The Complainant is Arnold Clark Automobiles Limited of Glasgow, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
The Respondent is Vietnam Domain Privacy Services / Pham Dinh Nhut of HoChiMinh City, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with April Sea Information Technology Corporation (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2016. On March 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 25, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint and informing that the language of the registration agreement was Vietnamese. The Center sent an email communication to the Complainant on March 31, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same date. The Center sent an email communication to the Parties on March 31, 2016 regarding the language of proceedings. On the same date the Complainant submitted a request for English to be the language of proceedings. The Respondent did not provide any comments on the language of proceedings.
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 and 4, the Center formally notified the Respondent of the Complaint in both English and Vietnamese, and the proceedings commenced on April 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2016.
The Center appointed John Swinson as the sole panelist in this matter on May 4, 2016. 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 Arnold Clark Automobiles Limited, a car dealership company based in the United Kingdom. According to the Complainant, it has over 200 new and used car dealerships in the United Kingdom, sells over 200,000 cars per year, and has an annual turnover of over GBP 2.9 billion.
The Complainant owns the following registered trade marks in the United Kingdom:
- trade mark number 2103334 for ARNOLD CLARK (stylized), registered on April 4, 1997; and
- trade mark number 2300325 for ARNOLD CLARK (word mark), registered on December 13, 2002, (the “Trade Mark”).
The Complainant also owns a domain name which is almost identical to the Trade Mark, being , from which it sells new and used cars. The Complainant registered this domain name on October 24, 1997.
The Respondent is Vietnam Domain Privacy Services / Pham Dinh Nhut of Viet Nam. The Respondent did not provide a response to the Complaint, so the Panel has little further information regarding the Respondent.
The Disputed Domain Name was registered on July 19, 2004. The Disputed Domain Name redirects to various different advertising or monetization websites, at least one of which contains code that causes Internet Explorer to display pop up advertisements that cannot be closed. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Language of Proceedings
Although the language of the registration agreement for the Disputed Domain Name is in Vietnamese, these proceedings should be in English.
The Respondent is the registrant of a number of domain names which incorporate English words. Further, the Respondent has previously been the respondent in a number of disputes under the Policy in which the relevant panel found the language of the proceedings should be English, despite the relevant registration agreement being in another language.
The Respondent is capable of understanding English and will not be prejudiced by the proceedings being conducted in English, but the Complainant will be put to some expense by a requirement to translate its submissions into Vietnamese.
Identical or Confusingly Similar
The Complainant is the owner of the Trade Marks, the earliest of which pre-dates the registration of the Disputed Domain Name by eight years.
The additional letter “s” in the Disputed Domain Name does not distinguish the Disputed Domain Name from the Trade Mark. The Trade Mark has no generic or other meaning which is unrelated to the Complainant.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has found no evidence that the Respondent has been commonly known by the Trade Mark or the Disputed Domain Name. The Respondent is not a licensee of the Complainant and has not received permission from the Complainant to use the Trade Mark.
The Complainant has found no evidence that the Respondent owns any trade marks identical or similar to the Trade Mark or the Disputed Domain Name, or that the Respondent has traded under the Trade Mark or the Disputed Domain Name.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, as the Disputed Domain Name resolves to various different monetized websites.
Given the fame of the Complainant, there is no conceivable scenario in which the Respondent could have a legitimate interest in the Disputed Domain Name.
Registered and Used in Bad Faith
Again, given the fame of the Complainant and the Trade Mark, it is inconceivable that the Respondent was not aware of the Complainant when he registered the Disputed Domain Name.
It is likely the Respondent registered and is using the Disputed Domain Name in bad faith for the primary purpose of disrupting the Complainant’s business (under paragraph 4(b)(iii) of the Policy).
In most circumstances, where a domain name resolves to a website containing pay-per-click (“PPC”) advertisements or monetized affiliate schemes and a third party trade mark is the dominant element of that domain name, this alone is sufficient for a finding of bad faith. It is likely the Respondent intended to benefit financially through the display of advertising, and cause consumers looking for the Complainant to be redirected to third parties.
The Respondent has been party to at least six previous disputes under the UDRP, in which the relevant panel found for the complainant. The Respondent has established a pattern of conduct of registering domain names in bad faith, and it is likely the Disputed Domain Name has also been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Language of Proceedings
A preliminary matter to be decided is the language of the proceedings. Although the language of the registration agreement is Vietnamese, the Complainant has requested that the language of the proceedings should be English, and the Respondent did not contest this request.
As the Complainant submitted, the Respondent is the registrant of a number of domain names which incorporate English words. The Disputed Domain Name itself is in English, and some (if not all) of the websites to which the Disputed Domain Name resolves are in English.
Further, the Complainant has located a number of previous UDRP proceedings to which the Respondent was a party where the relevant registration agreement was not in English, but the panel decided it was appropriate for the proceedings to be conducted in English (see, e.g. Kimmel Center, Inc. f/k/a Regional Performing Arts Center, Inc. v. Vietnam Domain Privacy Services / Pham Dinh Nhut,WIPO Case No. D2015-0765).
For these reasons, the Panel finds that the proceedings should be conducted in English. B. Failure to File a Response
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark.
The Trade Mark has been wholly incorporated into the Disputed Domain Name, with the addition of the letter “s” at the end. As submitted by the Complainant, this addition does not distinguish the Disputed Domain Name from the Trade Mark.
The Complainant succeeds on the first element of the Policy. D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The various websites to which the Disputed Domain Name resolves on different occasions feature PPC link pages or other forms of advertising or affiliate referral pages. This is not a bona fide use of the Disputed Domain Name under the Policy.
- The Panel accepts the Complainant’s submission that the Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. As submitted by the Complainant, the Panel considers it likely that the Respondent is generating advertising or affiliate referral revenue from the various websites to which the Disputed Domain Name redirects. Again, and in the absence of any evidence from the Respondent to the contrary, the Panel is of the view that this does not amount to a bona fide use for the purpose of the Policy.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. E. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has held registered rights in the Trade Mark for almost 20 years. It is clearly an established brand.
Previous UDRP panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see e.g. Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 and cases cited therein). Given that the Disputed Domain Name is identical to the Trade Mark except for the addition of one letter, the Panel finds it highly unlikely that the Respondent was not aware of the Trade Mark at the time he registered the Disputed Domain Name.
It is probable that the Respondent intended to divert traffic from the Complainant's website to the Respondent’s website for his own financial gain. This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Finally, the Complainant has referred the Panel to at least six previous UDRP decisions in which an adverse finding was made against the Respondent. The Panel considers that the Respondent has engaged in a pattern of conduct of registering domain names to prevent owners of trade marks from reflecting their trade marks in those domain names, which is a further indicator of bad faith registration and use under paragraph 4(b)(ii) of the Policy.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on 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.
John Swinson
Sole Panelist
Date: May 13, 2016
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