4 September 2020
WIPO Case No. D2020-1791
South African Revenue Service v. 凌兴旺 (Xing Wang Ling) is a further example of a dispute over a domain name consisting of an acronym, regarded for all intents and purposes as a generic word.
Astute readers of our commentary will know that even an established trademark is not alone sufficient in a UDRP dispute. The key problem many Complainants run into is that having a trademark that is in the form of a generic word or phrase, an acronym or a common dictionary word will probably not give a monopoly or exclusive right over all uses that could be made of it, even if the complainant has been lucky enough to have it accepted as a trademark at all.
That was the undoing of the Complainant in this case, the South African Revenue Service, that was claiming the domain name <sars.app>.( As a sideline, we note that this in one of the steadily increasing number of domain name disputes where the domain name was issued under a “new” Top Level Domain, but by no means the only case we have seen in the .app family.).
The Complainant had no difficulty proving their registered trademarks that were identical to the domain name. Similarly, the Respondent did not rebut the prima facie case that it had no rights or legitimate interests in the passively-held domain name.
However, in attempting to prove bad faith use and registration of the domain name, the Complainant proceeded to make a number of bold assertions regarding the Respondent’s knowledge of the Complainant’s services, and assumed intention to disrupt its business.
It emerged, although it should have been obvious to everyone before the case started that, while the South African Revenue Service may have a well-established reputation for its SARS trademark in South Africa, SARS is also a very common acronym referring to Severe Acute Respiratory Syndrome (a type of coronavirus first appearing in the early 2000s). The Complainant failed to acknowledge this point.
As the Panel discussed, it is rather valiant to suggest that the Respondent (a Chinese resident) would be more interested in the South African Revenue Service than the SARS virus - particularly in 2020.
The Panel raised a further critical point - while the internet is a global medium and anyone may visit your website, not everyone is visiting your website. The Complainant provided no evidence that anyone outside its potential market of tax payers would be likely to frequent (or indeed know about) its services.
As such, the Panel found insufficient evidence proving that the Respondent was impinging on the Complainant’s trademark, or intending to interfere with its business, and, as domain name cases are won or lost on the evidence, or at least are supposed to, the complaint was denied on the absence of bad faith.
Take home message for complainants: if you are going to rely on a trademark like SARS, where it might mean anything out in the real world, do your best to produce the best evidence you can of its fame and recognition and how the public perceive it.
See also: several articles throughout Domain Times on acronyms used in domain names.