The Complainant is Eastern Holdings Limited of Edinburgh, Scotland, the United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Pinsent Masons LLP, UK.
The Respondent is Faisal Riaz of Edinburgh, Scotland, UK. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2016. On April 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 24, 2016.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 2, 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 a Scottish registered group of companies, which has been trading since 1927, and is engaged in the motor trade. Within the Complainant's group is the Scottish registered company Eastern Western Motor Group Limited, which was incorporated on November 30, 1962. The Complainant and its companies are also known variously, particularly in Scotland, as "Eastern Western", "Eastern" and "Western". Some of the Complainant's dealerships in the Edinburgh area trade under the name "Western" including Western Alfa Romeo, Western Honda, Western Mazda, Western Nissan and Western Volkswagen.
The Complainant holds the following registered trademark:
WESTERN, United Kingdom Intellectual Property Office ("UKIPO"), filed May 16, 2008, registration number 2487790, classes 12, 35, 36, 37.
The Complainant also holds and trades online through the domain name , registered on February 18, 2000.
The Respondent is the registrant of the Scottish company Western Motors Edinburgh Limited, which was incorporated on March 12, 2015. The disputed domain name was created shortly after, on March 23, 2015. On April 20, 2015, the Respondent also registered the domain name . 5. Parties' Contentions A. Complainant
The Complainant has produced a "Schedule Trade Marks in the Name of Eastern Holdings Limited" listing the trademark information shown in section 4 above.
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark WESTERN in which it has registered trademark rights, and to the name WESTERN in which it has common law rights. The disputed domain name contains a word which is identical and confusingly similar to the trademark WESTERN. The additional words "motors" and "Edinburgh" in the disputed domain name do not avoid confusion with the Complainant's trademark. The additional word "motors" increases confusion by relating to the industry of the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Given the notoriety of the Complainant's trademark in the relevant market, the Respondent must have been aware of it. The Complainant says it has not assigned to the Respondent any rights in the goodwill associated with the Complainant's trademark. The Respondent has never received permission from the Complainant to register any domain name incorporating the Complainant's trademark.
The Complainant says it believes the Respondent intends to trade actively through the disputed domain name, similarly to the Respondent's use of the domain name , of which the Complainant has submitted a screen capture showing the promotion of car sales.
The Complainant says that the Respondent is not known by the disputed domain name and is not making a legitimate noncommercial or fair use of it.
The Complainant states that in a telephone call with the Complainant's representative on September 24, 2015, the Respondent acknowledged the Complainant's rights and stated that the Respondent would cease to use the Complainant's trademark, but did not cease to do so.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
A cease and desist letter was sent by the Complainant to the Respondent on September 9, 2015, and followed up on September 30, 2015 and October 23, 2015. On December 24, 2015 the Court of Session, Edinburgh, granted an interdict in the Complainant's favour prohibiting Western Motors Edinburgh Limited from using the Complainant's trademark. Attempts by the Complainant to discuss matters with the Respondent by telephone on February 16 and 17, 2016, were unsuccessful.
The Complainant contends that it has been prevented from registering a domain name corresponding to its trademark by the Respondent's registration of the disputed domain name.
The Complainant contends that the Respondent has intended to attract Internet users to the website to which the disputed domain name resolves, for commercial gain, by creating a likelihood of confusion with the Complainant's trademark. The Complainant's trademark has a reputation such that members of the public would assume there to be an association between the Respondent and the Complainant or its trademark, and such confusion may be damaging to the reputation of the Complainant's trademark.
The Complainant says the disputed domain name is currently not displaying any content.
The Complainant has cited certain previous decisions under the Policy that it considers to be relevant to this Complaint.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant has produced an unattributed "schedule" listing the registration details of the trademark WESTERN in which it asserts rights. The Complainant has certified that the details of its Complaint are true and correct and the matter is uncontested. The Panel is satisfied for the purposes of this proceeding that the Complainant has the rights in the trademark WESTERN requisite under paragraph 4(a)(i) of the Policy.
The disputed domain name is . Disregarding in this instance the generic Top-Level Domain ("gTLD") designation ".com", what remains is "westernmotorsedinburgh", which may be read as "Western Motors Edinburgh". Whilst the word "western" may in certain circumstances be generic or geographical, it nevertheless is duly registered as the Complainant's trademark in the relevant classes at the UKIPO. The disputed domain name incorporates prominently the Complainant's registered trademark, qualified by the additional words "motors" and "Edinburgh". The Panel finds the additional words "motors" and "Edinburgh" not to be distinguishing but, because they impinge upon the Complainant's business and the Complainant's location, to be exacerbating of confusing similarity between the disputed domain name and the Complainant's trademark. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been permitted by the Complainant to use its trademark or to register any domain name incorporating the trademark.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The Respondent has not responded and has not asserted rights or legitimate interests in the disputed domain name in the terms of paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. The Respondent is not obliged to respond and the onus of proof remains upon the Complainant.
At the time of this decision, the disputed domain name had only the token use of resolving to a parking page displaying some sponsored links in English and German. The Complainant has produced a screen capture of a website owned by the Respondent that uses a domain name directly analogous to the disputed domain name, namely , showing it to be in use in connection with the sale of cars. The Complainant believes that the Respondent intends to use the disputed domain name in a similar manner. Having regard to all the available evidence, including the Respondent's registration of the company name Western Motors Edinburgh Limited, the Panel finds it more probable than not that such use of the disputed domain name is likely to be one of the Respondent's intentions and that such use, because of its reliance in part on the Complainant's trademark, would not constitute use in connection with a bona fide offering of goods or services in the terms of paragraph 4(c)(i) of the Policy.
The Complainant's trademark WESTERN was registered in 2009, having been filed on May 16, 2008. The disputed domain name was not created until March 23, 2015. Notwithstanding the Respondent's acquisition of the company name Western Motors Edinburgh Limited contemporaneously with registration of the disputed domain name, the Respondent has not produced any evidence of having been commonly known, individually or as a business, by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy.
The disputed domain name is parked and not in effective use, and the Respondent is found not to be making a legitimate noncommercial or fair use of it.
The Panel finds that the Respondent does not have rights or legitimate interests in respect of the disputed domain name and accordingly finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
The Respondent's detailed intentions for the disputed domain name are not entirely clear. A key clue to the Respondent's business is that the analogous domain name redirects to an Edinburgh car sales website trading under a different name but, according to its screen capture, having the same telephone number as the registrant, administrative and technical contacts of the disputed domain name as listed in the WhoIs. It is not necessary, however, to know the Respondent's intentions because the provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively.
The Policy at paragraph 2, "Your Representations", states in part, directed to a potential registrant: "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights". As expressed in the decision by the three-member panel in Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093, " [...] paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy [...]", and later, " [...] paragraph 2 of the Policy has not been read as routinely requiring registrants to conduct trademark searches, see, e.g., Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc. v. Jake Porter,WIPO Case No. D2007-1254, and a complainant generally must proffer some evidence, whether direct or circumstantial, indicating that the respondent had the complainant's mark in mind when registering the disputed domain name".
The Complainant, based in Edinburgh, has held the company name Eastern Western Motor Group Limited for more than 50 years, and the trademark WESTERN in the context of the motor trade for 7 years, and also holds a variety of dealerships in the style "Western Alfa Romeo", "Western Volkswagen", etc.
The Respondent also provides an Edinburgh address and projects a familiarity with the Edinburgh motor trade by virtue of the disputed domain name, the company name Western Motors Edinburgh Limited, and the domain name that resolves to a car sales website with a telephone number, a display of 18 car brand insignia, a comprehensive selection of vehicle categories, and a search box for make, model and price.
Given the localised geographical area and specific motor trade business common to both the Complainant and the Respondent, and the historic reputation of the Complainant, the Panel finds it implausible in all the present circumstances and on the balance of probabilities that the Respondent was unaware of the Complainant's trademark, and inexcusable if the Respondent did not make some good faith effort to ensure that the disputed domain name did not conflict with another's trademark. It is in any case clear that the Respondent was aware of the Complainant's trademark by September 24, 2015, when according to the Complainant's certified statement the Respondent agreed by telephone to cease using the Complainant's trademark.
The Respondent's non-use or mere parking of the disputed domain name does not preclude a finding of use in bad faith if appropriate. The Panel notes the widely respected decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which whilst not precedential, analysed principles whereby the passive holding of a domain name with minimal usage or non-use may constitute use in bad faith. The disputed domain name incorporates an established registered trademark of which, in the context of the pertinent geographical and motor trade circles, the Panel finds that the Respondent ought reasonably to have been aware or to have discovered. There is no evidence of use or intended use of the disputed domain name in good faith by the Respondent and it is not reasonably possible to conceive of any such legitimate use. On the evidence and on the balance of probabilities the Panel finds the disputed domain name to have been used in bad faith, and to have been registered for the purpose in bad faith, in the terms of paragraph 4(a)(iii) of the Policy.
A cease and desist letter was sent by the Complainant to the Respondent on September 9, 2015. The Complainant states that on September 24, 2015, the Respondent agreed by telephone to cease using the Complainant's trademark. A letter from the Complainant to the Respondent dated September 30, 2015 contained a memorandum of the terms agreed by telephone, including the transfer of the disputed domain name. A letter from the Complainant to the Respondent dated October 23, 2015, contained a further request for compliance with those agreed terms. The Respondent did not comply and did not reply to attempts by the Complainant to make telephone contact on February 16 and 17, 2016. The Panel finds the Respondent's conduct in purporting to agree to the transfer of the disputed domain name followed by inaction in this respect, which appears to have extended until at least the date of the Complaint, to be an aggravating factor in the establishment of bad faith on the part of the Respondent in the registration and use of the disputed domain name. 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.
Dr. Clive N.A. Trotman
Sole Panelist
Date: June 16, 2016
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