WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The South African Revenue Service v. FuYuHui

Case No. D2020-2984

1. The Parties

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

The Respondent is FuYuHui, China.

2. The Domain Name and Registrar

The disputed domain name <sarsza.com> is registered with Ourdomains Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2020. On November 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2020, 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 November 11, 2020 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 in English on November 12, 2020.

On November 11, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on November 12, 2020. The Respondent did not comment on the language of the proceeding.

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 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2020.

The Center appointed Jonathan Agmon as the sole panelist in this matter on January 21, 2021. 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, South African Revenue Service, is an administrative, autonomous organ of State, established under the South African Revenue Service Act 34 of 1997. The Complainant is also commonly known by the abbreviation of its name, being SARS. Its main functions are the collection of revenue and facilitating local and international trade on behalf of the South African government. The Complainant also provides advisory services and assistance to taxpayers in South Africa through its branch offices, call centres as well as its website at “www.sars.gov.za”. These services range from the provision of information, reports and statistics to guidance and assistance with the submission of tax returns. Further, the Complainant also offers a free e-filing service called “SARS E-FILING” which offers taxpayers much convenience by enabling them to submit tax returns and declarations, change personal information, request tax clearance certificates, do VAT vendor searches and calculate custom payments, online. The SARS E-FILING service is operated from a website at “www.sarsefiling.co.za” and is available for use by individual taxpayers, small or large businesses, employers and other organisations.

The Complainant owns numerous trademark registrations of the term SARS in South Africa, including but not limited to the following:

- SARS (Registration No. 2011/29912) registered on August 29, 2014;

- SARS (Registration No. 2011/29913) registered on August 29, 2014;

- SARS (Registration No. 2011/29914) registered on August 29, 2014;

- SARS (Registration No. 2011/29915) registered on August 29, 2014; and

- SARS (Registration No. 2011/29916) registered on August 29, 2014.

The disputed domain name <sarsza.com> was registered on October 22, 2020, and at the time the Complainant filed the Complaint, the disputed domain name resolved to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered SARS mark as the disputed domain name wholly incorporates the SARS mark with “za”, the acronym for South Africa, the country of which the Complainant operates the national revenue service, along with a generic Top-Level Domain (“gTLD”) “.com” that are insufficient to avoid confusing similarity.

The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain name.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith for commercial gain by creating a likelihood of confusion with the Complainant’s SARS mark and thereby disrupting the business of the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11 of the Rules provides that: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondent did not comment on the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) the disputed domain name consists of Latin letters, rather than Chinese characters;

(ii) the Complainant cannot understand the Chinese language;

(iii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and

(iii) the Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name <sarsza.com> wholly integrates the Complainant’s SARS mark in its entirety with the term “za” which stands for the South African ccTLD. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. In the present case, the addition of the term “za” does not obviate confusing similarity since the disputed domain name contains sufficiently recognizable aspects of the Complainant’s mark.

Further, it is well established that the addition of the gTLD “.com”, as a standard registration requirement, is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it owns trademark registrations long before the disputed domain name was registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

There is also no evidence on record showing that the Respondent is commonly known by the disputed domain name (see WIPO Overview 3.0, section 2.3). Moreover, at the time the Complainant filed the Complaint, the disputed domain name resolved to an inactive website, and at the time of this decision, the disputed domain name resolves to a page that has links to various pornography and online gambling platforms. Given the above, the use of the disputed domain name does not constitute a legitimate or bona fide use (see WIPO Overview 3.0, section 2.2).

Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned registration for the SARS mark since the year 2014. In view of the evidence filed by the Complainant, and the widespread use of the SARS mark, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name. Therefore, it is unlikely that the Respondent did not know of the Complainant’s mark prior to registration of the disputed domain name (see Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Furthermore, the disputed domain name incorporates the Complainant’s trademark in its entirety with the term “za”, which is also the South African ccTLD, and the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Given that the Complainant uses a domain name consisting of the mark SARS, i.e., <sars.gov.za> and <sarsefiling.gov.za>, unsuspecting Internet users may be confused when looking for the Complainant online. On the balance, the Panel finds such act by the Respondent amounts to intentionally confusing and/or misleading Internet users seeking or expecting the Complainant. Previous UDRP panels have ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Given the distinctive nature of the Complainant’s SARS mark, and given the evidence provided by the Complainant, the Panel is of the view that the Respondent’s passive holding of the disputed domain name to an inactive website constitutes bad faith and is indicative of the Respondent’s registration and use of the disputed domain name to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s SARS mark. Such use also disrupts the business of the Complainant.

Based on the particular circumstances of the present case and the distinctive nature of the SARS mark, and based on the evidence presented to the Panel, including the registration of the disputed domain name after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s marks, the Respondent’s use of the disputed domain name, and the fact that no Response was submitted by the Respondent, the Panel draws the inference that the disputed domain name was 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 <sarsza.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: January 27, 2021