000 persons filed returns through the portal in 2005, for example, the year when the Domain Name was created, and more than 48 million have done so in 2020. The Panel notes that archived screenshots of the portal in 2005 show that it prominently displayed the figurative mark featuring the words “SARS E FILING”, as do screenshots from 2004 and 2003.

According to the Registrar, the Domain Name was created on November 24, 2005. The registrant’s name is given as the phrase, “Domain may be for sale, check Afternic.com Domain Admin”, showing the registrant’s organization as “Whois Foundation”, with a postal address in Panama City, Panama. The Domain Name is associated with a parking site predominantly in the English language, a landing page advertising the Domain Name for sale and posting what are evidently pay-per-click (“PPC”) third-party advertising links for such services as tax filing and tax preparation. The Internet Archive’s Wayback Machine has screenshots of similar parking pages associated with the Domain Name dating from as long ago as 2006.

The Respondent did not reply to cease-and-desist communications from the Complainant’s counsel, when the Complainant became aware of the Domain Name in 2020. The Respondent also did not reply in this proceeding.

The Panel notes that the Respondent organization appears to be the same party that has appeared as the respondent in other UDRP proceedings, most commonly without submitting a response, such as Andrey Ternovskiy dba Chatroulette v. Domain May be For Sale, Check Afternic.com Domain Admin, Whois Foundation, WIPO Case No. D2018-2259. In 2016, however, counsel for “Whois Foundation” of Panama City, Panama filed a response identifying the registrant of the disputed domain name in that proceeding, <havellsindia.com>, as “a Panamanian company that acquires and holds generic and descriptive domain names in high volume”. Havells India Limited, QRG Enterprises Limited v. Whois Foundation, WIPO Case No. D2016-1775. That domain name was registered in February 2006, a few months after the creation of the Domain Name in the current proceeding. In each of these cases, it appears that the Respondent held the disputed domain names for years, parking them, as in this case, with PPC advertising links and an advertisement for sale.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name “is identical to the Complainant’s SARS E-FILING trade mark and also wholly incorporates the Complainant’s SARS trade mark” … “It is also submitted that SARS and SARS E- FILING trade marks have acquired a substantial reputation and qualifies as well-known trade marks as envisaged by Article 6bis of the Paris Convention for the Protection of Industrial Property.”

The Complainant denies that the Respondent has any association with the Complainant or permission to use its marks. The Complainant argues that the Respondent has no evident rights or legitimate interests in the Domain Name and infers bad faith in the registration and use of the Domain Name for third-party advertising and potential sale, when the “Respondent was likely aware of the Complainant’s rights in the SARS and SARS EFILING trade marks when the disputed domain name was registered.” The Complainant argues further that the registration of the Domain Name amounts to an unfair disruption of the Complainant’s business and precludes the Complainant from using a domain name identical to its mark.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant unquestionably holds registered SARS word marks and registered figurative marks in which the textual element “SARS E FILING” is prominent. These suffice for standing purposes; the Complainant’s common law claims are discussed further below in connection with the element of bad faith. The Domain Name incorporates the SARS marks in their entirety and is confusingly similar to the prominent textual elements of the SARS E FILING marks, eliminating the spaces that cannot be reproduced in the DNS address system. The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as in most cases, as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2.

The Panel concludes that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s marks in the Domain Name.

The Respondent has not claimed relevant trademark rights or advanced other relevant rights or legitimate interests in the Domain Name, and none are evident from a review of the record or the website associated with the Domain Name. Accordingly, the Panel concludes that the Complainant prevails on this element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

There is certainly evidence of such bad-faith use, and the Respondent has a history of similarly registering domain names based on distinctive trademarks and parking them on a landing page with PPC advertising and a notice of possible interest in selling the domain name. The domain name in Havells India Limited, QRG Enterprises Limited v. Whois Foundation, supra, was similarly parked, and the panel in that case, where the Respondent participated in the proceeding, concluded that the registration and use was in bad faith. The panel in Andrey Ternovskiy dba Chatroulette v. Domain May be For Sale, Check Afternic.com Domain Admin, Whois Foundation, supra, concluded in 2018 that the “Respondent has an established pattern of registering and using domain names based on third party marks and names in connection with linking portals for profit and has been found in at least five prior UDRP decisions to have registered and used domain names in bad faith.”

The Complainant’s difficulty in relying on its registered trademarks is that the Policy requires establishing the probability that the Respondent had the Complainant’s trademark(s) in contemplation when the Respondent registered the Domain Name: “evidence of the registration and use of a domain name in bad faith” (Policy, paragraph 4(b), emphasis added). The Complainant argued that the Respondent must have intended to attack the Complainant’s marks when the Respondent registered the Domain Name:

“As set out above, the Complainant has made extensive use of its SARS and SARS E FILING trade marks for many years. The Complainant’s earliest trademark registrations date back to 2010, while the Registrant only registered the domain name on 24 November 2005.”

On its face, that argument is problematic. The Complainant did not even apply for the first trademark registration until nearly five years after the Respondent registered the Domain Name. However, it is possible to establish common law protection in an unregistered mark in South Africa, as noted on the website of the South African trademark office, the Companies and Intellectual Properties Commission. At the Panel’s request, the Complainant has furnished additional information supporting its claim for common law protection, as outlined in WIPO Overview 3.0, section 1.3. The Panel finds that these facts establish the likelihood that the Complainant had protectible rights in SARS and SARS E FILING as distinctive marks by November 2005.

The string comprising both the Domain Name and the Complainant’s SARS E FILING mark is distinctive and not generic. By the time the Domain Name was registered in November 2005, the Complainant’s online
e-filing portal was branded and well-known, as described above in discussing the factual background, and it is probable that the Domain Name was registered in contemplation of the Complainant’s marks. In the fifteen years since then, the Domain Name has been used only to divert Internet users to third-party commercial sites and to advertise the Domain Name for sale. It is significant that the Respondent has a history of making such use of other domain names based on the trademarks of others and has not come forward in this proceeding to offer an alternative explanation for acquiring the Domain Name and using it for PPC advertising.

The Panel finds on this record that the Respondent registered and used the Domain Name in bad faith and that the Complainant prevails on the third element of the Complaint.

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 Domain Name, <sarsefiling.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: November 12, 2020