The Complainant is Bentley Motors Limited in Cheshire, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom.
The Respondent is “Enom Central” in Wilmington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2012. On August 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2012, 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 Registrar however clarified that although the name of the Registrar is listed as the registrant of the disputed domain name, it is in fact not the actual registrant of the disputed domain name.
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 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2012.
The Center appointed Alfred Meijboom as the sole panelist in this matter on September 7, 2012. 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 a manufacturer of luxury cars under the BENTLEY trademark. It has produced two car models bearing the name “Continental Flying Spur”, one of which is still in production. The Complainant holds registrations for a United States (stylized) word mark BENTLEY (registration number 0646403, registered on June 4, 1957 for automobile and structural parts thereof), a United Kingdom word mark BENTLEY (number 1060684, filed on March 24, 1976 in classes 7 and 12 for, inter alia, engines and motor cars), a European Community word mark BENTLEY (registration number 001736289, registered on September 3, 2001 in classes 16 and 36 for, inter alia, books, stationary and financial services), a European Community word mark CONTINENTAL FLYING SPUR (registration number 003238367, registered on January 16, 2006 in class 12 for whole motor vehicles) and a United Kingdom word mark FLYING SPUR (number 769938, filed on October 9, 1957 in class 12 for bodies for vehicles and parts thereof).
The disputed domain name was registered on January 13, 2010. 5. Parties’ Contentions A. The Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to both its registered trademarks and its common law trademark BENTLEY CONTINENTAL FLYING SPUR. It further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as there is no evidence that the Respondent owns any trademarks incorporating BENTLEY, FLYING SPUR or CONTINENTAL FLYING SPUR, and has never traded under these signs. The disputed domain name has only been used in connection with a website displaying pay-per-click advertisements, which may be described as a “splog” or “spam”, i.e. a website made up of material largely copied from other websites while displaying a large number of advertisements. This does not constitute a bona fide offering of goods and services. Even if the Respondent would be involved in the automotive industry, the disputed domain name is not used in a bona fide sense. The Respondent has never replied to the Complainant’s communications, which is indicative of the fact that the Respondent cannot reasonably explain its position and has no rights or legitimate interests in the disputed domain name. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent has no relationship with the Complainant and as the disputed domain name incorporates and is confusingly similar to the Complainant’s well-known trademarks, its very registration suggests bad faith. The disputed domain name has been registered by the Respondent primarily for the purpose of disrupting a competitor’s business and to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The diversion of web users, trying to find the Complainant’s website, to Respondent’s pay-per-click advertising is disrupting the Complainant’s business. B. The Respondent
The Respondent did not reply to the Complainant’s contentions. In addition to its email to the Center, the Registrar responded to an earlier communication to the Complainant, stating that the disputed domain name’s registrant, a customer of the Registrar, had incorrectly entered its details on the WhoIs register. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrates that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In the present case the Complainant has sufficiently demonstrated that it has rights in the aforementioned trademarks. As the disputed domain name consists of a combination of the Complainant’s word marks BENTLEY and FLYING SPUR, and as it is well established that top level domain extensions such as “.com” may be not considered in the assessment under paragraph 4(a)(i) of the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
As the requirement under paragraph 4(a)(i) of the Policy is therefore satisfied based on the Complainant’s registration of its BENTLEY and FLYING SPUR trademarks, it may remain undecided whether the disputed domain name is also identical or confusingly similar to the Complainant’s alleged common law trademark rights. B. Rights or Legitimate Interests
Paragraph 4(a)(ii)of the Policy requires that the Complainant demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has sufficiently demonstrated that Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has submitted evidence showing that the website to which the disputed domain name is linked shows content suggesting that the Complainant exploits the website, and displays automotive related pay-per-click links that redirect Internet users to other websites. Although a website containing pay-per-click links does not per se constitute any illegitimate or illegal activity (Lardi Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2010-1437), the Panel finds that there is no bona fide use of the disputed domain name by the Respondent. The reason for this is that by suggesting that the Complainant exploits the website linked to the disputed domain name, the Respondent misleadingly diverts Internet users to the website in order to direct them towards using the pay-per-click links, some of which display trademarks of the Complainant’s competitors. Such use cannot be considered a bona fide use, nor a fair or noncommercial use.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrates that the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
The evidence submitted by the Complainant demonstrates that the Respondent has registered and uses the disputed domain name in bad faith. As mentioned above under Section B, the Panel finds that the Respondent misleadingly diverts Internet users to the website in order to direct them towards using the pay-per-click links. Thereby, the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source of the Respondent’s website. The fact that the Respondent incorrectly used the name of the Registrar with the likely intention to hide its true identity when it registered the disputed domain name is also a factor that the Panel takes into account in reaching its conclusion that the disputed domain name was registered and used in bad faith in this case.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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 disputed domain name be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Dated: September 21, 2012
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