The Complainant is We Buy Any Car Limited, Lancashire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Harrison Goddard Foote, United Kingdom.
The Respondent is John Smith, Bristol, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 7, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On February 7, 2011 Tucows Inc. 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 February 14, 2011. On February 14, 2011 after the transmission of Notification of Complaint, the Center was copied on an email communication to Tucows Inc., from the Technical Support for the Registrant. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2011.
The Center appointed Isabel Davies as the sole panelist in this matter on March 23, 2011. 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 the registered proprietor of the following United Kingdom (“UK”) registered trade marks and Community trade marks (“CTMs”):
Mark
Number
UK / CTM
Classes
Filing Date
Registration Date
WEBUYANYCAR.COM (Device)
2445197
UK
12, 35, 36, 37, 39
31 January 2007
19 October 2007
WEBUYANYCAR.COM (Device)
2442651
UK
12, 35, 36, 37
3 January 2007
16 November 2007
WEBUYANYCAR.COM (Device)
2457645
UK
39
5 June 2007
14 December 2007
WEBUYANYCAR.COM
2541783
UK
35
11 March 2010
31 December 2010
WEBUYANYVAN.COM (Device)
2541784
UK
12, 35, 36, 37, 39
11 March 2010
9 July 2010
WEBUYANYCAR.COM (Device)
8946303
CTM
12, 35, 36, 37, 39
11 March 2010
2 September 2010
WEBUYANYVAN.COM (Device)
9431131
CTM
12, 35, 36, 37, 39
7 October 2010
18 March 2011
The Complainant trades under these marks and under its name “We Buy Any Car”. The Complainant contends that it and the Respondent both operate in the business of valuing and buying used motor vehicles. The Complainant operates a website under the domain name .
The Complainant has provided extensive evidence to demonstrate the fact that the marks and the brand have been used throughout the UK and as a result have acquired a reputation in the UK. In particular, the Complainant has adduced unchallenged evidence that:
1. The Complainant operates at 111 different sites across the UK and the Complainant’s turnover since August 2006 when the company first began trading under the name “We Buy Any Car” is approximately £467 million.
2. In the last three financial years (2007 to 2009) the Complainant’s total advertising expenditure has been approximately £10 million.
3. The Complainant has advertised extensively on TV, radio, in local, national and trade press, online and outdoor advertising mediums, such as billboards.
4. The Complainant has received a letter from an individual who used the services offered on the website linked to the disputed domain name in the mistaken belief that the website and related service was operated by the Complainant.
The Respondent registered the domain name on May 4, 2010.
The Complainant contends that the disputed domain name is linked to a commercial website offering services in the same field as those offered by the Complainant.
The Complainant, via its representative Harrison Goddard Foote, wrote a letter objecting to the supply of services under the disputed domain name. This letter was sent to the contact details provided on the Respondent’s website on July 14, 2010. Further correspondence was sent by the Complainant on August 5, August 27, September 14, October 8, October 26 and November 4, all dates in 2010. The correspondence from October 8 and October 26, 2010, was also sent to the Respondent at the postal address recorded by the registrar for the disputed domain name. The Complainant contends that no response was received from the Respondent to any of these letters and emails. 5. Parties’ Contentions A. Complainant
The Disputed Domain Name Is Confusingly Similar to the Complainant’s Mark
The Complainant contends that, in addition to the trade marks identified above, the Complainant has prior common law rights to the words WEBUYANYCAR and WEBUYANYCAR.COM based on use since August 2006 in the UK.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trade mark rights.
The Complainant contends that the additional word “Bristol” would not be considered by the average consumer because it is simply a geographic indicator and it does not form a significant part of the mark.
The Respondent Has No Rights or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name, nor is the Respondent connected with the Complainant in any way.
The Complainant contends that the Respondent has not used the disputed domain name for a bona fide offering of goods or services on the basis that (i) the Respondent is a direct competitor of the Complainant; (ii) the Respondent would undoubtedly have been aware of the Complainant’s business activities; and (iii) the Respondent subsequently used the disputed domain name in such a way to increase confusion and association with the Complainant. By doing this, the Complainant contends that the Respondent was not making any legitimate non-commercial or fair use of the disputed domain name and that the Respondent used the disputed domain name with the intent of gaining a commercial advantage by way of misleading the public with an intent to divert consumers from the Complainant’s business to the Respondent’s business or to tarnish the Complainant’s registered and unregistered trade marks.
Registered and Used in Bad Faith
The Complainant contends that when the disputed domain name was registered by the Respondent, this was with an intent to prevent the owner of the trade mark from reflecting the trade mark in a corresponding domain name.
The Complainant further contends that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant because the Respondent undoubtedly would have been aware of the Complainant’s activities in the market given the large amount of usage and reputation established by the Complainant before the date of registration of the disputed domain name.
In addition, the Complainant contends that the use of the disputed domain name by the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or service on the Respondent’s website or location.
The Complainant contends that the Respondent is deliberately attempting to ‘piggy-back’ on the advertising expenditure and reputation of the Complainant. Not only is the disputed domain name highly similar to the Complainant’s trade mark rights but also the use made by the Respondent of coloured cars on its website is attempting to make a direct economic and commercial association with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain relief. These elements are that:
i. The respondent’s domain names are identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
ii. The respondent has no rights or legitimate interests in respect of the domain names; and
iii. The respondent’s domain names have been registered and are being used in bad faith.
Each of these elements will be addressed below.
The complainant must establish these elements even if the respondent does not reply (See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of, or requirement under, the Rules, including the Respondents’ failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (See ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is a civil one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to cancel or transfer the domain name. A. Identical or Confusingly Similar
The Complainant is the owner of a number of registered trade marks featuring the words “We Buy Any Car”. In particular, the UK registered trade marks numbers 2442651, 2445197 and 2457645 were all registered in 2007 featuring the words WEBUYANYCAR.COM. Furthermore, several panels under the Policy have decided that the Policy affords protection not only to those having rights in registered trade marks but also to those having common law rights in their trade or service marks (Bennett Coleman & Co. Ltd v. Steven S. Lafwani,WIPO Case No. D2000-0014; Seek America Networks Inc. v. Tariq Masood, WIPO Case No. D2000-0131). The Complainant has demonstrated widespread use of the words “We Buy Any Car” throughout the UK since August 2006. As a result, the Complainant has built a considerable reputation in the mark.
The only difference between the Complainant’s registered trade marks/common law rights and the disputed domain name is the addition of the geographical indication “Bristol”. The inclusion of a geographic indication does not detract from the distinctiveness of the mark nor is it sufficient to render the disputed domain name dissimilar to the Complainant’s trade marks (AT&T Corp v WorldclassM, WIPO Case No. D2000-0553 and Sanofi-Aventis v Andrey Volkovich, WIPO Case No. D2010-2009). Internet users are likely to consider the geographical indication to mean that the website is a regional branch of the Complainant’s business. The Complainant has adduced evidence of such confusion by a customer.
The fact that the Complainant’s trade marks are highly descriptive means that it is more difficult for the Complainant to demonstrate that the marks have acquired distinctiveness. However, the Complainant has supplied a large volume of evidence to show that the mark has acquired distinctiveness and the Panel is satisfied that this hurdle has been overcome.
For the reasons stated above, the Panel holds that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraphs 4(c)(i) – (iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of proof passes to the respondent. (See Croatia Airlines did. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Bleep did. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
Based on the evidence supplied by the Complainant, it is clear that the Respondent is using the disputed domain name to link to a website offering a commercial service akin to the service offered by the Complainant. The Respondent is therefore using the Complainant’s trade mark for its own commercial gain.
In the absence of a Response, the Panel accepts that the Respondent is not licensed or authorised to use the Complainant’s trade marks in its domain name.
The Respondent has not responded to the Complainant’s claims.
As stated in paragraph 15 of the Rules, the Panel can only make its decision based on the information and evidence submitted before it and, given the circumstances, the Panel is satisfied that the Complainant is deemed to have met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that, by using the domain name for a website offering an identical service to that offered by the Complainant, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website for the following reasons. The domain name reproduces the Complainant’s trade mark in the absence of any plausible use of the disputed domain name that would constitute good faith. In addition to that, the Respondent’s website sells a competing service to Internet users. Therefore, Internet users are likely to get the idea that the Respondent’s site at the disputed domain name is an official site of the Complainant sponsored by the Complainant or affiliated with the Complainant. Indeed, the Complainant has adduced evidence of such confusion. Such likelihood of confusion would in all probability attract more customers to the site of the disputed domain name resulting in commercial gain.
Furthermore, the Panel finds that the Respondent acted intentionally. The Panel finds it inconceivable that the Respondent could have registered the disputed domain name without having the Complainant’s trade marks in mind. The Complainant’s business and trade marks are well known throughout the UK and the extent of advertising via all forms of media cannot have escaped the Respondent’s attention. The fact that the Respondent made use of coloured cars on its website in a manner which is very similar the Complainant’s UK registered trade mark number 2445197 would appear to be more than simply coincidental and indicates that the Respondent was aware of the Complainant’s trade marks when it registered the disputed domain name. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trade mark is therefore obvious.
Finally, the Respondent has chosen to refrain from responding to the Complaint. Such circumstances taken together support an inference of bad faith registration and use.
The Panel finds the disputed domain name was registered and is being used in bad faith and the Complainant has therefore met the requirements of paragraph 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.
Isabel Davies
Sole Panelist
Dated: April 6, 2011
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