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 DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, Domain Registries Foundation of Panama City, Panama, represented by Willenken Wilson Loh & Delgado, LLP, United States of America (“United States”). 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 October 6, 2016. On October 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 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 October 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2016. The Response was filed with the Center on November 1, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on November 10, 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 following undisputed facts are relevant to the Panel’s determination.
Founded in 1954, the Complainant is Europe’s largest independently owned family-run car dealership, with over 200 new and used car dealerships throughout the United Kingdom. The Complainant sells over 200,000 cars per year, employs 9,000 staff members and enjoyed an annual turnover of over GBP 3.35 billion in the financial years 2015-2016.
The Complainant owns multiple trademark registrations for the mark ARNOLD CLARK, including United Kingdom trademark number 2103334 for the stylized word mark ARNOLD CLARK, which is registered in classes 36, 37 and 39, with a filing date of June 20, 1996 and a registration date of April 4, 1997, and United Kingdom trademark number 2300325 for ARNOLD CLARK, which is registered in class 35, with a filing date of May 11, 2002 and a registration date of December 13, 2002.
The disputed domain name was registered on August 31, 2016. Accordingly, as the Complainant notes, registration of its mark pre-dates the registration of the disputed domain name by twenty years. The website associated with the disputed domain name resolves to pay-per-click advertising, all of which relates to the Complainant’s area of business and ultimately results in web users being directed to the Complainant’s competitors. The Respondent has been party to several previous disputes under the UDRP. In those cases, the domain name at issue was held to be identical or confusingly similar to a well-known trademark and in each case the panel ordered the domain name concerned be transferred to the respective complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent admitted that its filing does not substantively respond to the allegations raised by the Complainant. The Response requests that the Panel not make any findings of fact or conclusions under paragraph 4(a) of the Policy, but that the disputed domain name be transferred to the Complainant. 6. Discussion and Findings A. Consent to Transfer
As noted above, the Respondent agrees that the disputed domain name should be transferred to the Complainant. But the Complainant, anticipating this tactic of the Respondent, specifically asked that the Panel make findings under each of the three UDRP elements. Accordingly, before addressing the merits of this domain name dispute, the Panel first considers whether, in these circumstances, it should even make a substantive determination, or instead simply order the transfer of the disputed domain name – the latter being the desire of the Respondent.
Citing to The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132 and other cases, the Respondent argues that when a complaint has been filed and the respondent consents to the transfer of the domain name, it is inappropriate for a panel to issue any decision other than simply ordering the transfer of the domain name.
Other panels, however, have determined that a full and substantive decision is appropriate, even when the respondent therein has capitulated. For example, in John Bowers QC v. Tom Keogan,WIPO Case No. D2008-1720, the panel therein observed:
“There may be circumstances where it is appropriate to proceed to a consideration of the merits of the Complaint, for example where it is desirable to make a public finding of bad faith against a serial cybersquatter who has repeatedly sought to avoid such a finding by timely concession (see Brownells, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1211 and Messe Frankfurt GmbH v. Texas International Property Associates,WIPO Case No. D2008-0375). It is clear that the panel has discretion to consider the merits where appropriate, even if the respondent has consented to the relief sought by the complainant.”
UDRP panels have found additional reasons to make a substantive determination in these circumstances. In Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320, the panel had “sympathy with those panelists who have taken the view that once a complainant has invoked the Policy and paid the fee, it is entitled to what it paid for”, citing Sanofi-aventis v. Standard Tactics LLC,WIPO Case No. D2007-1909 and Davis + Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc,WIPO Case No. D2008-1162. The same panel also observed that proceeding to a proper consideration of the three elements of paragraph 4(a) of the Policy reduces the risk of an injustice (e.g., the transfer of a domain name to a complainant with no relevant trademark rights).
In this case, the Respondent describes itself and its practices, in part, as follows:
“Respondent is a Panamanian company. It acquires and holds generic and descriptive domain names in high volume and through lawful and fair methods. As part of its business practice, it has a well-known dispute resolution policy, inter alia, whereby it invites putative complainants to contact it regarding domain names that complainants believe correspond to a trademark. And it has a liberal transfer policy whereby it typically agrees to voluntarily transfer domain names, typically irrespective of the legitimacy of the complainant’s arguments, in an effort to avoid the needless time and expense associated with litigation and administrative hearings. Transfers are typically done within one (1) business day.”
In a similar, recent case involving the same Respondent, the panel therein determined as follows:
“While the Respondent claims generally that it acquires and holds domain names in high volume “through lawful and fair methods”, the Respondent does not specifically deny the Complainant’s assertions or that it is connected with those cases. The Panel also notes that, in many of the cases, the Respondent also requested that transfer be ordered without findings as to the merits. All of this gives rise to the suspicion that the Respondent’s motivation is not, as it claims, to avoid the Panel wasting time and resources on an undisputed matter but, rather, to minimise its negative UDRP track record.
The Panel is also persuaded that there is a broader interest in reaching and recording a substantive determination so that the conduct of the Respondent in this case, if found to have registered and used the disputed domain name in bad faith, can be taken into account by other future UDRP panels, e.g., in connection with assessment of patterns of conduct under paragraph 4(b)(iii) of the Policy.” Patriot Supply Store, Inc., d/b/a My Patriot Supply v. Domain May be for Sale, Check Afternic.Com Domain Admin, Domain Registries Foundation,WIPO Case No. D2016-1573.
In this case, the Panel agrees with this characterization of the Respondent’s conduct, namely, that its evident selection of distinctive marks for use in domain names, and its alleged lack of knowledge of the Complainant (and other complainants in other matters) are not credible. The Complainant’s claims of operating a “well-known dispute resolution policy” are merely a smokescreen with which it attempts to legitimize its activities.
For these reasons, the Panel proceeds to issue findings and make a determination of this dispute on the merits. B. Identical or Confusingly Similar
The Complainant has provided evidence of its registrations of the mark ARNOLD CLARK in the United Kingdom, and has demonstrated its longstanding use of the mark and its well-known status, each of which arose many years prior to the registration of the disputed domain name. On the basis of these registrations, the Panel is satisfied that the Complainant has rights in the ARNOLD CLARK mark.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s mark. “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark”. See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark ARNOLD CLARK in its entirety.
The Complainant contends that the additional word “preview” relates to a service offered by the Complainant which allows its customers to “preview” repairs to their cars via an online video before said repairs are authorized by the customer. Assuming this is true, the addition of the word “preview” – inasmuch as it relates to the Complainant’s services, may actually enhance the likelihood of confusion. See Advance Magazine Publishers Inc. v. Registration Private, Domains By Proxy LLC / Phillip Watson,WIPO Case No. D2016-1582 (presence of word “magazine” within disputed domain name enhanced likelihood of confusion with complainant’s magazine-related mark). Even if the selection of the word preview was arbitrary and the Respondent did not choose it in relation to any of the Complainant’s services, the word as a non-distinctive element does nothing otherwise to diminish the overall confusing similarity. As a panel held in Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town,WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to provide any substantive response to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(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.”
In this case, there are several indicators concerning the Respondent’s lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain name, nor is there any evidence in the record showing the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. Joining with numerous previous UDRP panels, the Panel finds that the use of the disputed domain name to establish a web page with sponsored links to websites for products competing with those offered by the Complainant is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name, and the Complainant has prevailed under this element of the UDRP. D. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location.”
In this case, the Panel finds that the Respondent registered and is using the domain name in bad faith. The Panel agrees with the Complainant’s assertions that since the Complainant and its mark are well-known, and that the additional word “preview” does not distinguish the disputed domain name from the Complainant’s mark and its activities, it is inconceivable that the Respondent did not have the Complainant firmly in mind when it registered the disputed domain name. At best, the Panel finds that the Respondent took a cavalier approach to bulk registering domain names, without checking that its registrations do not cut across third party rights – actions which are highly indicative of bad faith in and of themselves.
Moreover, the content of the pay-per-click links on the Respondent’s website using the disputed domain name show the Respondent’s intention to create a likelihood of confusion that would attract Internet users to the website for commercial gain.
Further, the Respondent has been party to several previous disputes under the UDRP. In these cases, the domain name at issue was held to be identical or confusingly similar to a well-known trademark and in each case the panel ordered the domain name concerned to be transferred to the respective complainant. The Panel finds that the Complainant’s established pattern of registering domain names in bad faith means that it is more likely than not that the current domain name has also been registered and used in bad faith. Especially given that the Respondent has declined to address the merits of the Complaint, the Panel can conceive of no use to which the disputed domain name could be put which could not be considered registration and use in bad faith. The Panel therefore concludes that the disputed domain name was registered and used in bad faith in terms of the UDRP, and finds in favor of the Complainant on this element. 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.
Evan D. Brown
Sole Panelist
Date: November 24, 2016
Full & Egal Universal Law Academy