The Complainant is We Buy Any Car Limited of Lancashire, United Kingdom of Great Britain and Northern Ireland, represented by Harrison Goddard Foote of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Midlands Car Disposal of Coventry, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Melbourne IT Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 18, 2010. On August 19 and 23, 2010, the Center transmitted by email to the Registrar requests for registrar verification in connection with the Domain Name. On August 25, 2010, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 23, 2010. 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.
In communicating with the Respondent, it appears that the only messages from the Center which have got through have been those addressed to the Respondent’s registration agent, which is also the administrative contact for the Domain Name.
On August 25, 2010 the registration agent sent messages to the Registrar and the Center (a) expressing the view that its customer, the Respondent, had been behaving abusively with regard to use of the Domain Name, (b) agreeing with the Complainant that the Domain Name should be transferred to the Complainant and (c) stating that attempts to contact the Respondent had met with the response that “he didn’t care, let them take us to court”. 4. Factual Background
The Complainant is engaged in the field of valuation and purchase of motor vehicles. It trades under and by reference to its name, “We Buy Any Car”, and it also trades under and by reference to its UK registered trade mark no. 2445197 dated January 31, 2007 which is a device mark comprising the text, “”, in lower case and below the text a line of 5 stylised car shapes. It has an operational website connected to its domain name, .
The unchallenged evidence of the Complainant is that its annual turnover over the last 3 years has never been less £52 million and that its annual expenditure on advertising has never been less than £1.8 million.
The Domain Name was registered on April 30, 2009. It is connected to a commercial website offering the best prices for motor vehicles.
In the course of February, March and April 2010 advertisements for the Respondent’s business featuring the Domain Name in very similar style to the Complainant’s registered trade mark described above appeared in newspapers such as the Swindon Evening Advertiser, the Lutterworth Observer and the Stratford Observer.
Letters of complaint were sent to the Respondent on February 15, 2010, April 8, 2010 and April 12, 2010, but no reply was received by the Complainant. The unchallenged evidence of the Complainant is that one of the Complainant’s senior staff called the Respondent by telephone seeking confirmation that the offending advertisements would not be used again, but she was told that no such confirmation would be forthcoming. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its registered trade mark described in section 4 above, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. B. Identical or Confusingly Similar
The Domain Name comprises the words “webuyanymotors” and the generic “com” domain suffix. Ordinarily, it is appropriate when assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy for the domain suffix to be taken out of account. However, in this case the domain suffix is an important element of the Complainant’s registered trade mark and needs to form part of the assessment.
The Complainant is the registered proprietor of UK trade mark no. 2445197 dated January 31, 2007 which is a device mark comprising the text, “”, in lower case and below the text a line of 5 stylised car shapes. The text is a prominent element of the overall mark.
The evidence put before the Panel by the Complainant has satisfied the Panel that since 2007 the Complainant has made very substantial use of its name, “We Buy Any Car”, as a brand, such that it is almost certainly the case that by the date of registration of the Domain Name the Complainant had acquired unregistered trade mark rights in respect of its name in addition to the registered rights in its device mark.
Thus, the Domain Name is identical to both (a) the textual element of the Complainant’s registered trade mark and (b) the Complainant’s name (absent the ”com” domain suffix) in which the Panel has found on the preponderance of the evidence that the Complainant has acquired unregistered trade mark rights, save that in each case the Complainant’s rights are in respect of a mark which features the word “car” instead of “motors”.
Where, as here, the trade mark is of a very descriptive nature, a tribunal (whether a court or a panel) will normally accept that minor variations may suffice to avoid confusion. However, in this case there are four factors which in combination have led the Panel to conclude that the Domain Name is indeed confusingly similar to the Complainant’s trade mark, namely:
1. The Complainant has built up a substantial goodwill in a very short space of time.
2. The registered mark is by its very nature a domain name and not just a descriptive statement.
3. The substitution of the word “motors” for the word “car” has no material impact on either the meaning or the overall impression of the two names.
4. The Respondent’s use of the Domain Name has been such as to make it clear that the Respondent hopes and anticipates that it will divert business from the Complainant by this means. Why else would the Respondent so closely replicate the Complainant’s registered trade mark in its advertisements?
Why should the Panel assume that the Respondent has failed to achieve the confusion that it so obviously desires?
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant and the Respondent are competitors in the second hand car market. The Complainant’s registered trade mark is a distinctive device featuring its domain name and some stylized car shapes. Over two years after the Complainant had started using its registered trade mark, the Respondent registered the Domain Name and by a year later was featuring the Domain Name in newspaper advertisements in a form which replicated to a substantial degree the design of the Complainant’s registered trade mark.
The Complainant contends that the Respondent’s objective was to take business away from the Complainant, anticipating that readers seeing the advertisements and with an imperfect recollection of the Complainant’s registered trade mark would be deceived into believing that the Respondent’s business is the Complainant’s business. The Domain Name formed an important part of the Respondent’s plan.
If the Complainant’s contentions are well-founded, there is no way that the Respondent’s enterprise could be said to have given the Respondent any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case under this head and that it calls for an answer from the Respondent.
The Respondent has not responded to the Complainant’s contentions, which, on the evidence before the Panel, appear to the Panel to be very well founded.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
By the same reasoning the Panel finds that, as contended by the Complainant, the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) and 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: October 7, 2010
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