Taylor Wimpey Plc, Taylor Wimpey Holdings Limited v Demi Swinson,; Rendall Recruitment

WIPO Case No. D2024-0176

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. Demi Swinson,
Rendall Recruitment

Case No. D2024-0176

1. The Parties

The Complainants are Taylor Wimpey PLC and Taylor Wimpey Holdings Limited, United Kingdom (“UK”), represented by Marks and Clerk LLP, UK.

The Respondent is Demi Swinson, Rendall Recruitment, UK.

2. The Domain Names and Registrar

The disputed domain names <taylorwhimpy.com> and <taylorwimpeymidlands.com> (‘the Domain Names’) are registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2024. On January 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 17, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names 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 January 18, 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 January 23, 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 January 24, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 13, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 14, 2024.

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The Center appointed Dawn Osborne as the sole panelist in this matter on February 16, 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 first Complainant, Taylor Wimpey PLC, is one of the largest British based housebuilding companies; it is widespread and is well-known in the property sector.

listed on the London stock exchange and is a constituent of the FTSE 100 index. It has been trading under
the brand name “Taylor Wimpey” since it was founded in 2007, through the merger of George Wimpey and
Taylor Woodrow. The Complainant sells over 10,000 homes a year and has operations in the UK and Spain.

The Complainants’ group of companies operates a website from “ the homepage of which clearly displays the TAYLOR WIMPEY brand name. The Domain Name <taylorwimpey.com> is also owned by the Complainants and redirects to <taylorwimpey.co.uk>, which is also owned by the Complainants.

The Complainants have a large social media presence, with over 176,000 “followers” on Facebook, 38,400
“followers” on Twitter, and over 83,800 “followers” on Instagram.

The second Complainant, Taylor Wimpey Holdings Limited, is owned by the first Complainant, and is the owner of UK trade mark registration no. UK00905787271 for the TAYLOR WIMPEY word mark covering classes 19, 36, 37, 42, and 44 for buildings and related services. The trade mark was filed on March 26, 2007, and registered on January 31, 2008.

The Domain Names were registered on November 22, 2023, and point to commercial pay-per-click (“PPC”) links including those which compete with the Complainant’s business.

The Respondent appears to be connected with a recruitment agency related to the construction industry making it likely that she is aware of the Complainants and their rights, business, and services.

5. Parties’ Contentions

A. Complainant

The Complainants contends that they havehas satisfied each of the elements required under the Policy for a transfer of the Domain Names.

Notably, the Complainants contend that:

The Complainants have rights in and the public has become accustomed to seeing the Complainants’
TAYLOR WIMPEY trade mark as set out above.

The Domain Names were registered on November 22, 2023, and it is clear that the Complainants have earlier rights in the TAYLOR WIMPEY trade mark in accordance with the Rules (3)(b)(viii).

The Domain Names share a high degree of similarity to the TAYLOR WIMPEY trade mark for which the
Complainants have legitimate rights.

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With regard to the domain name <taylorwhimpy.com> the addition of the letter “h” and removal of the letter
“e” in that domain name constitutes a classic case of typosquatting, where the letter “h” does not change the
pronunciation of the domain name; the difference between that domain name and the Complainants’ trade
marks is so minor that it does not detract from the clear use of the distinctive TAYLOR WIMPEY mark. The
Domain Name is, therefore, confusingly similar to a trade mark in which the Complainant has rights.

With regard to the domain name <taylorwimpeymidlands.com>, the added term “midlands” is a commonly referred to geographical area of the UK and the addition of “midlands” to the distinctive TAYLOR WIMPEY brand name would mislead consumers to believe that the domain name <taylorwimpeymidlands.com> was simply a subsidiary of TAYLOR WIMPEY based in the Midlands, or a site dedicated to the Complainants’

house building activities in the Midlands area.

In light of this, the Complainants submit that the requirements of the first element are met.

The Complainants have found no evidence to suggest that the Respondent is commonly known by the Domain Names nor that they have trade mark applications or registrations for them, nor that they are using the domain names already in connection with a bona fide offering of goods or services. The Respondent has no rights or legitimate interest in the Domain Names.

The Domain Names are not comprised of generic words in common usage. The Complainants, and associated companies, are the only parties in the world using the combination of “taylor” and “wimpey”.

Bearing in mind the recognition of the TAYLOR WIMPEY brand and the use of this trade mark since 2007, there is no realistic reason for the registration or use of the Domain Names other than to take advantage of the Complainants’ rights.

The closeness of the Domain Names to the Complainants’ TAYLOR WIMPEY trade mark creates the false impression that the Domain Names are owned by or affiliated with the Complainants, when this is not the case. In relation to the domain name <taylorwimpeymidlands.com>, it should be noted that according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1, certain geographical terms by their nature tend to suggest the sponsorship or endorsement by the trade mark owner, which is an indication that there is no fair use.

The Complainants have not authorized the use or registration of the Domain Names by the Respondent and there is no fair use.

The Domain Names are not being used in relation to a bona fide offering of goods and services, and the Respondent is not making legitimate or fair use of the Domain Names. The Domain Names point to PPC sites which advertise third party websites that are in the same industry and are direct competitors of the

Complainants, being residential real estate developers. The use of the Domain Names to generate revenue by PPC links does not constitute a bona fide use of the Domain Names, especially where the links are to competitors of the Complainants. The links are to the websites for property developers and so it is clear that the links compete with or capitalize on the reputation and goodwill of the Complainants’ mark or otherwise mislead Internet users. There is no evidence that the Respondent has taken steps to suppress PPC advertising related to the Complainants’ trade mark (such as through “negative keywords”) or taken any other mitigating steps against inference of targeting the Complainants.

According to Companies House, the Respondent is a Director of Rendall Recruitment Group and is not named ‘taylorwhimpy’ or ‘taylorwimpeymidlands’ and does not have any obvious legitimate connections with these names. The Complainants confirm that they were not working with the Respondent on recruitment at the time of registration of the Domain Names or at any time since.

The Complainants submit that they have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and, therefore, the burden of proof should shift to the Respondent to produce the relevant evidence that it does have rights or legitimate interest in the Domain Names.

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The Complainants submit that the Domain Names were registered and are being used in bad faith for the following reasons:

1. Typosquatting - The domain name <taylorwhimpy.com>is a classic typosquatting domain name with the letter ‘h’ added after the “w” in “wimpey” and the letter “e” being removed. This misspelling does not alter the pronunciation of the name “wimpey”. Internet users could easily mistake the spelling of the

Complainants’ trade mark believing “wimpey” to be spelt “whimpy” and be directed to the Respondent’s website instead of the Complainants’. This mistake could also occur if Internet users use voice-controlled digital assistants like Siri to take them to the website of TAYLOR WIMPEY. The misspelling could also go unnoticed if an email is received from the domain name, owing to the fact that “whimpy” is phonetically identical. The Complainants are, therefore, legitimately concerned that the domain name <taylorwhimpy.com> could be used for a phishing scam.

2. Geographical suffix –The domain name <taylorwimpeymidlands.com> consists of the Complainants’ mark to buy or invest in property in specific geographical areas. Internet users could, therefore, be directed to the website of the Respondent believing it to be the website of a subsidiary of the Complainants operating in their geographical area of interest. Further, the addition of the geographical area to the mark TAYLOR WIMPEY in the domain name could lead Internet users to believe that an email received from that domain name was from a subsidiary of the Complainants operating in the Midlands. The Complainants are, therefore, legitimately concerned that the domain dame <taylorwimpeymidlands.com> could be used for a phishing scam.
plus a geographical term. The addition of a geographical suffix to the domain name does not detract from
the clear use of the Complainants’ mark. A geographical suffix is particularly misleading in the

3. Respondent’s Knowledge - Given that “taylor wimpey” is not a dictionary term and the combination of reason other than to target the Complainants and their business. The Respondent is a director of a recruitment company which appears to specialise in construction recruitment, which is adjacent and complementary to the Complainants’ field of housebuilding. This further increases the probability that the Respondent was aware of the Complainants’ well-known brand TAYLOR WIMPEY at the time of registering the Domain Names and sought to take advantage of the brand’s reputation.

these two elements is recognized as indicating the Complainants’ brand, it is unrealistic to assume that the

4. PPC links - The use of the Domain Names for PPC sites with links to competitors of the Complainants and
others in the property field, is a clear indication that the Respondent’s use of the Domain Names is in bad
faith. The use of a highly similar typo variation of the Complainants’ TAYLOR WIMPEY trade mark and the
misleading addition of the geographical area the ‘midlands’, in each of the Domain Names respectively will
drive traffic to the websites of the Respondent who could generate revenue from the PPC on the websites.

5. Email set up – The Domain Names are configured with SPF records and are, therefore, capable of email Complainants’ mark with a geographical suffix, anyone receiving an email originating from either Domain Names could easily be misled into believing that it was sent by the Complainants. There is a real concern that the Domain Names could be used for a phishing scam; people receiving job offers or job advertisements from either of the Domain Names could be led to believe that they are being offered or advertised a job by the Complainants. The Complainants submit that this is further evidence that the Respondent is trying to ride off the reputation of the Complainants as house builders in the UK and suggest an association with the Complainants for financial gain.
communication. Given the fact that the domain name <taylorwhimpy.com> is a minor misspelling of the

The use and registration of the Domain Names is an intentional attempt to attract, for commercial gain, Internet users to the websites and/or other online locations through PPC advertisements, by creating a likelihood of confusion with the Complainants’ TAYLOR WIMPEY trade mark as to the source, sponsorship,

affiliation or endorsement of the websites or of a product or service on the websites. It also cannot be ruled

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out that the Domain Names were registered with the purpose of preventing the Complainants from reflecting their mark in a corresponding domain name, particularly for the domain name <taylorwimpeymidlands.com>, or primarily for the purpose of disrupting the business of a competitor.

B. Respondent

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

6. Discussion and Findings

Preliminary Issue: Multiple Complainants

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent,
panels look at whether (i) the complainants have a specific common grievance against the respondent, or
the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and
(ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview 3.0, 4.11.1

The first Complainant trades using the TAYLOR WIMPEY mark and the second Complainant owns the UK registration for the TAYLOR WIMPEY mark. As such, the Panel finds that both companies have a specific common grievance against the Respondent who has engaged in common conduct that has affected them in

a similar fashion, and it would be equitable and procedurally efficient to permit the consolidation.

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 Complainants’ 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 Complainants have shown rights in respect of a trade mark 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 domain name <taylorwimpeymidlands.com> which 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 “midlands”, 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 taylorwimpeymidlands.com and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the mark is recognizable within the domain name <taylorwhimpy.com>, which is phonetically identical to the Complainant’s mark and can be considered an intentional misspelling of the Complainants TAYLOR WIMPEY trade mark, by merely adding an extra letter “h” and removing a letter “e”. Accordingly, that domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7 and section 1.9.

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.

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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 domain names 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 names (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 Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Names such as those enumerated in the Policy or otherwise.

The composition of the Domain Names and their similarity to the Complainants’ TAYLOR WIMPEY trade
mark creates the false impression that the Domain Names are owned by or are affiliated with the
Complainants, when this is not the case. The Complainants have not authorized the use or registration of
this Domain Names by the Respondent and the Respondent is not commonly known by the Domain Names.
WIPO Overview 3.0, section 2.5.1.

The Domain Names have been used to resolve to a website with PPC links which does not constitute a bona fide use. WIPO Overview 3.0, section 2.9. The domain name <taylorwhimpy.com> also appears to be a typosquatting registration, which is also an indication of a lack of rights or legitimate interests.

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.

In the present case, the Panel notes that the Respondent has used the Domain Names to resolve to websites with competing PPC links and works in recruitment in the construction industry.

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.

Panels have held that the use of domain names for illegal activity, here impersonation/passing off through the use of typosquatting in relation to the domain name <taylorwhimpy.com> and bait and switch by means of competing pay-per-click links in relation to both Domain Names constitutes bad faith. The fact that the Respondent works in recruitment in the construction industry makes it more likely than not that she is aware of the Complainant, its business, services, and rights. Ultimately, the Domain Names’ construction reinforces the awareness of and intention to target the Complainant, given that one is an intentional misspelling and the other incorporates the trademark in its entirety along with a geographic region in the Complainant’s home country. Lastly, as regards the use of the Domain Names, the use of confusingly similar domain names to host competing PPC links for the Respondent’s commercial gain is per se evidence of registration and bad faith pursuant to paragraph 4(b(iv) of the Policy, the Respondent having had intentionally attempt to attract Internet users to its websites through the use of the Complainant’s trademarks for the Respondent’s commercial gain. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Domain Names constitutes bad faith under the Policy.

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The Panel finds that the Complainants have 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 Names <taylorwhimpy.com> and <taylorwimpeymidlands.com> be transferred to the

Complainant.

/Dawn Osborne/
Dawn Osborne
Sole Panelist
Date: March 1, 2024