Taylor Wimpey Holdings Limited, Taylor Wimpey PLC v James Cossington

WIPO Case No. D2023-5362

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Taylor Wimpey Holdings Limited, Taylor Wimpey PLC v. James Cossington,
taylorwimpey

Case No. D2023-5362

1. The Parties

The Complainants are Taylor Wimpey Holdings Limited, Taylor Wimpey PLC, United Kingdom, represented by Demys Limited, United Kingdom.

The Respondent is James Cossington, taylorwimpey, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <taylorwimpeyukltd.com> (the “Domain Name”) is registered with Squarespace

Domains II LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27,
2023. On December 27, 2023, the Center transmitted by email to the Registrar a request for registrar
verif ication in connection with the Domain Name. On December 28, 2023, the Registrar transmitted by email
to the Center its verification response disclosing the registrant and contact information for the Domain Name
which dif fered f rom the named Respondent (Contact Privacy Inc. Customer 7151571251) and contact
information in the Complaint. The Center sent an email communication to the Complainants on January 4,
2024, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on

January 4, 2024.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on January 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2024. The Respondent did not submit any response.

Accordingly, the Center notif ied the Respondent’s default on February 1, 2024.

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The Center appointed Ian Lowe as the sole panelist in this matter on February 15, 2024. The Panel f inds 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 Complaint has been filed by multiple Complainants. For the reasons set out below, the Panel accepts that the respective complaints of the Complainants may be consolidated against the Respondent.

4. Factual Background

The Complainants are two entities within a group of related companies. The First Complainant Taylor Wimpey Holdings Limited was incorporated in the United Kingdom in 1945 and holds assets such as intellectual property related registrations on behalf of the group companies. The Second Complainant Taylor

Wimpey PLC is the group’s main trading entity and trades under the name TAYLOR WIMPEY. It is one of the largest British based house building companies and its shares are listed on the London Stock Exchange. The First and Second Complainants are together referred to as the “Complainant”. The Complainant group had revenues of over GBP 4.4 billion in 2022 and an operating income of over GBP 907 million.

The Complainant is the proprietor of a number of registered trademarks worldwide, including European Union trademark number 5787271 TAYLOR WIMPEY registered on January 31, 2008, and the comparable United Kingdom trademark number 905787271, created following the United Kingdom’s exit f rom the

European Union, and also treated as registered on January 31, 2008.

The Domain Name was registered on November 15, 2023. It does not resolve to an active website.
However, the Domain Name’s zone f ile is conf igured with Mail Exchanger records (also known as MX
records) such that the Domain Name is configured to send and receive email. In November 2023, an email
using the Domain Name was sent f rom the email address ***@taylorwimpeyukltd.com to one of the
Complainant’s suppliers of computer equipment, purporting to be f rom a Support Manager at one of the

Complainant group companies - Taylor Wimpey UK Limited.

5. Parties’ Contentions
A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its TAYLOR WIMPEY trademark and to the Complainant’s trading name, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings
6.1 Consolidation

As noted above, the Complaint is f iled by multiple complainants. Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sets out the basis on which panels have accepted that a complaint filed by multiple complainants may be brought against a single respondent. It notes that “panels look at whether: (i) the complainants have a specif ic common grievance against the respondent, or the respondent has engaged in common conduct that has af fected the

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complainants in a similar fashion, and (ii) it would be equitable and procedurally ef f icient to permit the
consolidation.”

In this case, the Panel is satisfied that the Complainants have a specif ic common grievance against the Respondent in that the Respondent has targeted both the Complainant’s rights and that it would be equitable and procedurally ef f icient to permit the consolidation.

6.2 Substantive issues

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the
Complainant must prove that:

(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.

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has uncontested rights in the trademark TAYLOR WIMPEY (the “Mark”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through use by the Complainant of the Mark over a number of years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name is identical to the Complainant’s mark save for the addition of the geographic term “uk” and the abbreviation for “limited”, namely “ltd”. In the Panel’s view, these additions do not prevent a f inding of confusing similarity between the Domain Name and the Complainant’s mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights.

The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. Accordingly, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shif ts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Panel considers that the Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The use of the Domain Name for an email address intended to deceive recipients into believing that emails were sent f rom a legitimate account of the Complainant could not possibly demonstrate rights or legitimate interests. The Respondent has chosen not to respond to the Complaint and has accordingly failed to counter the prima facie case

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established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have

any rights or legitimate interests in respect of the Domain Name.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Given the nature of the Domain Name and its use for f raudulent emails purporting to originate with an employee of the Complainant group, the Panel considers it inconceivable that the Respondent did not have the Complainant and its rights in the Mark in mind when it registered the Domain Name. In the Panel’s view, the f raudulent email has all the hallmarks of what is known as a Business Email Compromise scam, and it is very likely that the Respondent has sent such emails with a view to phishing for personal and/or f inancial information or for other illegitimate activities.

Panels have held that the use of a domain name for illegal activity such as phishing, distributing malware,
unauthorized account access/hacking or impersonation/passing of f constitutes bad faith.
WIPO Overview 3.0, section 3.4.

Having reviewed the evidence, the Panel finds that the registration and subsequent use of the Domain Name to send fraudulent emails of the kind described above amounts to paradigm bad faith registration and use for the purposes of paragraph 4(a) of the Policy.

The Panel f inds that the Complainant has established the third element of the Policy.

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 <taylorwimpeyukltd.com> be transferred to the Complainant.

/Ian Lowe/
Ian Lowe
Sole Panelist
Date: February 29, 2024