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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Savills Plc v. Ralph Dempsey

Case No. D2016-0963

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 Ralph Dempsey of Amsterdam, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <savills-group.com> 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 May 13, 2016. On May 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 May 18, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 19, 2016.

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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 20, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was June 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2016.

The Center appointed Brigitte Joppich as the sole panelist in this matter on June 15, 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant was established in 1855 and is today a global real estate services provider listed on the London Stock Exchange with more than 600 offices worldwide. The Complainant operates numerous websites including "www.savills.com", "www.savills.us", and "www.savills.co.uk".

The Complainant owns numerous trademark registrations for SAVILLS, inter alia, European Union Trade Mark Registration No. 001593912 for SAVILLS, registered on October 9, 2001, for services in classes 35, 36, 37, and 42, and United States of America trademark Registration No. 3547038 for SAVILLS, registered on December 16, 2008, for services in classes 35, 36, 37, and 42 (hereinafter referred to as the "SAVILLS Marks").

The disputed domain name was registered on October 18, 2015, and has been used in connection with fraud emails, in which the Respondent used the SAVILLS Marks and the Complainant's logo and requested money from interested parties for property rentals the Respondent was not entitled or willing to provide. The disputed domain name does not resolve to an active website.

5. Parties' Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The disputed domain name wholly contains the Complainant's SAVILLS Marks, which are extremely well known, connected only to the Complainant's business, and subject to regular press reports, and is therefore confusingly similar to such marks.

(2) The Respondent has no rights or legitimate interests in the disputed domain name as the Complainant is not affiliated with, nor does it endorse, nor sponsor the Respondent's use of the disputed domain name, and as the Respondent has no trademarks for SAVILLS and is not commonly or legitimately known by or referred to as "Savills".

(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant states that it is inconceivable that the Respondent is not aware of the Complainant or its trademarks, given the global fame of the Complainant's brand. With regard to bad faith use, the Complainant states that the Respondent is using email addresses at the disputed domain name, posing as the Complainant and using the SAVILLS Marks, requesting money from interested parties for property rentals that, unknown to the victims, the Respondent was not entitled or willing to provide, i.e., rental fraud. The Complainant argues that by sending such emails the Respondent is rendering the false impression to recipients that the email accounts are operated by, authorized by and/or associated with the Complainant and thereby deceiving the recipients for purposes of financial gain.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; 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.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant's SAVILLS Marks and is confusingly similar to such marks. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of generic terms, such as "group".

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable 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; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panels that a complainant may make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent did not deny these assertions in any way and therefore failed to show any rights or legitimate interests in the disputed domain name.

Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. The Respondent used the disputed domain name in connection with fraud emails. Such use does not provide rights or legitimate interests under paragraph 4(c)(i) of the Policy.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed 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; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed 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 its website or location.

The Panel is satisfied that the registrant registered the disputed domain name with full knowledge of the Complainant and its rights in the SAVILLS Marks as it used the disputed domain name in connection with fraudulent activities clearly targeting the Complainant, including the use of the Complainant's corporate logo within the email signature used in emails sent from email addresses that reflect the disputed domain name.

As to bad faith use, the Panel finds that the disputed domain name was used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainant's trademark for financial gain by using the disputed domain name in connection with emails requesting money from interested parties for property rentals that, unknown to the victims, the Respondent was not entitled or willing to provide (see Savills Plc v. A[ ] M[ ], Savills Usa, Savills UK and William Jones, WIPO Case No. D2015-1202).

Therefore, the disputed domain name was registered and is being used in bad faith, and the Complainant has thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.

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 <savills-group.com> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Date: June 28, 2016

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