WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reg Vardy Plc v. David Wilkinson
Case No. D2001-0593
1. The Parties
The Complainant is Reg Vardy Plc of Houghton House, Wessington Way, Sunderland SR5 3RJ, United Kingdom. The Complainant is represented by Messrs Eversheds of Eversheds House, 70 Great Bridgewater Street, Manchester MI 5ES. The Respondent who is an individual is a Mr. David Wilkinson of 105 Percy Street South, Blyth, Northumberland NE24 3DE, United Kingdom. The Respondent is not represented and has not filed a formal Response.
2. The Domain Names and Registrar
The dispute concerns three domain names as follows:
;
;
;
The Registrar of the domain names is R, Domain Registrar 575 Eighth Avenue, 11th Floor, New York, NY 10018, USA.
3. Procedural History
The Complaint together with the necessary fee was received by the WIPO Arbitration and Mediation Center on March 24, 2001. An acknowledgement of receipt was sent to the Complainant by e-mail on April 25, 2001. Notification of the Complaint was given by e-mail to the Registrar on April 25, 2001. Verification was given by the Registrar, R, on April 25, 2001, confirming that the Respondent, David Wilkinson, was the Registrant for the domain name , but that an organisation called NameD was the Registrant for and .
The Registrar subsequently confirmed that NameD was a division of R and that it offered one year licences for domain names selected by users of NameD's services and that David Wilkinson, the Respondent, was named as the NameD user. The Registrar also confirmed that in such circumstances NameD would either cancel the domain name registrations or transfer the domain name registrations to the Complainant's control as required under the Policy. The fact that the Respondent is not formally the Registrant of and does not go to the substantive issues before the Panel. The Panel therefore proceeds on the basis that NameD will abide by the decision of the Panel in relation to the dispute between the Complainant and the Respondent.
Notification of the Complaint was given to the Respondent on May 16, 2001, by e-mail as well as to NameD. No response was received from the Respondent and accordingly notification of default was given on June 6, 2001. No response was received and on June 19, 2001, an Administrative Panel was appointed consisting of a sole Panelist, Mr. Clive Duncan Thorne. The Panel is required to forward its Decision by July 3, 2001.
The Panel has subsequently received a copy of an e-mail from the Respondent dated June 20 indicating:
"With all due respect to your organisation, I am afraid I will not take part in the up coming dispute case...
... There is no point in my self continuing any discussion through your organisation as Reg Vardy seem to treat you (sic) organisation with the same contempt as they did my customer complaint."
4. Factual background
The Complainant adduces evidence that it is the third largest motor retailer in the United Kingdom. It carries on business in the United Kingdom and its principal place of business is Sunderland. It has been trading under the name REG VARDY since 1946 and apparently now operates 81 car dealerships throughout England and Scotland. It sells over 150,000 vehicles per year.
In the last financial year the Complainant's turnover was �3 billion, during which period of time it spent around �1.5 million advertising and promoting the name REG VARDY. The Complainant has its own website at . Copies of extracts from the website are set out at tab 3 to the Complaint. This website was launched at the beginning of 2001 and is still being developed. It is however apparently attracting a substantial amount of hits with an average of 30,000 page impressions per week. Since its launch the Complainant has sold over 5,000 vehicles through direct leads from the site and generated around �2 million worth of business. The Complainant estimates that its annual turnover from direct leads from the website is currently anticipated to reach around �10 million and this may increase significantly.
The Complainant is the registered owner of United Kingdom trademark "REG VARDY" (registration number 2116104) in classes 36, 37 and 39.
According to the Complainant the history of this matter is that the Respondent is a dissatisfied customer. On March 5, 2000, the Respondent lodged a Complaint with the Complainant's Customer Services Department regarding a van which he was purchasing. The Respondent collected the van but it was repossessed when the Respondent's application for finance was rejected. Consequently no payment has been made by the Respondent for the vehicle. The Respondent nevertheless claimed that he had incurred considerable expense in modifying his premises to accommodate the vehicle and he was seeking reimbursement for a sum of �3,000. Even though the Respondent could not produce invoices to substantiate his claim or any other documentary evidence, the Complainant offered to pay the Respondent �3,000 for the modifications. This was apparently not accepted by the Respondent and it appears that the Respondent remained dissatisfied.
Subsequently in around June 2000, the Complainant discovered that on or about March 9, 2000, the Respondent had registered the disputed domain names , and . Since then the Complainant has attempted to negotiate with the Respondent to resolve the dispute and seek the transfer of the disputed domain names.
Subsequently the Respondent has set up websites at the addresses which purport to be the "Customer Driven Complaints Site". The three website addresses all access the same site. Copies of pages from the websites are set out at tab 5 to the Complaint. It can be seen that the websites describe the fact that they have been created by "an unhappy REG VARDY customer" and make reference to phrases such as "shit-service at ", "" and a "slag your manager off" section.
There is also evidence (set out at tab 6 to the Complaint) that the Respondent is using the Complainant's mark as metatags for the sites. A list of these is set out at tab 6. The Complainant accepts the issue of the Respondent's use of the Complainant's mark as metatags is outside the scope of the Complaint. Nevertheless the Complainant regards the use as further evidence that the Respondent is deliberately attempting to attract traffic seeking a Complainant to his sites as a consequence of direct traffic away from the Complainant's website.
The Complainant exhibits correspondence with the Respondent beginning (tab 7) with a demand letter from Messrs. Eversheds sent to the Respondent on April 6, 2001 (although dated in error June 27, 2000). That letter sought a transfer of the disputed domain names which was rejected in no uncertain terms by the Respondent in an e-mail dated April 14, 2001.
For completeness the Panel also refers to the above-mentioned e-mail from the Respondent dated June 20, 2001, referring to the Complaint that he has with the Complainant and in which he denies the offer of settlement made by the Complainant of �3,000. The repossession of the vehicle is described as untrue and he concludes that he has been treated with "contempt" by REG VARDY. The Panel is not concerned with the truth or otherwise of the customer complaint that the Respondent has with the Complainant and is also not concerned with the attempts currently made to resolve that Complaint. The customer complaint may however explain the action taken by the Respondent in registering the domain names in dispute. The Panel is required to decide the domain name dispute under the terms of the Uniform Domain Name Dispute Resolution Policy and proceeds to do so.
5. Parties� Contentions and Discussions
In order to succeed in its request for an Order to transfer the domain names the Complainant has to prove that each of the three elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are present.
These are as follows:-
(i) The Respondent�s 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 interest in respect of the domain name; and
(iii) The Respondent�s domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these in turn.
(i) The Respondents domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that the three domain names in dispute are identical to the Complainant's registered mark save for the use of the hyphens between "reg" and "vardy" in the domain name. It submits that the overall impression of the dominant part of the disputed domain name is identical to the Complainant's mark.
The Complainant goes on to submit that the Respondent's use of the disputed domain names will inevitably cause confusion to the public and specifically to those looking for information about the Complainant.
The Panel accepts these submissions. In particular, it considers that the use of the hyphen is insufficient to distinguish the Complainant's trademark "REG VARDY" and that almost inevitably members of the public are going to find the domain names confusingly similar to the Complainant's trademark.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant submits that the Respondent has no legitimate interest in the disputed domain names and has not been authorised by the Complainant to register and use the domain names in dispute.
In particular the Complainant relies upon paragraph 4(c)(i) of the UDRP and submits that there is no bona fide offering of goods of services and that there is no evidence that the Respondent is commonly known by the domain names or is making fair use of the domain names. The Complainant asserts that the Respondent is simply using the names to divert business intended for the Complainant and/or Internet users seeking the Complainant's site to his site.
The Panel accepts these submissions. The Respondent has had ample opportunity, for example, in response to the Eversheds letter of June 27, 2000 (sic) or by way of Response to assert reasons justifying legitimate interests in respect of the domain names. He has chosen not to do so. To the contrary the Respondent has made it apparent that it regards the registrations as a vindictive opportunity to "damage" the Complainant as a result of the customer dispute. In support of this view the Panel relies in particular upon the Respondent's e-mail of April 14, 2001, where the Respondent refers to exercising "renewed venom" and the contents of the Respondent's website where he states:
"This site has been put together by an unhappy REG VARDY customer...I decided that enough was enough and bought the domain name ."
In the Panel's view this is a case where the Respondent has intentionally registered the domain names because he is aware that he has "no rights or legitimate interests in respect of the domain name" and has done so so as to harm the Complainant.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the domain names.
(iii) The Respondent�s domain name has been registered and is being used in bad faith.
The Complainant asserts that the Respondent has intentionally attempted to attract Internet users to his websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website and services which the Respondent provides on its site. The Complainant relies on paragraph 4(b)(iv) of the UDRP.
As evidence of this the Complainant relies upon the Respondent's deliberate intention as evidenced by the use of the Complainant's mark on the Respondent's website (see, for example, tab 11 to the Complaint) and in the metatags referred to above.
The Complainant also relies upon paragraph 4(b)(iii) of the UDRP on the basis that the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant. The Complainant draws attention to the contents of the Respondent's website and also to the Respondents e-mail of April 14, 2001, in which the prime motive of the Respondent in registering the domain names was to create bad publicity for the Complainant. In that e-mail the Respondent states:
"Feel free to take this matter to any court or governing body in the land. I am sure that you have the capital reserves to ensure your victory rightly or wrongly. I will however not make this matter easy for you, nor will you gaining control of the said domain names silence me as this is obviously what REG VARDY are trying to do.
I would ask you to recommend to your client to drop this matter before he does his company more harm than good, I will seek to get this matter the highest level of publicity and I have the right to freedom of speech which I will exercise with renewed venom if this matter continues to a court conclusion."
The Panel finds that the Respondent's declared intention in its websites and the contents of the e-mail of April 14, 2001, are sufficient evidence to show that the Respondent intended to disrupt the Complainant's business.
The Panel takes account of the fact that paragraph 4(b)(iii) requires that the registration of the domain names should be primarily for the purpose of disrupting the business of a competitor. The Complainant is not a competitor of the Respondent. Nevertheless, in all the circumstances the Panel finds that the Respondent's registration of the domain names is primarily for the purpose of disrupting the Complainant's business with the objective of causing harm and nuisance to the Complainant. In the Panel's view this constitutes bad faith.
6. Decision and findings
The Complainant requests that the Panel issues a decision that the domain names , and be transferred to the Complainant. The Panel finds for the Complainant and orders that the domain names , and be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Sole Panelist
Dated: July 3, 2001
Full & Egal Universal Law Academy