Taylor Wimpey Plc, and Taylor Wimpey Holdings Limited v jiangli

WIPO Case No. D2024-1669

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Taylor Wimpey Plc, and Taylor Wimpey Holdings Limited v. jiangli

Case No. D2024-1669

1. The Parties

The Complainants are Taylor Wimpey Plc (the “first Complainant”), and Taylor Wimpey Holdings Limited (the
“second Complainant”), United Kingdom (referred both together indistinctively as the “Complainant”),

represented by Marks and Clerk LLP, United Kingdom.

The Respondent is jiangli, China.

2. The Domain Name and Registrar

The disputed domain name <taylorwimpeypensions.com> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2024.
On April 22, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 23, 2024, 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 (Redacted for Privacy), and contact information in the Complaint.
The Center sent an email communication to the Complainant on April 24, 2024, 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 on April 26, 2024.

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 May 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2024.

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The Center appointed Nayiri Boghossian as the sole panelist in this matter on June 17, 2024. 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 British based housebuilding company. The Complainant owns many trademark registrations for TAYLOR WIMPEY such as United Kingdom Trademark Registration No. UK00905787271, registered on January 31, 2008.

The disputed domain name was registered on February 20, 2024, and resolves to a parking page with

Pay-Per-Click (“PPC”) links for retirement and pension plans.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name comprises the Complainant’s trademark in its entirety. The term “pensions” is descriptive and misleading. The generic Top-Level Domain (“gTLD”) “.com” can be ignored.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name as there is no evidence to that effect. The Respondent is not licensed by the Complainant to use its trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is used in connection with PPC links to capitalize on the reputation and goodwill of the Complainant. The linked businesses appear to be competitors of Hymans Robertson, the pension consultancy firm that runs the Complainant’s pension scheme.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The use of the term “pensions” is misleading. The Respondent must have had knowledge of the Complainant’s trademark as it is not a dictionary term. The disputed domain name resolves to a parking page containing PPC links for third party pension and investment advice, which is a clear indication of bad faith. The Respondent must be deriving revenue from such links by creating a likelihood of confusion with the Complainant’s trademarks. The disputed domain name is configured with MX records and SPF records, which can be used for phishing.

B. Respondent

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

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6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, pensions, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first 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 often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts 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.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

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In the present case, the Panel notes that the Respondent must have been aware of the Complainant’s trademark as the disputed domain name was registered 16 years after the registration of the Complainant’s trademark, reproducing the Complainant’s trademark in its entirety. In addition, the PPC links relate to pension plans, which is something the Complainant offers to his employees.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel finds that by using the disputed domain name for websites with PPC links, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online location by creating a likelihood of confusion with the Complainant’s mark. Such use constitutes bad faith pursuant to

paragraph 4(b)(iv) of the Policy. Also, the fact that the disputed domain name is configured with MX records
carries a risk that the disputed domain name might be used for phishing, particularly noting the similarities
with the domain name <taylorwimpeypensions.co.uk>, which is used by the Complainant’s Pensions

Administrator.

The Panel finds 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 disputed domain name, <taylorwimpeypensions.com> be transferred to the second

Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: June 24, 2024