Complainant is Bentley Motors Limited of Cheshire, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited of Edinburgh, United Kingdom of Great Britain and Northern Ireland.
Respondent is Domain Admin of Wellington, New Zealand / Kyle Rocheleau, Privacy Hero, Inc. of St. Peter, Barbados. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2014. On October 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 5, 2014, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 7, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 10, 2014.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on November 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 8, 2014.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 12, 2014. 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
Complainant states, and provides evidence to support, that it is “a well known manufacturer of prestige motor cars bearing the BENTLEY brand name” and that its “origins date back to 1919.” Complainant further states that it “employs approximately 4,000 staff worldwide and has over 200 facilities globally.”
Complainant states, and provides evidence to support, that it “is the owner of a large global portfolio of registered trademarks” that consist, in whole or in part, of the mark BENTLEY, including the following:
- United States Reg. No. 646,403 for BENTLEY (filed April 13, 1956)
- United Kingdom Reg. No. 1,060,684 for BENTLEY (filed March 25, 1976)
- European Union Reg. No. 1,736,289 for BENTLEY (filed July 4, 2000)
- United Kingdom Reg. No. 3,015,001 for BENTLEY MOTORS (filed November 1, 2013)
The above trademark registrations are referred to hereafter as the “BENTLEY Trademark.”
Complainant further states that it registered the domain name on September 26, 1996, which it uses in connection with a website providing information about its BENTLEY-branded automobiles.
The Disputed Domain Name was registered on August 3, 2006, and is used in connection with a monetized parking page with automotive-related links, including links labeled, inter alia, “Used Cars”, “Buy Car”, “New Bentley” and “New Cheap Cars.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because the Disputed Domain Name contains the BENTLEY Trademark plus the phrase “motorcars,” which “is wholly descriptive of the Complainant’s product” and, therefore, “does not reduce the likelihood of confusion but on the contrary increases it.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has found no evidence that the Respondent has been commonly known by the name BENTLEY or BENTLEY MOTOR CARS prior to or after the disputed domain name's registration;” “Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its trademarks;” “Complainant has found no evidence that the Respondent owns any trademarks incorporating the BENTLEY mark;” and “use of the disputed domain name to generate revenue via pay-per-click advertising is clearly commercial in nature.”
- The Disputed Domain Name has been registered and is being used in bad faith because, inter alia, “it is well established under the Policy that in most circumstances the display of pay per click advertising in association with a domain name in which a complainant’s trademark is the dominant element demonstrates registration and use in bad faith” and “it is likely that the Respondent intended to target the Complainant and benefit financially through the display of pay per click advertising.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, as well as supporting documentation, it is apparent that Complainant has rights in and to the BENTLEY Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the BENTLEY Mark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “bentleymotorcars”), as it is well-established that the top-level domain name “.com” may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
This Panel agrees here with the UDRP decision cited by Complainant, relating to the BENTLEY Trademark, in which the panel found the domain names and confusingly similar to the BENTLEY Trademark because the additional words “are totally applicable to the field in which the Complainant through itself and its predecessors has played such a prominent role” – and, the inclusion of such words “are calculated to increase th[e] likelihood” of confusion. Bentley Motors Limited v. Adeeb Khaleel,WIPO Case No. D2012-2313.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, “Complainant has found no evidence that the Respondent has been commonly known by the name BENTLEY or BENTLEY MOTOR CARS prior to or after the disputed domain name’s registration;” “Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its trademarks;” “Complainant has found no evidence that the Respondent owns any trademarks incorporating the BENTLEY mark;” and “use of the disputed domain name to generate revenue via pay-per-click advertising is clearly commercial in nature.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, and in light of the discussion that follows, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainant argues that bad faith exists pursuant to paragraphs 4(b)(iii) and 4(b)(iv), referring to “well established” precedent under the Policy that use of a domain name under the circumstances of this case, in connection with a monetized parking page containing links related to Complainant’s business, constitutes bad faith. This Panel agrees. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy. 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.
Douglas M. Isenberg
Sole Panelist
Date: December 26, 2014
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