Complainant is Arnold Clark Automobiles Limited of Glasgow, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
Respondent is On behalf of OWNER, c/o of Alexandria, Virginia, United States of America (“United States”) / Tulip Trading Company, Tulip Trading Company of Charlestown, Nevis, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2017. On July 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 10, 2017, 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. The Center sent an email communication to Complainant on July 11, 2017 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 July 11, 2017.
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 Respondent of the Complaint, and the proceedings commenced on July 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 8, 2017.
The Center appointed Richard W. Page as the sole panelist in this matter on August 10, 2017. 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
Founded in 1954, Complainant is one of Europe’s largest independently owned family-run car dealerships, with over 200 new and used car dealerships through the United Kingdom. Complainant sells over 200,000 cars per year, employs 9,000 staff and enjoyed an annual turnover of over GBP 3.35 billion in the financial years 2015-2016.
Complainant operates a major transactional website under the domain name , from which it sells new and used cars, and offers related services. Complainant contends that its business, name and trademarks (the “ARNOLD CLARK Mark”) are very well established and well-known in the United Kingdom.
Complainant has successfully enforced its rights under the UDRP before in at least three previous UDRP cases.
The Disputed Domain Name was registered on May 30, 2017. The website associated with the Disputed Domain Name resolves to pay-per-click (“PPC”) advertising which displays links on the front page made up of automotive related terms. Complainant notes that all the displayed advertising is related to Complainant’s area of business and ultimately results in web users being directed to Complainant’s competitors.
Complainant is the owner of the United Kingdom trademark number 2103334 for the stylized ARNOLD CLARK Mark. It is registered in classes 36, 37 and 39, on April 4, 1997. Complainant is also the registrant of United Kingdom trademark number 2300325 for the ARNOLD CLARK Mark. It is registered in class 35, on December 13, 2002. 5. Parties’ Contentions A. Complainant
Complainant contends that its earlier trademark registration predates the registration of the Disputed Domain Name by twenty-one years. Complainant contends that the Disputed Domain Name is confusingly similar to its ARNOLD CLARK Mark in that it differs only by the addition of the dictionary term “motors”. Complainant avers that the word “motors” does nothing to distinguish the Disputed Domain Name from the ARNOLD CLARK Mark and contends that it exacerbates the prospects of confusion, in that “motors” is a contraction of “motor vehicles” which is related entirely to Complainant and its business. The generic Top-Level Domain (“gTLD”) “.com” is wholly generic in that it is required only for technical reasons and, as is customary in proceedings under the Policy, should be disregarded for the purposes of comparison with the ARNOLD CLARK Mark.
Complainant further contends that Respondent does not have any rights or legitimate interest in the Disputed Domain Name. Complainant alleges that it has found no evidence that Respondent has been commonly known as ARNOLD CLARK or ARNOLD CLARK MOTORS prior to or after the registration of the Disputed Domain Name. Respondent is not a licensee of Complainant and has not received any permission or consent from Complainant to use its registered or unregistered trademarks.
Complainant has found no evidence that Respondent owns any trademarks incorporating the term ARNOLD CLARK or ARNOLD CLARK MOTORS. Equally, Complainant has found no evidence that Respondent has ever traded as ARNOLD CLARK or ARNOLD CLARK MOTORS.
Complainant asserts that Respondent’s use of the Disputed Domain Name cannot be construed as legitimate non-commercial or fair use, given the use of the Disputed Domain Name for commercial purpose through its association with PPC advertisements.
Complainant further asserts that given the fame of the ARNOLD CLARK Mark and the confusing similarity of the Disputed Domain Name to said mark, there is no conceivable use to which the Disputed Domain Name could be put now, or in the future, that would confer any legitimate interest upon Respondent. Considering the content of the website associated with the Disputed Domain Name and section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant contends that the website associated with the Disputed Domain Name incorporates PPC advertising and capitalizes on the value of the ARNOLD CLARK Mark, as incorporated into the Disputed Domain Name, so the website cannot confer any legitimate interests on Respondent.
Complainant further asserts that it has established a prima facie case along the lines anticipated by section 2.1 of the WIPO Overview 3.0 and that Respondent has not rights or legitimate interest in the Disputed Domain Name.
Complainant alleges that its ARNOLD CLARK Mark is well-known and that the additional word “motors” does not distinguish the Disputed Domain Name from the ARNOLD CLARK Mark. Complainant further alleges that it is inconceivable that Respondent did not have Complainant firmly in mind when it registered the Disputed Domain Name.
Equally, Complainant avers that it is highly probable that Respondent registered and is using the Disputed Domain Name in bad faith for the primary purpose of disrupting Complaint’s business in terms of paragraph 4(b)(iii) of the Policy.
Complainant further avers that it is well established under the Policy that in most circumstances the display of PPC advertising in association with a domain name in which a complainant’s trademark is the dominant element is sufficient on its own for a finding of registration and use in bad faith.
Complaint further avers that given the Disputed Domain Name is confusingly similar to the ARNOLD CLARK Mark, it is likely that Respondent intended to target Complainant and benefit financially through the display of PPC advertising. Such use will inevitably cause confusion amongst web users searching for Complainant as it will cause users to be misdirected to unrelated third parties which compete with Complainant. Such misdirection will inevitably lead to disruption to Complainant’s activities as envisaged by paragraph 4(b)(iii) of the Policy.
Finally, Complainant avers that Respondent has been subject to six previous UDRP disputes. Each earlier domain name related to a well-known mark and the panel in each case noted that Respondent did not have a legitimate interest in said domain names and that they were registered and used in bad faith. Complainant contends that given the similarity of the present matter to those noted above, that it is more likely than not that the Disputed Domain Name was registered in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Respondent is not obliged to participate in this domain name dispute proceeding, but when it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant (see Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441).
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview 3.0.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the ARNOLD CLARK Mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has valid registrations of the ARNOLD CLARK Mark in the United Kingdom. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Respondent has not refuted Complainant’s contentions that it has valid registrations.
Complainant avers that the Disputed Domain Name is identical with and confusingly similar to the ARNOLD CLARK Mark pursuant to the Policy paragraph 4(a)(i). Complainant avers that the entirety of the ARNOLD CLARK Mark is contained in the Disputed Domain Name.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant further argues that when a Disputed Domain Name incorporates the entire ARNOLD CLARK Mark with only the addition of a common word “motors”, it is still confusingly similar to the trademark and that the common word does not eliminate the likelihood of confusion. See Hoffmann-LaRoche AG v. P Martin,WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792.
Complainant avers that the word “motors” does nothing to distinguish the Disputed Domain Name from the ARNOLD CLARK Mark and contends that it exacerbates the prospects of confusion, in that “motors” is a contraction of “motor vehicles” which is related entirely to Complainant and its business. The gTLD “.com” is wholly generic in that it is required only for technical reasons and, as is customary in proceedings under the Policy, should be disregarded for the purposes of comparison with the ARNOLD CLARK Mark.
Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the ARNOLD CLARK Mark.
Therefore, the Panel finds that Complainant has proven the necessary elements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of production that it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the ARNOLD CLARK Mark.
Complainant alleges that it has found no evidence that Respondent has been commonly known as ARNOLD CLARK or ARNOLD CLARK MOTORS prior to or after the registration of the Disputed Domain Name. Respondent is not a licensee of Complainant and has not received any permission or consent from the Complainant to use its registered or unregistered trademarks.
Complainant has found no evidence that Respondent owns any trademarks incorporating the term ARNOLD CLARK or ARNOLD CLARK MOTORS. Equally, Complainant has found no evidence that Respondent has ever traded as ARNOLD CLARK or ARNOLD CLARK MOTORS.
Complainant asserts that Respondent’s use of the Disputed Domain Name cannot be construed as legitimate noncommercial or fair use, given the use of the Disputed Domain Name for commercial purpose through its association with PPC advertisements.
The Panel finds that Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy. Respondent has not contested Complainant allegations regarding lack of rights or legitimate interests in the Disputed Domain Name.
Therefore, the Panel finds that Complainant has established the elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Doman Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the ARNOLD CLARK Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the ARNOLD CLARK Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] 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 ARNOLD CLARK Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product
The Panel has found that the Disputed Domain Name is confusingly similar to the ARNOLD CLARK Mark. Based upon Complainant’s allegations of bad faith, the Panel further finds that Respondent is engaged in PPC advertising which is commercial in nature. Given the long-standing existence of the ARNOLD CLARK Mark in the automotive market, the Panel further finds that Respondent was aware of Complainant’s trademark rights when it registered and used the Disputed Domain Name.
Therefore, the Panel finds that Complainant has established the elements of paragraphs 4(b)(iii) and 4(b)(iv) (iv) and hence of paragraph 4(a)(iii) 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.
Richard W. Page
Sole Panelist
Date: August 14, 2017
Full & Egal Universal Law Academy