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 Pham Dinh Nhut of Ho Chi Minh City, Viet Nam. 2. The Domain Name and Registrar
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 May 30, 2018. On May 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2018, after several follow-up emails from the Center, 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. On June 20, 2018, the Center notified the Parties in both English and Vietnamese that the language of the Registration Agreement for the disputed domain name was Vietnamese. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply. The Center sent an email communication to the Complainant on June 26, 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 June 27, 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 June 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on July 19, 2018.
The Center appointed Dennis A. Foster as the sole panelist in this matter on July 30, 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 is an established company that owns and operates many car dealerships, generating considerable revenue, throughout the United Kingdom. The Complainant has obtained registration with the United Kingdom Intellectual Property Office (“UKIPO”) for its ARNOLD CLARK trademark (e.g., Registration No. 2103334, registered on April 4, 1997; and Registration No. 2300325, registered on December 13, 2002).
The disputed domain name, , is owned by the Respondent, who registered it on June 8, 2004. The disputed domain name is attached to a website that presents pay-per-click (“PPC”) links to
third- party websites offering goods and service related to the Complainant’s business. 5. Parties’ Contentions A. Complainant
- Founded in 1954, the Complainant owns and operates over 200 car dealerships in the United Kingdom and is the largest independently owned, family-run auto retailer in Europe. In 2016, the Complainant sold over 80,000 new cars and 197,000 used cars, while employing more than 11,900 staff. Revenues in that year totaled GBP 3 Billion.
- The Complainant operates under its ARNOLD CLARK trademark and utilizes its domain name, , for business purposes. The Complainant has registered its mark with the UKIPO.
- The disputed domain name, , is identical or confusingly similar to the Complainant’s ARNOLD CLARK trademark. The inclusion of an additional “c” fails to distinguish the disputed domain name from the mark. Instead, the disputed domain name is a typographical variant of the Complainant’s mark, and the addition of the gTLD, “.com”, should be ignored as well.
- The Respondent has no rights or legitimate interests in the disputed domain name. There is a prima facie case that the Respondent has no such rights or interests, as: there is no evidence that the Respondent is commonly known by the disputed domain name; the Respondent has not obtained from the Complainant any license or permission to use the Complainant’s mark; and there is no evidence that the Respondent has traded under, or holds any trademarks or service marks incorporating, the ARNOLD CLARK or “ARNOLD CLARCK” mark.
- The use of the disputed domain name to host a website that contains PPC links to advertising relating to the Complainant’s business constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name.
- The disputed domain name was registered and is being used in bad faith. Given that the Complainant’s mark is well-known, it is inconceivable that the Respondent was not mindful of the mark and the Complainant when registering and using the disputed domain name. The Respondent’s use of PPC links in connection with the disputed domain name is an attempt to monetize it for the Respondent’s benefit, and to disrupt the Complainant’s business, resulting from confusion between the name and mark and the corresponding misdirection of Internet users to unrelated third party websites.
- The Respondent has been the subject of eighteen (18) previous UDRP proceedings in which its bad faith registration and use of disputed domain names have been sustained, establishing a pattern of bad faith registration and use of domain names by the Respondent. The fact that the disputed domain name was registered in 2004 does not bar the Complainant from prevailing in this case because of an undue delay in filing. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) - (iii) of the Policy, the Panel may rule for the Complainant and grant a transfer of the disputed domain name, , provided the Complainant demonstrates that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Registrar has confirmed that the Registration Agreement is in Vietnamese.
The Complainant has provided evidence that in eighteen prior cases against the Respondent where the language of the registration agreement was Vietnamese, the language of the proceedings was English. The Complainant notes that the circumstances of this case are broadly similar to the prior disputes, wherein the disputed domain name and associated website incorporates English words. The Complainant furthermore refers to an earlier case whereby the Respondent communicated in English.
Accordingly, in light of the Respondent’s apparent capacity to understand English and its lack of participation in these proceedings despite being informed and provided an opportunity to respond in both English and Vietnamese, the Panel determines that the language of the proceedings is English. B. Identical or Confusingly Similar
Having supplied ample evidence of UKIPO registrations for its ARNOLD CLARK mark, the Complainant has satisfied the threshold requirement of trademark ownership under Policy paragraph 4(a)(i). See, Daily Mail and General Trust Plc v. Sun Stefen,WIPO Case No. D2018-0818 (“The Panel accepts the uncontested evidence in the form of a copy of the UKIPO registration document that the Complainant has rights as required under the Policy in the trademark DMGT.”); and Dune Holdings Limited v. Contact Privacy Inc. / , Calacom LLC,WIPO Case No. D2014-0582 (“The Complainant has rights in the mark DUNE by virtue of its registered trademarks ...”).
Simple visual inspection reveals to the Panel that the disputed domain name, , and the Complainant’s mark, ARNOLD CLARK, are nearly identical and are certainly confusingly similar. The absence of a space between the two terms comprising the disputed domain name is of no consequence as spaces are not allowed in domain names. The attachment of the gTLD (generic Top Level Domain), “.com”, to the disputed domain name is equally irrelevant, as that kind of suffix is required of all domain names. The remaining minor difference between the disputed domain name and the mark, the addition of a “c”, creates so little distinction that the two must be considered confusingly similar. The Panel views the disputed domain name as a classic example of typosquatting, whereby Internet users are led astray in seeking information concerning trademarked goods or services because they inadvertently mistype an entry by one key stroke. See, Arnold Clark Automobiles Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut,WIPO Case No. D2016-0562 (finding to be confusingly similar to the ARNOLD CLARK mark); and Zions Bancorporation, Inc. v. Kim Bum,WIPO Case No. D2012-2468 (finding the disputed domain name, , to be confusingly similar to the ZIONS BANK mark).
The Panel finds that the Complainant has succeeded in establishing that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
It has been well-established under prior UDRP decisions that a complainant need present only a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name to place upon a respondent the burden of coming forward with clear evidence that it does possess those rights or legitimate interests. See, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149; and Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285.
In this case, the Panel has already agreed with the Complainant that the disputed domain name is confusingly similar to the Complainant’s ARNOLD CLARK mark. Moreover, the Complainant avers that it has neither licensed nor given permission for the Respondent to use that mark for any purpose. The Panel judges that this simple showing constitutes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has failed to submit a filing, leaving the Panel to examine the record to see whether there is any evidence to rebut the Complainant’s prima facie case. In doing so, the Panel will consider the criteria listed in Policy paragraph 4(c) that might support the Respondent’s claim to those rights or interests, while accepting the validity of all reasonable contentions presented in the Complaint. See, Airbnb, Inc. v. Ashley B, Airbnb NOW,WIPO Case No. D2017-1135 (“In view of Respondent’s failure to reply to Complainant’s contentions, the Panel will treat Complainant’s contentions as true and undisputed unless it is unreasonable or unnecessary to do otherwise.”); and Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292 (“Under the Policy and Rules, when a respondent defaults, the Panel may choose to accept the complainant’s contentions as true, but must determine whether those facts constitute a violation of the Policy ...”).
As to Policy paragraph 4(c)(i), the Panel accepts the Complainant’s assertion that the disputed domain name resolves to a website that contains PPC links to websites offering goods and/or services that relate to the Complainant’s business. In line with countless prior Policy decisions, the Panel determines that this use of the disputed domain name fails to constitute “a bona fide offering of goods and services” per Policy paragraph 4(c)(i). Moreover, because this use is clearly commercial in nature, it fails also to constitute “a legitimate noncommercial or fair use” of the disputed domain name per Policy paragraph 4(c)(iii). See, Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyG / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302; and Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344 (“...pay-per-click (‘PPC’) parking pages built around a trademark [...] do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii).”). Finally, as the Panel detects no resemblance at all between the disputed domain name, , and the name of the Respondent, Pham Dinh Nhut, the Panel believes that the Respondent has never been commonly known by the disputed domain name per paragraph 4(c)(ii). As a result, the Panel must conclude that the Complainant’s prima facie case is controlling with respect to this issue.
The Panel finds that the Complainant has succeeded in establishing that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
As noted above, the Panel has accepted the Complainant’s contention that the Respondent uses the disputed domain name to host a website that presents PPC links to websites that offer goods and/or services that compete with those of the Complainant. That action by the Respondent necessarily sets up forces that are likely to disrupt the Complainant’s business, since potential sales may be lost, consistent with a bad faith finding under Policy paragraph 4(b)(iii). Moreover, the Respondent’s deliberate use of PPC links are an intentional attempt to gain commercially based upon confusion between the disputed domain name and the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, consistent with a bad faith finding under Policy paragraph 4(b)(iv). See, Région Rhône-Alpes v. Registration Private, Domains by Proxy, LLC / Edmunds Gaidis,WIPO Case No. D2014-1942 (“Respondent is using the disputed domain to publish a PPC parking page advertising third party websites, some of which offer competing transportation services [...] this evidences bad faith registration and use pursuant to paragraphs 4(b)(iii) and (iv) of the Policy.); and Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474 (“Respondent’s bad faith is further illustrated by the domain name’s resolution to a PPC parking page with links to websites selling products competing with Complainant’s. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith”).
In addition, the Panel has verified the Complainant’s contention that the Respondent has been named in and lost multiple previous UDRP decisions involving the Respondent’s registration and use of domain names. Therefore, as a recognized serial cybersquatter, the Respondent has engaged in a pattern of bad faith registration and use of domain names, which causes the Panel to conclude that he has registered and is using the disputed domain name in bad faith per paragraph 4(b)(ii) of the Policy. See, for example, Voltas Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut,WIPO Case No. D2018-0012; Pierre & Vacances Center Parcs Group v. Pham Dinh Nhut,WIPO Case No. D2017-0605; Herald & Weekly Times Pty Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut,WIPO Case No. D2016-1162; Malwarebytes Inc v. Vietnam Domain Privacy Services / Pham Dinh Nhut,WIPO Case No. D2015-1361; ESTEVA OOMMM, S.L. v. Pham Dinh Nhut / Vietnam Domain Privacy Services,WIPO Case No. D2014-2095; and Terroni Inc. v. Gioacchino Zerbo, WIPO D2008-0666 (“the Respondent has been the respondent party in five other domain name dispute procedures before the Center and in all such cases the disputed domain names have been transferred to the relevant complainant [...] Therefore in the Panel’s opinion the necessary elements of paragraph 4(b)(ii) are found to be present.”).
The Complainant makes reference to its delay in filing the Complaint, since the disputed domain name was registered in 2004. However, the Panel agrees with the Complainant’s conclusion that this delay should not preclude the Complainant from prevailing in this case. Many prior Policy panels have determined that trademark and service mark owners should not be held to a standard of constantly policing the Internet for every conceivable mark variation that cybersquatters might seek to register illegitimately. See, Cisco Technology Inc. v. Hidden Hidden, Open IT,WIPO Case No. D2018-0093 (“The difficulty for a well-known brand such as CISCO to perform such systematic enforcement seems particularly understandable.”); and SBI Card & Payment Services Pvt. Ltd. v. R. Kumar and R. Murti, Like this domain! - Want to know more? Email now.,WIPO Case No. D2017-0873.
The Panel finds that the Complainant has succeeded in establishing that the disputed domain name was registered and is being used in bad faith. 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.
Dennis A. Foster
Sole Panelist
Date: August 12, 2018
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