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 Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“United States”) / Arnold Clark of Chatham, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2018. On March 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 15, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 19, 2018 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 March 19, 2018.
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, and the proceedings commenced on March 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2018.
The Center appointed Jane Seager as the sole panelist in this matter on April 16, 2018. 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, the Complainant runs a car dealership throughout the United Kingdom.
The Complainant has supplied evidence that it owns a registered trade mark for the stylized word mark ARNOLD CLARK (United Kingdom trade mark number no. 2103334 filed on June 20, 1996, and registered on April 4, 1997) and for the word mark ARNOLD CLARK (United Kingdom trade mark number no. 2300325 filed on May 11, 2002, and registered on December 13, 2002).
The Domain Name was registered on November 30, 2017. At the time that the Complaint was filed the Domain Name was inactive. 5. Parties’ Contentions A. Complainant
In response to each of the requirements under the Policy, the Complainant asserts as follows:
(i) The Domain Name is confusingly similar to the Complainant’s trade mark
The Complainant notes that the registration of its earlier mark pre-dates the registration of the Domain Name by twenty-one years.
The Complainant contends that the Domain Name is confusingly similar to its ARNOLD CLARK mark in that it differs only by the additional words “auto” and “cars”. The Complainant notes that the word “auto”, in this context, is a contraction of “automobile”. The Complainant asserts that both words are closely associated with the Complainant and its area of business as a major car dealership.
The Complainant avers that its ARNOLD CLARK mark remains the most dominant element of the Domain Name, with the remaining words being merely generic and descriptive. According to the Complainant, they do nothing to distinguish the Domain Name from the Complainant’s marks.
Moreover, the Complainant argues that 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 Complainant’s trade marks.
The Complainant respectfully submits that the Domain Name is confusingly similar to a name or mark in which it has rights in terms of the Policy.
(ii) The Respondent has no rights or legitimate interests in the Domain Name
The Complainant contends that the Respondent does not have any rights or legitimate interests in the Domain Name. The Complainant refers to section 2.1 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which asks “How do panels assess whether a respondent lacks rights or legitimate interests in a domain name?” and answers:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Accordingly, the Complainant seeks to make out a prima facie case to demonstrate that the Respondent does not have rights or legitimate interests in the Domain Name.
The Complainant has found no evidence that the Respondent has been commonly known as ARNOLD CLARK or ARNOLD CLARK AUTO CARS prior to or after the registration of the Domain Name. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its registered or unregistered trade marks.
The Complainant has found no evidence that the Respondent owns any trade marks incorporating the term ARNOLD CLARK or ARNOLD CLARK AUTO CARS. Equally, the Complainant has found no evidence that the Respondent has ever traded as ARNOLD CLARK or ARNOLD CLARK AUTO CARS.
The Complainant contends that given the fame of its marks and the confusing similarity of the Domain Name to said marks, there is no conceivable use to which the Domain Name could be put now, or in the future, that would confer any legitimate interest upon the Respondent.
Furthermore, as the Complainant has noted, the website associated with the Domain Name is inactive. In the Complainant’s view, it is therefore clear that the Domain Name is “passively held” and, as such, has not been used in connection with a bona fide offering of goods or services.
In terms of passive holding and its relation to legitimate interests, the Panel’s attention is respectfully drawn to Microsoft Corporation v. Charilaos Chrisochoou,WIPO Case No. D2004-0186, in which the panel held:
“The Respondent is not currently making an active use of the domain name. According to previous panel decisions under the UDRP, the passive holding of domain names has however not been deemed sufficient to establish legitimate interests or bona fide use of a domain name.”
On this analysis, the Complainant asserts that the Respondent cannot obtain or derive any rights or legitimate interests through its passive holding of the Domain Name.
In all of these circumstances, the Complainant concludes that it has established a prima facie case along the lines anticipated by section 2.1 of the WIPO Overview 3.0 that the Respondent has no rights or legitimate interests in the Domain Name.
(iii) The Domain Name was registered and is being used in bad faith
The Complainant asserts that the Respondent’s passive holding of the Domain Name constitutes bad faith. In this regard the Complainant refers to section 3.3 of the WIPO Overview 3.0, which notes:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (a) the degree of distinctiveness or reputation of the complainant’s mark, (b) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (c) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (d) the implausibility of any good faith use to which the domain name may be put.”
In terms of each of these points, the Complainant notes:
a. the degree of distinctiveness or reputation of the complainant’s mark;
As outlined above and evidenced in the referenced annexes, the Complainant claims to be very well-known in both in the United Kingdom and beyond and its marks have been used for many years prior to the registration of the Domain Name. In the Complainant’s view, it is clear that the Respondent has appreciated this distinctiveness by coupling the Complainant’s mark with words relative to its scope, i.e. “auto cars”.
b. the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
According to the Complainant, the Complainant’s agent wrote to the Respondent but did not receive a response. The Complainant contends that a bona fide registrant would respond with evidence of a good faith use when approached by a rights holder with a reasonable complaint relating to its domain name. That the Respondent has failed to do so is indicative, in the Complainant’s view, that the Respondent cannot put forward any such evidence of actual or contemplated good-faith use.
c. the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and
The Complainant notes that the Respondent has made use of a WhoIs privacy service. Section 3.6 of the WIPO Overview 3.0 notes that:
“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”
While a privacy service may not, in and of itself, be indicative of bad faith, the Complainant contends that where a respondent has registered a domain name consisting of or confusingly similar to a complainant’s mark (as is the case in the present dispute) then the use of a privacy service may reasonably lead to a negative inference being drawn as to the Respondent’s intentions.
d. the implausibility of any good faith use to which the domain name may be put.
The Complainant contends that given the fame, widespread use and reputation of the Complainant, it is inconceivable that the Respondent could have registered the Domain Name without the Complainant’s marks in mind with bona fide, good-faith intentions; this is especially so given the inclusion of the word “autocars” which could only reasonably relate to the Complainant when incorporated into a domain name including the Complainant’s ARNOLD CLARK marks.
The Complainant therefore concludes that the Domain Name was registered and used in bad faith under the terms of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The standard of proof is on the balance of probabilities (see Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview 3.0.
Taking the aforementioned provisions into consideration, the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence of two registered trade marks in the term ARNOLD CLARK (United Kingdom trade mark number no. 2103334 registered on April 4, 1997 and United Kingdom trade mark number no. 2300325 registered on December 13, 2002).
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. In this regard, the Panel notes that the Domain Name incorporates the Complainant’s distinctive ARNOLD CLARK trade mark in its entirety with the addition of a descriptive term referring to automotive industry “autocars”. The Panel agrees with the Complainant that this addition is insufficient to avoid confusion with the Complainant’s trade mark rights. Indeed in the Panel’s opinion it only serves to increase the confusing similarity, given that the term “autocars” may be, as suggests the Complainant, divided into two terms “auto” (a contraction of “automobile”) and “cars”, both words which are closely associated with the Complainant and its area of business as a major car dealership.
Furthermore, it is widely accepted that the “.com” generic Top-Level Domain (“gTLD”) is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Respondent cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, given that the Domain Name is currently not being used to point to an active website. Neither can the Respondent be said to be making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii). Furthermore, the Complainant has stated that it has not authorized the Respondent to make any use of its trade mark and it is highly unlikely that the Respondent would be “commonly known” by the Domain Name, as referred to at paragraph 4(c)(ii), given the notoriety surrounding the Complainant’s trade mark.
Moreover, as pointed out by the Complainant, the Respondent has been revealed as “Arnold Clark”. The Panel agrees with the Complainant that unless evidence is presented by the Respondent that he is formally known by this name then it is reasonable to conclude that this is a false name adopted by the Respondent in order to give an air of legitimacy to the registration of the Domain Name. The Panel is also satisfied that, even if the Respondent is called “Arnold Clark”, then associating this with the term “auto cars”, which relates entirely to the Complainant, cannot confer any legitimate interest on the Respondent or bona fide good faith reason for registering the Domain Name.
The Panel is also of the view that the Respondent’s failure to submit a response is, in the circumstances of this case, also evidence of the Respondent’s lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 respondent’s website or location or of a product or service on the respondent’s website or location.
The evidence put forward by the Complainant shows that the registration of both of the Complainant’s ARNOLD CLARK trade marks predates the registration of the Domain Name by many years, and that such trade marks have been extensively used by the Complainant. Based on the detailed evidence provided by the Complainant, the Panel understands that the Complainant’s reputation is significant and has been so since well before the Domain Name was registered in 2017. The Panel therefore finds, on the balance of probabilities, that the Respondent was aware of the Complainant’s rights at the time of registration of the Domain Name, and thus registered it in bad faith seeking to profit from the Complainant’s rights.
As far as the use of the Domain Name is concerned, it has long been established that passive holding of a domain name does not prevent a finding of bad faith. Under the circumstances, including the Complainant’s notoriety, the nature of the Domain Name itself (reflecting not only the Complainant’s distinctive trade mark, but also generic terms directly relating to the Complainant’s business), the Respondent’s use of a privacy service to mask its details in the WhoIs and the lack of response of the Respondent, both to the Complainant’s cease and desist letter and to the Complaint, the Panel here finds sufficient indicia of bad faith to satisfy the Policy. Indeed, the Panel finds that it is simply not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, as it would inevitably result in misleading diversion and taking unfair advantage of the Complainant’s rights.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied. 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 Domain Name be transferred to the Complainant.
Jane Seager
Sole Panelist
Date: April 27, 2018
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